IP Advocate: Where it says "contractor action" - contractor refers to the university?
Dr. Barnett: Exactly. It's worth quoting in full. Subsection 2 of (f) reads:
"The contractor agrees to require, by written agreement, its employees, other than clerical and non-technical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the contractor each subject invention made under contract in order that the contractor can comply with the disclosure provisions of paragraph (c), above, and to execute all papers necessary to file patent applications on subject inventions and to establish the government's rights in the subject inventions. This disclosure format should require, as a minimum, the information required by (c) (1) [disclosure of subject inventions to the government], above. The contractor shall instruct such employees through employee agreements or other suitable educational programs on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to U.S. or foreign statutory bars."
IP Advocate: Under Bayh-Dole, what happens when and if a researcher assigns rights to their university?
Dr. Barnett: When a faculty inventor assigns patent rights to the contractor, the university becomes a trustee of that intangible property. This is important - the university is not a corporate owner. Any rights and interest in that intellectual property, specifically patent rights, are conditional on its safeguarding the rights for the beneficiaries, not for itself. You can find statements of this in Circular A-110, which provides the governing regulations for federal support of university research generally. Bayh-Dole shows up in Circular A-110 as .36 (2). That's a tough message a lot of university folks want to ignore. When I bring this up, they start to fight about it rather than affirm it. It's really quite remarkable.
IP Advocate: If the patent does generate royalties, what then?
Dr. Barnett: If an invention developed with federal funds happens to make money, that's a great side benefit and Bayh-Dole does specify how these funds may be used if the licensor is the university or its assignee of Bayh-Dole interest. But nowhere in Bayh-Dole is there a statement that an objective of the law was to generate funds for universities. That certainly can be a university goal, and again it can be a worthy goal at that. Just don't say Bayh-Dole requires it. It's something universities have decided to do.