IP Advocate: Can you take us into the law itself and show us the intent?
Dr. Barnett: Sure. It's a bit of a fiction to say the law is capable of intention. Instead, we can look at the Act's statement of objectives. This gets a little lengthy, but if you go into the US Code Title 35, Part II, Chapter 18, § 200 titled "Policy and objective"; it spells out Bayh-Dole's objectives:
"It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development; to encourage maximum participation of small business firms in federally supported research and development efforts; to promote collaboration between commercial concerns and nonprofit organizations, including universities; to ensure that inventions made by nonprofit organizations and small business firms are used in a manner to promote free competition and enterprise without unduly encumbering future research and discovery; to promote the commercialization and public availability of inventions made in the United States by United States industry and labor; to ensure that the Government obtains sufficient rights in federally supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions; and to minimize the costs of administering policies in this area."
Whatever the private motivations and whatever the issues at debate in deciding on the final language, this is the best expression of what actually is the law of the land. One can work to be clever about it, or focus on a small bit of the whole, but why not just read this piece and start with the entire passage. University licensing folk, for the most part, show no evidence of having read this piece of the law, or if they have, remembering any more of it than "commercialization of patent rights for money"—which is only a bit of one objective, down the list always.
IP Advocate: There's nothing there about raising funds for universities.
Dr. Barnett: There's not there, and I don't think it was an oversight. This Act was drafted to say what it needed to say, state the intent and what isn't there - isn't there for a reason. If the idea was to give universities first crack at suing American industry for fat royalty checks to supplement their budgets, don't you think that would be right there in the foreground as a primary objective? Well, perhaps not as overt as that. But that's essentially what universities are claiming by their actions, justifying this as ensuring "respect" for their intellectual property rights. Indeed it may be, but it's not a purpose in Bayh-Dole. For that matter, if American industry is using inventions supported with federal funds, license or not, university royalties or not, one could argue quite reasonably that the government's interest in the invention has been addressed.
The Bad - How Bayh-Dole Has Been Misused
IP Advocate: Sounds good. Would you say then that Bayh-Dole has been used as it was intended?
Dr. Barnett: Yes and no. Some approaches have been great, some good and then some have really misused the Act for their own purposes.
IP Advocate: Can you give us an overview of the types of misuse you've seen over the years?
Dr. Barnett: The biggest problem is that universities take shortcuts to their own self-interest and ascribe this to Bayh-Dole, when it's really their own "bureaukleptic" behavior. I call it that because that's what it comes down to. Claim everything and release only those things that don't matter later. It's what one would expect if an organization was greedy and uncertain about the future. It's also what one would expect if the way to deal with uncertainty was to impose some sort of process to give things the appearance of order, even if there was no idea what kind of judgment should be used.