IP Advocate: What did Bayh-Dole intend for inventors?
Dr. Barnett: Bayh-Dole has a built-in respect for inventors. As far as I can tell, the drafters of the law understood that it is the faculty investigators that propose the research, control the research, that may invent, and that report and publish. Finally, it should also be the faculty investigators that report their inventions and discoveries directly to the funding agencies. University administrators are not innovators. It's these expert scientists, engineers, doctors, and scholars that the government seeks access to, for what they can do, not as employees of a corporation that assigns them their work and pays them to give up control of their results for corporate decision-making.
IP Advocate: What should the university be doing in this process?
Dr. Barnett: Bayh-Dole never intended that the university act as a corporate employer for federal awards, but rather as a service intermediary. Simply, a university should serve as a contracting service for federal agencies working, otherwise directly, with research personnel. University services should make these interactions efficient for the agencies and the faculty researchers, not a breeding ground for controversy by inserting institutional self-interest.
IP Advocate: Is there any flexibility, or is the Bayh-Dole Act rigid in its performance requirements?
Dr. Barnett: There is a great flexibility designed into Bayh-Dole. Flexibility that universities have largely ignored. It's amazing that given all the possibilities for patent practice, U.S. universities overwhelmingly have designated themselves as owners, and have focused on using patents to create products rather than standards or specialty internal uses. I suppose that products sold in huge markets are where the money is, such as a new drug. It's a little sad, really, that the biggest social goal university licensing offices commit themselves to is helping drug companies turn acute conditions into chronic ones. It doesn't appear to be the same thing, say, as a cure.
For all that, there's nothing in Bayh-Dole that requires universities to designate themselves and they don't have to do this to comply fully with the Act. Simply put, Bayh-Dole requires that the university (the contractor) agree to require its employees to disclose promptly each subject invention and to execute all papers necessary to file patent applications and to establish the government's rights. Beyond that, there is a lot of possibility. The university could designate the faculty principal investigator to receive invention disclosures. The university could allow the inventor to identify an appropriate invention management organization. The university could assign its interest in managing its obligations under the Act to multiple foundations, depending on subject matter or simply to have a range of possible future partners to better match inventions with opportunities.
None of this has happened, though. It's really quite a pity that universities have fallen to what amounts to the lowest common denominator practice. It's uniform, process-ridden, and largely ineffective.