IP Advocate: These are the details that should be in IP policies, correct?
Dr. Barnett: Yes - but most university intellectual property policies go way beyond what Bayh-Dole requires... For that matter, Bayh-Dole does not even require an institutional IP policy. That's another assumption made by university administrators. It just isn't there in the Act. Bayh-Dole is essentially self-implementing. All one needs are the written agreements with research personnel to protect the government interest and designation of personnel responsible for patent matters. University "bureaukleptic" IP policies that require faculty inventors to assign their inventions over don't have anything to do with Bayh-Dole. That says something about a university's impulse, but says next to nothing about compliance with Bayh-Dole, innovation, or public service.
IP Advocate: Sounds simple.
Dr. Barnett: It should be, at least at the policy level. The federal funding agency depends on the university to have a written agreement with its research employees to protect government interests. Beyond that, it is up to the funding agency to stipulate those interests directly to the faculty principal investigator through the funding announcement and the statement of work, and through these documents and the Act itself, to any inventor working within the scope of the federal funding agreement. The inventor is then obligated to those stipulations through their written agreement with their university.
Think of it as making a public, irrevocable, enforceable commitment in the form of a written agreement, in which the university serves as the public registrar of the commitment. This is the essence of federal contracting. You agree to the terms as these are set forth by the agency within the scope of its authority. That's what the written agreements in Bayh-Dole do. It's all very nicely done, though most of the niceness is apparently wasted on university administrators.
IP Advocate: Then what about all of the other requirements universities force inventors to agree to under the guise of compliance?
Dr. Barnett: Anything else the university asks of its researchers is deal play and has really nothing to do with Bayh-Dole compliance. A university can claim ownership of inventions. Bayh-Dole indeed allows this to happen. But the reasons for taking ownership are not compliance with the law, but something else. The stakes can be money, power, notoriety, faculty rights, officiousness, fear, sense of public purpose, or whatever - but it ain't Bayh-Dole!
The Ugly - How Bayh-Dole Has Been Abused: Litigation, Profit-Seeking & Worse
IP Advocate: Beyond misuse and misinterpretation, what is the worst you have seen?
Dr. Barnett: It comes down to money. Nowhere does it say that Bayh-Dole was intended to earn big bucks for universities. Yet many universities and corporations in the system skip right for the money, any way they can get it. Ironically, apart from some rare, substantial transactions over the nearly 30 years of Bayh-Dole, universities haven't got all that much of the money, and have done even worse at the other stuff, such as dealing with software and data.
The problems also show up with university inventors. I've seen money-driven behavior with federal funding that wouldn't do so well if it surfaced in the press. It isn't that money driven behaviors are themselves bad. It's just that within a university, in the conduct of science and other public interested research, it's the public interested part that gets squeezed out. Who advocates for the public interest in the push and pull between inventors and administrators over Bayh-Dole inventions?