IP Advocate: Is Bayh-Dole to blame?
Dr. Barnett: Well, it comes in for its share of blaming, though I don't see how it is the cause. More to the point, Bayh-Dole has allowed us to see what universities would do if given a broad mandate to support American industry and public access to federal research results. After nearly thirty years, they have done a good job at becoming work-a-day, if not dull, at innovation. Corporate ownership of IP has not had a great ride for spinning out innovation that benefits the corporate owner.
Even as we see a resurgence of corporate interest in "open innovation", it is the universities, which should specialize in open innovation, that are standing as primary opponents. Much has been written blaming the Bayh-Dole Act for what really amounts to questionable or even unethical university behaviors. These behaviors often occur when a university ignores the provisions of Bayh-Dole, not because it is acting within its letter or intent.
IP Advocate: What about the instances of mistreatment of inventors over the years?
Dr. Barnett: If a university acquires ownership of patent rights, the inventor then becomes another beneficiary under Bayh-Dole and should be treated accordingly. The university is there to shepherd inventions and associated patent rights on behalf of the beneficiaries of the award. One would think it immoral for a trustee to use the assets entrusted to it for its own advantage. That's another tough message for universities to deal with. I don't think, institutionally, administrators think any action they make could be subject to a claim of morality. That's an old, outmoded concept. At best, the compliance term is "ethics" and that involves coming up with technical reasons for doing things. It's all very sad, that personal judgment and responsibility is so drained out of innovation practice—and as a matter of policy!
IP Advocate: Should inventors be allowed to participate in the fate of their innovation?
Dr. Barnett: Definitely. And so should principal investigators. The university should be careful in removing an inventor from the decision making process. Keep in mind that most inventions in university research are co-invented, and co-inventors may disagree on the course of action. Universities have a role in dealing with such disputes, because it is in the public interest to get on with getting an invention into use. One might argue that the inventors have a default right to be involved in the university disposition of the inventions, whether they assign their rights under Bayh-Dole unless and until they freely waive that right. Universities should deal with that. It would make for better innovation practice, even if it created administrative bother. It's beyond me why a love of process should dominate research innovation practices.