Above you asked:

“Also, how to do you respond to what was true prior to Bayh-Dole, that the policies/agreements of many federal agenices mandated that title to “subject inventions” resulting from federally sponsored research belonged to the agency/US?”

Most having even a passing familiarity with the inner workings of the FAR Council quickly come to the realization that those persons who labor under its umbrella haven’t a clue when it comes to patents, trademarks, copyrights, trade secrets, unfair competition, etc. Regulatory proposals are routinely traversed by industry association groups, and their legal arguments are routinely ignored since it well understood that few companies that rely on government contracts are willing to stick their neck out and challenge misguided and plainly illegal regulations.

Perhaps someday if you are interested I will be able to regale you with the history underlying a former policy and former procurement clause that went by the name “Recovery of Non-Recurring Costs” (aka “Recoupment”).

BTW, and Bayh-Dole notwithstanding, the DOE continues to labor under the belief that it somehow enjoys a position that allows it to act in a manner manifestly contrary to Bayh-Dole. Last time I looked it still hewed to the line “It’s mine unless you ask me nicely and I deign to consent!” .

In the final analysis most discussions on the topic of government contracts and IP tend to be of passing interest given that the statutes, policies and regulations are so hosed up that even a relative newcomer to the field of IP law can run rings around the government. As a colleague used to say, and with whom I agree, dealing with the government in these matters is typically much like “shooting fish in a barrel”.

Michael Martin,

Touche! (but how many faculty/students really do read the agreements they sign?) Also, as you suggest, the university can write the assignment clause in the agreement with the faculty/student to avoid the result that happened here. Again, thanks for the “lively” debate.

I appreciate your point that there are reasonable people who agree with you. But arguments from authority (even an authority as venerable as Howard Bremer) don’t carry much weight with me.

As to the more substantive points you make, I have the following responses. First, I understand the Bayh-Dole sought to simplify the rules of ownership for inventions that arise from federally funded research by permitting universities to take title rather than the agencies the provide the federal funding themselves. But is that evidence that the origin of title was in the agencies rather than the inventors before Bayh-Dole? Can you point to a case in which that was held?

Second, the language of the act that you refer to governs the obligations and duties of the contractor (e.g., a university) to the funding agency and vice versa. Your argument, as I understand it, is that the verb “retain” implies that these obligations and duties run through the university to the inventors. My argument is that this single verb is insufficient to overcome the presumption that title cannot skip over the inventors and vest directly in the contractor that has been created by hundreds of years of priority disputes decided under property and contract law. Where is the evidence in the Bayh-Dole Act that inventors are party to these obligations and duties?

Can an inventor skirt his obligations to the university by signing a contract with a third-party that, in effect, violates university obligations under Bayh-Dole? Apparently so. That’s what happened in Roche and in cases cited therein. Is this somehow absurd? No. Stanford has the right to change its agreement with inventors (as indeed it did in 1995) to make their obligations to assign inventions present rather than prospective. Stanford also has the right to sue inventors who violate their contracts with the university, which from time to time they do. But Roche is an important decision because it clarifies for faculty and student inventors that taking federal funding does not tie their hands — i.e., inventors still have a choice about who they work for and on what terms they will assign their inventions. Far from being absurd, this seems to me to be the most reasonable rule that could be adopted. What incentive would faculty and students have for disclosing inventions without this rule? Is a sense of moral obligation enough when the university has no way of peering into the minds of its faculty and students to see whether, indeed, they have disclosed everything they believe to be an inveniton?

If there is a moral to the story in Roche then it is this: what faculty and student inventors sign is important. It’s too bad that neither the university nor the inventor got anything for their work here, but the inventor should have been more careful about what he signed!

Paul,

Thanks for your supportive comment. I don’t know what you find “troubling” in this decision, but here are three that perplex me:

1. Not considering the entire statutory scheme of how title to “subject inventions” works under Bayh-Dole and especially how this decision can be squared with the provisions of 35 USC 202(a), 202(d)(7) and 202(d), as well as the decision in Central Admixutre.

2. Allowing an incidental “boilerplate” assignment clause in what, in essence, is primarily a confidentiality agreement to have the overrding effect it did.

3. Giving such short shrift to the very valid argument by Stanford Uinversity about the “lack of authority” of the researcher to even sign Cetus’ VCA.

If there are other aspects of this decision that you find “troubling” I would be interested to hear what they are.

Mike,

Thanks for your comment. I’ve also seen before your argument about the potential conflict with the Patent Clause if Bayh-Dole is interpreted to put title to “subject inventions” initially in the contractor. My response to that argument is that federally sponsored research comes with “strings attached” and one of those “strings” is that title to “subject inventions” must initially reside in the contractor. Put differently, if you don’t want the “strings,” don’t accept the federal funding.

My other argument to the Patent Clause conflict is that it reads more into the Clause than is really there. This is similar to the statement by SCOTUS in Graham that the Patent Clause creates some sort of constitutional “standard” for patentability beyond novelty. I could also argue that an obligation of an inventor to assign by virtue of an employment agreement would create a similar conflict with the Patent Clause. The Patent Clause simply provides Congress with the ability to allow inventors to secure the exclusive rights in their inventions, but does not address how ownership or title to such inventions might be altered by contract or by statute (such as Bayh-Dole). Also, how to do you respond to what was true prior to Bayh-Dole, that the policies/agreements of many federal agenices mandated that title to “subject inventions” resulting from federally sponsored research belonged to the agency/US?

I would also be careful in relying upon what is set forth in the FARs as necessarily evidencing how title to “subject inventions” works under Bayh-Dole. The FARs existed prior to Bayh-Dole and if I recall correctly, didn’t discriminate as to the size or non-profit status of the contractor. By contrast, Bayh-Dole originally applied only to those contractors who were small businesses, non-profits and individuals. It was only by Executive Order under Reagan that the provisions of Bayh-Dole were applied to larger, for profit, entities, including those subject to the FARs. Accordingly, what the FARs say about imposing obligations on contractors relative to their employees may reflect a “historical artifiact” of where the FARs came from, rather than what Bayh-Dole says about how title to “subject inventions” works.

Anyway, unless the Federal Circuit grants a request for rehearing in the Stanford University case (or changes it’s mind later), we’re all stuck with the result. That means phrase your assignment clause to be a present transfer of future invention rights if you want to avoid what happened to Stanford University. And thanks for the debate

If, as you appear to suggest, 35 USC 202 supplants the general rule of rights to inventions vesting initially in the inventor(s), then in my view there would be a most definite conflict with the provisions of Article 1, Section 8, Clause 8 that speaks to inventors (I am placing the “work for hire” doctrine to the side because it is, quite frankly, a red herring.).

Just like 28 USC 1498, Title 35 provisions pertaining to inventions associated with federal assistance (be it in the form of grants, cooperative agreements, or contracts) serve as a reminder that the crafting of statutory language by persons other than practitiones steeped in the contents and structure of Title 35 is largely a fool’s errand likely to raise more questions than provide answers. Such is the unfortunate nature of our legislative process.

Rather than stop at the pertinent chapter to Title 35, which does present in my view a significant ambiguity that on its face is susceptible to an interpretation that may very well do violence to Article1, Section 8, Clause 8, I next proceed to how the federal agencies have interpreted the statute and embodied same in the Federal Acquition Regulation (the so-salled “FAR”).

This interpretation is set forth in Chapter 52, and specifically at Sections 52.227-11 (contractor retains title) and 52.227-13 (USG retains title). As you peruse these two sections you will note that one of the obligations imosed upon contractors (and subcontractors) is to have in place appropriate contractual arrangements with certain classes of its employees sufficient to permit the contractor/subcontractor to be able to meet its obligations under the aforemention clauses.

I submit that these regulatory provisions are substantive in nature, were promulgated with explicit statutory authority granted by Congress, and are thusly entitled to the full force and effect of law. Consequently, I have a most difficult time veiwing the general language of Title 35 as supplanting the rule vesting title in the first instance with inventor(s) because to suggest otherwise raises a question of constitutional dimension, a question that only is presented if Title 35 is interpreted to read “inventors” more broadly such that it embraces government contractors, government subcontractors, and the government itself.

By the way, and perhaps more importantly on a practical level, the far more challenging aspect of dealing with federal agencies in matters such as these involves the treatment of technical data and computer software. While I have always found patent law to be helpful in dealing with such agencies, and particularly when such agencies embark on second sourcing and/or international arrangements, the vast majority of legal “battles” are fought in this latter arena. It is to the “credit” of the agency rulemakers, and to the distinct “benefit” of government contractors and subcontractors, that such rulemakers are woefully ignorant of the applicable statutory law. For example, it is not at all uncommon for rulemakers to review a statute, form a belief that the statute does not go far enough, and to then extend the statutory boundaries unilaterally.

Mike

Thank you for your comments. You’re not the first to question my reasoning here. I also understand the “traditional path” for determining title to inventions and that such title such inventions normally belongs to the inventor(s) initially until changed by contract.

But in the context of Bayh-Dole, and federally-funded research, that “traditional path” has been legislatively altered for “subject inventions.” I’m not alone in this view. For example, Howard Bremer of WARF who was one of the principal architects in the university sector pushing for enactment of Bayh-Dole also takes the view Bayh-Dole mandates that title to “subject inventions” initially resides with the contractor. So let me explain further why:

First, prior to Bayh-Dole, there was a hodge-podge of policies and regulations in the various federal agencies for who got title inventions created in whole or in part as a result of federally-funded research. In fact, many of those policies and regulations mandated that the agency/US got title to those inventions. Accordingly, in the context of federally-sponsored research, the “traditional path” was altered even before Bayh-Dole.

Second, Bayh-Dole was enacted to render uniformity to the policies and regulations around who got title to inventions resulting from federally-sponsored research. And most significantly, the intent of Bayh-Dole was that the “contractor” who received the federal funding for the research was to be given the opportunity to “retain” title to “subject inventions” (i.e., those resulting from the federally-funderd) unless: (1) the contractorfailed to comply with certain obligations, such as failture to tell the federal agency about the “subject inventions” with a certain period of time; (2) the contractor decided not to “retain” title; or (3) the federal agency asserted its “march in rights” to take tile. Also significantly, in situation (1), the federal agency had to specifically request that it get title; as the Federal Circuit held in Central Admixture, title to the “subject inventions” is “voidable,” not “void,” at the instance of the appropriate federal agency, and cannot be challenged by a prirvate “third party.”

Third, as Howard Bremer has correctly noted, the key operative word used consistently throughout Bayh-Dole, and particularly in the Disposition of Rights section of 35 USC § 202(a), is “retain” (not “obtain,” “transfer” or some other such word) with respect to title to “subject inventions.” The word “retain” implies that title already resides in the entity, and in the case of federally funded research under Bayh-Dole, that “entity” is the contractor. In fact, as noted above, USC § 202(d) says that if the contractor elects not to retain title, the contractor may request that the appropriate federal agency allow the inventor to retain rights in the “subject invention.” If 35 USC § 202(d) is to make sense, initial title to the “subject invention” must reside with the contractor.

Fourth, as also noted above, 35 USC §202(c)(7) expressly prohibits a nonprofit organization, such as a univery like Stanford, from assigning rights in federally sponsored research to third parties (like Cetus or Roche) without approval of the respective federal agency. It’s hard to believe that the prohibition of 35 USC § 202(c)(7) could be so easily skirted by a university researcher signing a confdentiality agreement that incidentally assign rights to “subject inventions” to third parties.

Fifth, and as you may surmise from my comments in the fourth point just above, Linn’s opinion gives the incidental assignment clause in Cetus’ VCA (versus the assignment in Stanford’s CPA) an effect that is hard to justify from the context in which the VCA was signed. As one who once worked in the corporate world for many years, I’ve seen similar assignment clauses to those in the Cetus VCA, and they’re all “boilerplate” much like what law governs the agreement. More importantly, I suspect that the university researcher didn’t read this incidental assignment clause and certainly didn’t understand what it meant. As one who also has worked in the corporate world, I question the authority of the university researcher to even sign something like the Cetus VCA without the permission and consent of the unversity that the researcher is employed by. That Linn’s opinion completely discounts Stanford’s legitimate “lack of authority” argument would shock many in the corporate world.

Sixth and final, you have to view Bayh-Dole in its entirety, including the integrated statutory scheme for how title to “subject inventions” works. That means, for example, considering the impact of an incidental assignment clause on prohibtions against assignment set forth in 35 USC §202(c)(7) . Linn’s opinion simply gives short shrift to this integrated statutory scheme. And allowing that integrated statutory scheme to be undermined by a “boilerplate” incidental assignment clause in a confidentiality agreement just doesn’t sit well with me.

I hope this further explanation is helpful to you understanding my view on this case as it relates to how title to “subject inventions” works under Bayh-Dole. I realize that “reasonable minds can differ,” and your view is one that others have expressed to me as well.