University Ownership of Inventions
Universities have never had any claim to ownership of inventions based on the operation of Bayh-Dole. Many university patent officers—and university attorneys—have been wrong about the law, but have relied on this misunderstanding to require assignment of inventions to bolster their patent licensing operations.
After the Supreme Court ruling, rather than re-examining the basis for their ownership claims, universities have doubled down to find new reasons to take ownership of research inventions. In doing so, they have forgotten the practices that made American university research the envy of the world.
The University of California, for instance, has required its faculty to sign an amendment to their patent agreements that would change how they assign to the university rights to their inventions, and how the university reviews inventions reported to it. The University of Washington has tried a similar approach with an approval form for outside consulting. A number of faculty members have questioned whether they should sign these amendments but many researchers are not aware of the implications of the Stanford v. Roche decision.
The ruling in Stanford v. Roche points to a fundamental element of federal research invention policy. The government does not dictate the disposition of invention ownership. The federal policy anticipates private freedom and a diversity of opportunities. The Bayh-Dole Act limited federal agencies from claiming outright all inventions made at universities with federal support.
In an ironic twist, many university patent administrators have ignored the message of freedom set out in the Bayh-Dole Act. Universities are implementing the very same onerous ownership policies that Bayh-Dole did away with at the federal agencies.
Instead of the federal agencies, it is the universities that are making the compulsory claims to faculty inventions. Where university inventors once enjoyed a wide range of opportunities, they are now increasingly required to give over their inventions without even so much as a review step to university administrators.
University administrations have important roles to play in research innovation. They develop and maintain facilities, manage compliance with regulations, provide training, and manage conflicts of interest. In short, they act as stewards of innovation. It is this stewardship that Bayh-Dole anticipated, and which is the distinguishing characteristic of university-based research, with independent investigators supported by world-class facilities.
In university work, the faculty investigators decide on the research, seek the funding, assemble the team, and decide the merit of the results. The university does not assign or direct the research, and does not control publication. In short, faculty research is not done for the financial benefit of the university. If a university is to profit from patent ownership, someone other than university patent licensing officials should be making the decision.
Why is this issue so important? At stake are the fundamental rights of inventors and the core concept of independent, basic university research. The federal government invests billions of dollars in university research each year. If the research output is held captive by university administrators, instead of being developed in a free and open exchange, then both research innovation and entrepreneurship are stifled.
The present university approach to inventions has placed ownership ahead of stewardship, and the result is an administrative quagmire as patent officers attempt to acquire more intellectual property, earlier, and with less review, in order to make claims against future users to generate income. This, not the introduction of new products into the market, is what university patent administrators mean by “commercialization”.