Folklorists define an oral tradition as verbal messages that are passed from generation to generation but are never written down, nor validated against a written, originating source. Sometimes it seems that the contents of the Bayh Dole Act are transmitted in oral tradition from stakeholder to stakeholder. How many times have you heard a person justify their stance by claiming that whatever rule they’re defending is federal law as per the Bay Dole Act? Same for many university IP policies.
Common interpretations of the Bayh Dole Act (expressed in actual university IP policies) are the following. According to the oral tradition, the Act gives universities the right to:
- Require university employees to sign an employment contract that automatically assigns ownership of whatever they invent to the university
- Mandate that faculty are legally required to disclose any idea, method, research material or data, even if it’s not patentable
- Have automatic ownership, forever, of employee ideas, methods, research materials and data, even if they’re not patentable or the university decides not to patent the item within two years of disclosure
- Automatically own the copyrights on employee written works and software
- Claim ownership of inventions that come out of faculty/industry consulting agreements
- Use “reach thru” licenses for basic research tools (usually items like screening methods or antibodies) to companies (typically biotech); reach thru licenses require the company to pay the university royalties on future products made using the basic research tool that enables, but itself is not used in the product
- Mandate that faculty inventors, as part of their university employment *must* assist the university technology transfer office in all phases of the technology commercialization and patenting process of their invention
- Mandate that companies who give research grants to university inventors must later formally license the research they sponsored (i.e. pay the university twice)
Not all universities have the above IP mandates, and my intention here is not to pass judgment on whether or not they’re appropriate. Instead, I would like to see sound arguments connect the two. It would be an interesting exercise for inventors and administrators alike, to *together* work thru their university IP policies and tech transfer procedures, and openly examine them in the context of the Bayh Dole Act and the written law. Ideally, this exercise would be led by technology transfer administrators and it would be done in a collaborative spirit.
It’s just fine that universities have some policies that apply only to the university and are not based on federal regulations. Universities need to make policies that address unique local goals, values and challenges. However, in the spirit of open governance, university policy makers should feel comfortable publicly justifying the thought process underlying each IP-related mandate, including its intended outcome. If a policy mandate is locally imposed, as in any democratic organization, the people in charge should admit that it’s locally imposed and be able to justify its value and stand in front of it. In turn, other stakeholders such as faculty and the actual practitioners should be able to veto, suggest or question what’s passed down without risking their careers. If the IP-related university policy is not a mandatory clause under Bayh Dole and is vetoed by faculty or staff level technology transfer practitioners (staff on the front lines know what will work or not), then it should be tossed out.
The oral tradition is a rich and important medium to pass along a culture’s values and myths, but it’s not the right channel to pass along interpretations of IP-related federal laws and regulations.
Melba Kurman writes and speaks about innovative tech transfer from university research labs to the commercial marketplace. Melba is the president of Triple Helix Innovation, a consulting firm dedicated to improving innovation partnerships between companies and universities.