In my experience, I haven’t found any particular bias toward or against IP claims among EEs or other academic engineers. I’d say, in engineering, the ability to design around figures, and engineers recognize that one patent does not a technology platform make, nor a technology product, unless something is remarkably fundamental.

I agree that academics need to guard the scope of their personal agreements with regard to future work. But the choice of what to do research on within the university is a personal decision. And so is who will have an interest in any invention that they happen to make. Given that university technology transfer involves trying to get inventions to industry, is it such a terrible thing if industry ends up with rights? I’d say, that’s the goal. The terrible thing is if the owner sits on the patent rights and doesn’t do anything with it–which is, by the way, what universities are now doing with scads of patents that for whatever reason they cannot bring themselves to license. I’d rather go with freedom than university bureaucratic controls–”my corporate obsession with ownership will beat back your corporate obsession with ownership.” All set up by prudent attorneys, I guess. While I don’t like reach-throughs in general, I see why they exist, as long as there is an obsession with corporate ownership that tugs at each researcher with the potential to create an IP position. There are multiple thoughts: 1) the consultant that learns what’s going on, and waits until the gig is done to “invent”; 2) improvements that anticipate directions of company work but lie outside of what the company scopes the consultant to do; 3) inventions that apply what is learned so that the company is forced to a cross license to practice in that area. Maybe I’m just not taken with the idea of the university claiming ownership as a way to somehow beat back a corporate claim. Say hello to the new boss, same as the old boss kind of thing.

Not sure about your concern on employment agreements stifling post-employment publication, other than for company trade secrets. Patents themselves are publications. The stifling of research at university B by patents held by university A should be of just as much concern. Why should university B take a patent position if university A won’t license its patents to B, or license its patents to B’s licensees on terms that work for B? Why should researchers at university B even study something that university A has taken out patents on? That’s just a free contribution to a university A’s positions. What’s the point of that? Perhaps we should also be concerned with the abuse of background rights held by universities–which is akin to future rights, just with a different starting point for the chronology.

When faculty return to academia, they should not be constrained by future promises made to industry encapsulated in assignment claims like “cause to be conceived.” In the first instance, the broad claims of industry employment agreements can stifle future publication rights, resulting in a net loss for innovation. Further, future claims create problems in academic settings for those returning to academia and subsequently seeking federal or private funding for continuation of their work. The former employer is one-and-done, while the researcher is left to drum up funding for developmental research that will belong to someone else, a monumental task.

I agree that ‘my present assignment before your present assignment wins’ is kind of ridiculous, but not more than some of the ‘arising from’ clauses I am seeing.

If the contractor fails to flow down obligations, that’s a breach. The subcontractor, if it does not know the source of funds and what the contractor should be requiring, is not in breach of contract (and certainly not in breach of Bayh-Dole–since it doesn’t apply to the subcontractor anyway) in not having an invention assignment agreement with the inventors or an (f)(2) agreement with them. I don’t see any liability the subcontractor or inventors are exposed to. They haven’t breach a contract, they haven’t broken the law. The invention rights the agency bargained for are not available via contractual requirements. The agency has remedies against the contractor for this, but the agency does not have the reach to demand the invention from inventors anyway, and the contractor cannot say, “federal law requires that you disclose and assign on request to the government, even if we screwed up and didn’t do the subcontract properly.” I don’t know whether the government could use the breach as a defense for infringement if the inventors were to bring an action. But the government might be able to sue the contractor for whatever the settlement is for such an action.

The SPRC (d) sets out when the government can obtain title–including when the contractor fails to disclose. But if the contractor fails to flow down the SPRC, then what the subcontractor does is not a subject invention, and is not subject to disclosure, and if it was subject to disclosure, that responsibility would be with the subcontractor as well, under the patent rights clause flowed down. The contractor would be exposed to misspending money, but the subcontractor if acting without knowledge would not be.

Again, federal money touching a project is not the determinant of the government’s interest in inventions under funding agreements. What matters is the flow of contracting requirements from the agency to contractor, and from contractor to its employees and subcontractors, and for subcontractors to their employees.

There are other holes: the SPRC does not deal with inventions made by clerical and non-technical workers–they don’t have to report or assist or establish the government’s rights, nor does it deal with non-employees–visitors, informal collaborators, volunteers. If, however, the university demands that these other folks sign invention agreements with the university, so that the university claims ownership (or the right to claim ownership) of what they do on the project, then one could argue these are “inventions of the contractor made in the performance of the funding agreement” and thus are subject inventions, reportable, and subject to the university’s obligations under the SPRC. In such a case, however, it is the university expanding its claims (without any mandate to do so–certainly not in the SPRC), and offering those additional rights to the government.

Consider–a university research is working with federal funds. She talks with a friend at a company about a problem in her research. The friend suggests a clever approach and there’s an invention. The friend has an employment agreement that says she will assign to the company, and the invention, is within scope of that agreement. The friend’s co-invention is not subject to the SPRC even though the invention is a subject invention as far as the agency and contractor is concerned. The SPRC is concerned specifically with is the title to invention that the contractor has the means to obtain–from its own research employees, not from everyone else. That is, inventions “of the contractor”. There are no no-collaboration/non-disclosure/review before publishing/trade secret requirements in federal funding agreements unless there is classification or other exceptional circumstances (such as NASA’s FAR Supplement (d)(3) variation on 52.227-14 (see NASA FAR Supplement 1852.227-14–restricting publication or release of computer software). Bayh-Dole does not mandate that there cannot be such disclosure (could blow patent rights), collaboration (could move inventions to non-contractors, could make for joint ownership), or consulting (could move results of projects outside funding agreement performance for development rather than remaining within the funding agreement). These are not the concern of Bayh-Dole, and are not in any way prevented by the SPRC. The SPRC is not set up to ensure that universities obtain exclusive title to all potential inventions that could arise as a result of university researchers doing work. The law does not support university administrative claims that it does, or should, or that was the intent. It is, in fact, shocking that university administrators would even be making such claims! Universities in particular operate open labs and encourage publication and public engagement. The impetus to argue against these freedoms merely to get monopoly patent positions from which to make money and litigate while claiming public interest and necessity to support private investment in inventions is most incredibly wrong-headed. The internet would never have happened, if university patent administrators of today had been there to prevent collaboration, prevent working standards, lock up rights for future sale to a monopolist. What cool stuff are they prepared to suppress today? 3d printing? Synthetic biology? Regenerative medicine? Energy storage? There are plenty of excellent opportunities to screw things up, and there’s every indication that university patent administrators are prepared to do this–and say it is in the public interest to do so. Wowser.

Bayh-Dole is set up with an assumption that contractors will try to limit their exposure to subject inventions, so there are procedures by which the government can review determinations of subject inventions and contractors can appeal government decisions. One would think these appeals would be to argue an invention is not subject after the government has said it is. But the university practice appears to go the other way–the administrators assert that things are subject inventions when they very well may not be, and then aim to use the SPRC in some way to force assignment and prevent independent deployment of the inventions.

In Stanford v. Roche, Roche made this point–that Stanford never produced the funding agreements that they claimed resulted in the inventions, never showed that the inventions came within the statements of work of those agreements. Stanford merely asserted that the inventions were subject, and then tried to invoke Bayh-Dole to claim that they had ownership regardless of the SPRC contracting, regardless of the requirement to have an (f)(2) agreement, regardless of the approval for the post-doc to spend 9 months at the company learning its proprietary technology. Stanford argued (and a gaggle of university administrators agreed), that the contracting was just for show and did not matter, that Bayh-Dole applied directly and vested title with the university. The CAFC said, follow the contracts, and the Supreme Court agreed.

The contracts matter. Universities holding monopoly patent rights from federally supported research does not. The idea behind the SPRC is that universities might manage invention rights that inventors request that they manage, not that universities have a mandate to compel such rights from inventors, and prevent anyone else from participating. It is entirely possible for university administrators to compel rights and shut down collaboration, with policy, rhetoric, and bullying. But federal research and innovation policy, and Bayh-Dole in particular, with its SPRC, has absolutely nothing to do with it.

401.14(a)(g) provides that the SPRC flows down for grants and contracts with nonprofits and small businesses, the patents rights clause appropriate to other subawardees is applied from the FARs or DFARs, and provides further (3) that for contracts, subcontractors end up with a contract with the government regarding inventions. Essentially, this is a substitution of parties, which is anticipated in the definitions at 401.2(a). In that case, (g) puts the subcontractor in the position of the contractor with regard to a patent rights clause, but the particular clause may be the same SPRC agreed to by the contractor or may be another patent rights clause required by the FARs. Of course, if there are exceptional circumstances, then there can also be a custom subcontracting clause as well. Note that under (g), it is the subcontractor who has the obligation of reporting any subject inventions of the subcontractor. Since the contractor agrees not to have any interest in those inventions–at least not as a condition of the subcontract, and therefore not within the funding agreement–the contractor has no obligation nor standing to report a subcontractor’s subject inventions. For contracts, FAR 52.227-11 is the primary clause, and it directs contractors to FAR 27.3 to determine how to construct the flow down invention rights clause in the subcontract.

Now, non-compliance. Since these are matters of contract, it isn’t appropriate to say–well, the subawardee/subcontractors just have to do it, since it’s the law. It’s a matter of contracting and delegation, agency review and approval, and remedies for breach. If the recipient/contractor fails to flow down the appropriate clause, then the subcontractor does not have any obligation to report inventions. If the subcontractor is complicit in the use of federal funds, the government may have remedies against both the contractor and subcontractor.

If the subcontractor worked with an inventor but lacks an invention agreement and/or hasn’t required (f)(2) agreement, then it’s not an invention “of the subcontractor”, and the government doesn’t have assurance of rights, the contractor doesn’t have rights, and the subcontractor doesn’t have rights in the invention.

As to your last thought, the money doesn’t come to university offices for redistribution–it comes to the university specific to a proposal with a detailed budget that has been submitted and approved for funding. Often subcontractors have been identified in the proposal as well. In my experience, university sponsored projects administrators are very careful with subcontracting. For grants, where most of their activity is, subawards are with other universities and non-profits, and everyone follows Circular A-110. Where there are contracts, the biggest challenge is deciding whether the SPRC applies or another clause in the FARs.