PROTECTING UNIVERSITY PATENT RIGHTS FOLLOWING STANFORD V. ROCHE, FILMTEC CORP. V. ALLIED-SIGNAL, AND PATENT REFORM
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The Bayh-Dole Act (“the Act”) was passed in 1980, permitting U.S. small businesses and nonprofit organizations (including universities) to elect retention of title to inventions created in federally-funded research. Since then, the Act has been the prevailing authority over university ownership of research patents. In recent years, court decisions and patent reform laws have directly undermined the laws allowing universities to obtain title to inventions. Courts have clarified that the Bayh-Dole Act neither permits a university to unilaterally claim title to inventions nor automatically vests title to universities. Inventors must assign inventions to explicitly convey title, and if challenged, the use of inadequate assignment language may preclude conveyance. Furthermore, the recent switch from a first-to-invent to a first-to-file patent system may cause confusion with respect to timelines for electing title, disclosure of inventions, and timely filing of patent applications. This research thesis included a study to investigate and analyze university practices for drafting patent assignments and setting disclosure timelines. Ninety university technology transfer professionals were surveyed with both closed questions for qualitative analysis and contingency questions for coding and evaluation to assess risk of patent protection loss. The results of the study suggested that many university technology transfer offices mistakenly rely on Bayh-Dole provisions to create an automatic right to patent ownership and provide disclosure guidelines for patentable discoveries. There is an indication that, to varying degrees, university patent owners are at risk of losing ownership rights by not using optimal assignment language. Current disclosure practices indicate a risk due to late disclosure and election of rights, which could potentially lead to the late filing of applications and permanent loss of patent protection.