Constitutional Inventors, First-Possession, and the Confusion of Bayh-Dole

Property law courses generally begin with the concept of first-possession as an originator of property rights. In patent law, the first-possession principle leads to a rule that potential patent rights are owned by the inventors unless and until they are assigned to another entity. See Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 35-37 (1923). The legal basis for inventor rights is derived from constitutional principles that give Congress power to enact patent laws that grant exclusive rights "to inventors." US Constitution, Article I, § 8, cl. 8.

In Stanford v. Roche, Both Stanford and the US Government argue that that the Bayh-Dole Act of 1980 alters this original formula in the special case where an invention was either "conceived or first actually reduced to practice" with the use of US federal funding received by a university, non-profit, or small business. In that situation, the Bayh-Dole Act suggests that the funded-entity, the "contractor", automatically holds patent rights with a right to "elect to retain title to any subject invention." 35 U.S.C. § 202(a). If the contractor decides not to retain title, then, the funding federal agency "may receive title" or "may … grant requests for retention of rights by the inventor." 35 U.S.C. § 202(d). The Bayh-Dole Act includes a comparative-law clause making its provisions superior to those found in any other Act. "This chapter shall take precedence over any other Act which would require a disposition of rights in subject inventions of small business firms or nonprofit organizations contractors in a manner that is inconsistent with this chapter."

The Bayh-Dole language is somewhat confusing when examined through a first-possession framework. Namely, the statute indicates that the university might "retain title" and also that inventors can request "retention of rights." It is unclear from these provisions whether it is the university or the inventor that first holds rights. The US Constitution helps break this seeming conflict by focusing on inventors as the original recipient of rights. With this Constitutional backstop, there is no way that the university can be the original rights-holder. Rather, that designation must remain with the inventors.

This result may be important for the Stanford v. Roche case that was recently granted a writ of certiorari. Under a Constitutionally limited Bayh-Dole Act, Stanford cannot automatically claim first-possession rights to every invention & first reduction-to-practice that was materially supported by federal funding obtained by Stanford. At most, the Bayh-Dole law requires a transfer of rights from the inventor to the university. In the property framework, the question then focuses on the timing of the Bayh-Dole transfer (is it immediate or does it only occur upon the university's election of rights?) and on its impact on a prior transfer of patent rights to a third party.

158 thoughts on “Constitutional Inventors, First-Possession, and the Confusion of Bayh-Dole

  1. Lucky for youse guys… else you’d heard a mouthful from me

    Yes indeedy – weza be lucky we don’t hear more from you.

    And your little bunny too.

  2. Lucky for youse guys i’m in semiretirement else you’d heard a mouthful from me or my bunny on this line-o-thought

    Happy Thanksgiving weekend

    Tip: Lighten up and smell life to its fullest, that’s what I always say, or not
    you’ll thank me in the morning

  3. Now I know I was silenced was because I have nothing left. And after the First was stolen the Second and the Third were as much a dummy as the second Trademark, when am I going to be allowed to get a Lawyer? when are you going to stop violating me?

  4. And too think…. After a Bridge over the River Quai moment…. and no where to go but down a deal maybe LOL… and with all that Power If you do this for me, I’ll do that for you!
    And to think the two single Pea brained whatever, Deny the First, Thirteenth and Fourteenth Amendment rights too a Two Pea Brained applicant, all over a……

  5. And because I am awarded a Birthday wish… I wish someone would tell me how all this got through without being recorded. Or if it was recorded then how come it was ever allowed either. And maybe erased then… scatter. And because I am only allowed one wish with the third being a figment of Whos’s ever imagination then how is it there? And the others being well .. only one wish right now.

  6. Slonecker and others:

    For a decade-old but now public discussion of some of the difficulties, contractual subtleties, and inter-institutional relationships concerning an NIH IP clause, see this memo from the UC tech transfer office:

    link to patron.ucop.edu

    Among other things, it mentions assignment of rights and ownership of data, and it illustrates one example of tension between a fed gov’t agency, a university, and a third-party private entity.

    This stuff has been going around for some time now. I still believe that one of 2 things will happen at the SC: either the decision will be based on the notice requirements for a taking while acknowledging that rights initially belong to the person(s)-as-inventor(s), or the case will be dismissed as improvidently granted.

  7. Inviting Body Punches,

    The original clause was replaced because someone, somewhere got it in their head that new is obviously better than old. Seriously, the USG did not like the old clause in substantial part because it limited what the USG could do with technical data and software to “USG purposes only”. They wanted it to read, in essence, “for any purpose the USG deems fit”. Why did they want the change? Because without it the USG was at a distinct disadvantage in competing with the private sector for foreign business. There were a few other reasons, but they were of relatively little importance.

    Why does the new clause persist? Candidly, in my view it is because no one in the USG has ever taken the time to subject the new clause to a thoughtful legal analysis, and it is unlikely this will ever happen in the near term since there are precious few, if any, persons skilled in IP remaining in the USG’s employ outside of the USPTO and a few other agencies that deal heavily with IP issues (e.g., DOE and NIH, but certainly not DOD).

  8. Slonecker–

    2 questions: first, why was the earlier clause superseded by the new clause, and second, if the new clause so disfavors the gov’t, why does it remain in use?

  9. Inviting Body Punches:

    Be careful, Slonecker–when the incompetence is nearly complete, the system becomes irrational and the likely outcomes of your own actions are no longer reliably predictable–you are no longer able to effectively ensure that your actions will result in a net benefit to your client.

    Fortunately, this has never proven to be the case, and as long as general practitioners who have never dealt with substantive IP law continue to rule the day within the USG procurement world it will almost certainly never be. To take advantage of it, however, it is incumbent upon the individual negotiating on behalf of a private sector client to actually possess a level of knowledge concerning patent, trademark, copyright, and trade secret law in order to see through the “mumbo jumbo” emmanating from the USG’s negotiators.

    For example, in a prior life the DOD had a contract clause entitled “Rights in Technical Data dnd Computer Software” that was actually prepared by “old-timer” IP lawyers within the USG who understood the distinction between trade secret and copyright law. Accordingly, the clause contained two separate and distinct grant of rights to the USG, each tailored appropriately.

    In the early to mid 90’s their input was cast to the side in favor of a clause that fundamentally misapprehended this important distinction. What eventually came out of the redraft of the prior clause was a new clause that conflated the two bodies of law, with the end result being a clause that ignored completely a separate copyright grant. If the representative of a private sector client is unable to use this glaring ommision for the client’s benefit, then I have to wonder if the private sector representative should even be at the negotiating table.

    What most persons who touch B-D only on rare occasions do not realize is that there is a definite “pecking order” among counsel within the USG. There are “contract attorneys”, and then there are “patent lawyers”, with the former having manipulated the procurement system such they wield power far, far exceeding that of the latter. In fact, the latter are almost universally ignored, which invariably leads to the downfall of the USG’s interests during negotiations relating to IP issues. If this is not serving private sector counsel with an opportunity on a ‘silver platter”, then I do not know what is.

    I am not at liberty to disclose specific instances where this has played out because this would permit others to identify the parties, the subject matter involved, the relevant contracts, etc. All I can say is that as events subsequently played out concerning domestic and international markets those associated with the USG were none too pleased to learn what they thought they had and what they really had were polar opposites.

  10. Slonecker: “…in my experience virtually no one representing the government has the slightest clue what the law actually says…”

    While I might not go quite that far, his statement is yet another acknowledgment of the pervasive and extreme nature of public-sector incompetence.

    Be careful, Slonecker–when the incompetence is nearly complete, the system becomes irrational and the likely outcomes of your own actions are no longer reliably predictable–you are no longer able to effectively ensure that your actions will result in a net benefit to your client.

  11. patent litigation | Nov 07, 2010 at 07:51 PM:

    Fortunately, “work for hire” is not associated with patent law. In fact, I know of no one who seriously argues that “work for hire” is faithful to the strictures of Article 1, Section 8, Clause 8. It is a mongrel doctrine that was crafted in an era prior to the enactment of the Copyright Act of 1976, and for practical reasons associated with copyright extension. While some vestiges of copyright extension remain, perhaps now is an appropriate time to reassess the doctrine.

  12. It’s always interesting to me when patent litigation directly involves constitutional issues, and this case seems particularly intriguing. However, I can see an argument that an innovation by a university-employed inventor constitutes a “work-for-hire” — comparable to such situations in copyright law — and that therefore the university holds the rights of first possession. I hope this blog writes progress reports on this case, because I’d like to know the result.

  13. Mr. Lieberstein,

    Not quite sure why your’s is a double post.

    Obviously you have noted my comments above. I believe you will find that we are not at odds.

    What raises concerns with me is that I have been around the B-D Act for about 25 years, thus facing it on a day to day basis. Above that, however, I have also been around other contractual approaches that agencies have resorted to as a means of by-passing B-D. While they often wrap these other approaches with a cloth that reads “this is to provide flexibility over what is required by B-D”, in point of fact many of them are instruments designed to “get more” for the USG and “leave less” with the private sector.

    10 USC 2371 is one such approach, and has been used to not only secure “more” for the USG, but to do violence to the term “funding agreement”, but also an end around to the underlying premise in B-D that it is intended to operate as a “license” approach. Even a cursory review of 10 USC 2371(d) demonstrates what I am talking about. This little “nugget” was slipped into legislation pertaining to DARPA back in the 1991 timeframe, and has since morphed into an even broader form.

    DARPA and other units of the DOD are on record as saying B-D has no applicability (for this they have adopted the rationale that “contract” in B-D is limited to “procurement contracts”), but they will graciously agree to use B-D as the baseline for the negotiation of rights with the private sector. In return for reducing some of the administrative requirements specified in B-D, they have oftentimes insisted that as a condition for funding the private sector must agree that the agency can demand the private sector pay royalties to the agency, an interesting approach given that under B-D no authority exists for any such demand.

    One can only begin to imagine the surprise of a company executive who wants to exploit an invention or related know-how/show-how in domestic civilian markets being informed that even though the company may “own” a patent and have granted a “royalty free” license to the USG, the USG is entitled to the payment of royalties (royalties, btw, that the agency gets to add to its appropriations notwithstanding the legal doctrine of “non-augmentation of appropriated funds”.

    Stevenson-Wydler (or at least I believe this is correct) contemplates CRADAs. Under this arrangement there is virtually no possibility that a subject invention can arise since the private sector participant(s) does not receive any federal funds whatsoever. However, this little fact seems to be overlooked (i.e., deliberately ignored) when it comes to the allocation of rights. The USG wants what it would otherwise get were this a funding agreement under B-D, but it does not want to have to provide such funding in order to get the rights it wants.

    The above are just two examples, but I believe they fairly point out my concern that the federal agencies need to understand that they do not possess the inherent power to play fast and loose with B-D. It is bad enough they do this with their other new-found approaches. It is unacceptable that they also attempt to do this when there is no argument that B-D is controlling.

    Of course, in this morass of misinformation there is a silver lining. Since in my experience virtually no one representing the government has the slightest clue what the law actually says, it is a fairly easy matter to turn it back on them for a client’s benefit. For example, the USG demands rights for a specific invention, with it asserting that this is because it is a subject invention due to having been first actually reduced to practice under the funding agreement. The rejoinder? “Take a look at our contract proposal, wherein you will immediately note that the invention was both conceived and first actually reduced to practice during the time leading up to the proposal’s submittal.” The USG response? “OK, but we are still entitled to Unlimited Rights in the technical data since it was created under the contract!” The contractor’s response? “No way. You are entitled to no more than “Limited Rights” (i.e., you must hold all of the technical data in the strictest of confidence) because by definition “developed” as used in the applicable Rights in Technical Data and Computer Software clause by definition reflects that “developed” is earlier in time that “reduction to practice”.”

    If the DOJ wants to take a position in this case that will provoke private sector responses such as above, then so be it. But let me be the first to tell it “I told you so.”

  14. Wow! What a hornets nest this case seems to have stirred. Sometimes it is helpful to go back to fundamental principles developed by the common law. A classic Supreme Court opinion in a case decided almost a century ago, but still cited quite often, is STANDARD PARTS CO. V. PECK, 264 U.S. 52 (1924). Standard Parts had acquired the Hess-Pontiac Spring and Axle company and assumed that it owned the rights to an invention of William J. Peck. Mr Peck had been hired by the Hess Co. to help it develop a new “front spring”. When hired, Mr. Peck signed an agreement which was silent as to ownership rights to any invention. So Mr. Peck said that he owned his invention. The Supreme Court decided that Mr. Peck did “nothing more than he was engaged to do and paid for doing.” So Mr.Peck had transferred his right to ownership to his employer. I devoted a couple of years to the study of ownership rights to ideas and inventions in preparation for my book “Who Owns What Is In Your Head?” The Bayh-Dole Act is not necessarily inconsistent with the constitutional right of an inventor to his invention–provided that an inventor may transfer his ownership rights as a condition of employment. The transfer does not depend on a written agreement if the inventor, like Mr. Peck, did what he was hired to do and paid for. Conceivably, Bayh-Dole may be construed to apply to inventions for which the inventor had been hired, and his work had been sponsored by federal funds.Of course, Roche questions whether the work of the Stanford U. employee, while at Cetus, was sponsored with federal money. That is a fact issue. Whether the employee/inventors’ first agreement with Stanford was subordinate to his later agreement with Cetus is a legal issue. The latter is important to Universities and Businesses that require a transfer of rights to inventions made in the course of employment,as a condition of employment. Those agreements may be vulnerable if superceded by subsequent assignments by the employee. But facts and pragmatic legal issues are boring. I do not mean to take away the fun arguing a constitutional issue. Stan

  15. Ping;This is the nations largest law blog so it influences many people twords change for the better and the more people changed means better chances congressional action. If you would like to become involved let me in a progressive role let me know I have free consignment of patents With strings ready for funded candidates.Eye am always doing something real even if it is stolen like natural gas fired powerplants shutting off bp oil spill and on and on.

  16. James Bellie: obviously bayth-dole is unconstitutional if this is true and a theft of intellectual property.It would violate the entire patent systems conception purpose.If a true inventor is unable to progress with his invention his intrests may have to be reduced to a level determened by mutual agreement generally not exceeding 50% of eventual profits after all expenses.Even this requirement should only apply for critical product advancements.If unable to find bidders at that level the % should be reduced to as low as 15% depending on profit potential.Conception is terrible thing to retard.

  17. More yamming it up, more blaming of others…

    Get off your duff already Mikey and do something about it. Geesh, ya be like Malcolm and his be otching here. All ya be is talk and blame, blame and talk.

    Let’s see ya do somethin real.

  18. Sarah;Ilove turning sarcastic critism into progress. If only I could find investors and or companies actually willing to buy products instead of stealing them the country could get out of recession and we could realize the true potential of my maximum creativity.Progressive patent reform is critical to correct influences of the greedy thiefs on the present system and due to people who wont listen and dont believe.

  19. M. Slonecker nails it.

    Kudos

    the participants on the “legal side” of the issue within Stanford were woefully ignorant of these how to properly achieve the desired result, either by appropriate agreements with its employees or appropriate reliance on other available legal doctrines.

    Perhaps the academics at Stanford should be focusing on this black letter law instead of inventing all kinds of excuses to weaken the patent system. Not naming names, but in particular, starts with Lem and ends with ley.

  20. Westportlaw,

    Standing even further back, the motivation for B-D was to bring some semblance of uniformity to a system that up until then varied widely from agency to agency. Until then agencies were split on two approaches generally referred to as “title” and “license”. Under the former agencies were insistent on ultimately being the holders of title (e.g., DOE, NASA), whereas, of course, under the latter agencies were holders of licenses (e.g., DOD).

    Importantly, under either approach the key consideration was the quantum of rights that would eventually inure to the benefit of the USG. With this it mind is should be apparent that the USG was not concerning itself with who held the rights in the first instance, but only that at the end result would be either title or a license.

    It quite naturally follows, and as demonstrated from many years of how these competing approaches worked, that when reference was made to “contractors”, what was in essence really happening was that “contractors” was being in used in a generic sense to signifiy inventions created by participants from the “private sector”, be they a prime contractor, a subcontractor at any tier, a grant recipient, and a cooperative agreement participant.

    Nothing in B-D was intended to change the distiction drawn between the USG and the private sector.

    What makes the position espoused by the DOJ and Stanford troubling is the suggestion that title in the first instance resides with either the USG or a contractor, and not initially in the inventor(s). This position is so at odds with black letter patent law that it unnecessarily butts up against Article 1, Section 8, Clause 8. This need not be the case as you aptly note, but perhaps out of ignorance the DOJ and Stanford fail to appreciate that black letter patent law and B-D can peacefully coexist by the application of other legal doctrines that can accomplish the same result.

    Accomplishing this result in not rocket science, but after reading what Stanford has done it seems clear to me that the participants on the “legal side” of the issue within Stanford were woefully ignorant of these how to properly achieve the desired result, either by appropriate agreements with its employees or appropriate reliance on other available legal doctrines.

    If nothing else, this case should stand for the proposition that those involved in legal matters on behalf of private sector participants need to involve themselves much more than with merely a general knowledge of the type of funding agreement involved and the federal contract clauses mandated for such an agreement. There is absolutely no reason and no excuse for anyone on the “legal side” of private sector participants not placing equal emphasis in their review of the Statement of Work, easily the most important facet of any funding agreement. The Statement of Work describes in datail what work is to be performed under an agreement, and anyone on the “legal side” what takes the time and effort to actually read it (and amend it if necessary) can very easily identify and anticipate future problems that may potentially arise, thus avoiding the very situation present in the Stanford case.

    My bottom line is pretty simple. B-D does not, and should not be interpreted to, modify black letter patent law. It is no more and no less than a statute designed to ensure that the default position is based upon “licensing”. In my view Stanford’s screwup is no good reason to try and offer up a contruction of B-D that does violence to the original purposes underlying B-D, thus creating the potential for a problem where none need exist.

  21. I just have to ask, who else here has been hit by the israeli economic hit womans at the mall?

    If the economy is down, it’s probably because they’re making all the money.

  22. “With this Constitutional backstop, there is no way that the university can be the original rights-holder.”

    Not true. Maybe article 1.8.8 is not the only constitutional provision that could authorize congress to do this. And on a related note, who’s to say that congress can’t set up a scheme where title automatically passes to the university under government research contracts (even if the inventor is still the original rights-holder), allowing the university to retain title?

  23. Wow! What a hornets nest this case seems to have stirred.
    Sometimes it is helpful to go back to fundamental principles developed at common law. A classic Supreme Court opinion in a case decided almost a century ago, but still cited quite often, is STANDARD PARTS CO. V. PECK, 264 U.S. 52 (1924).
    Standard Parts had acquired the Hess-Pontiac Spring and Axle company and assumed that it owned the rights to an invention of William J. Peck. Mr Peck had been hired by the Hess Co. to help it develop a new “front spring”. When hired, Mr. Peck signed an agreement which was silent as to ownership rights to any invention. So Mr. Peck said that he owned his invention.
    The Supreme Court decided that Mr. Peck did “nothing more than he was engaged to do and paid for doing.” So Mr.Peck had transferred his right to ownership to his employer.
    I devoted a couple of years to the study of ownership rights to ideas and inventions in preparation for my book “Who Owns What Is In Your Head?”

    The Bayh-Dole Act is not necessarily inconsistent with the constitutional right of an inventor to his invention–provided that an inventor may transfer his ownership rights as a condition of employment. The transfer does not depend on a written agreement if the inventor, like Mr. Peck, did what he was hired to do and paid for.
    Conceivably, Bayh-Dole may be construed to apply to inventions for which the inventor had been hired, and his work had been sponsored by federal funds.Of course, Roche questions whether the work of the Stanford U. employee, while at Cetus, was sponsored with federal money. That is a fact issue.
    Whether the employee/inventors’ first agreement with Stanford was subordinate to his later agreement with Cetus is a legal issue. The latter is important to Universities and Businesses that require a transfer of rights to inventions made in the course of employment,as a condition of employment. Those agreements may be vulnerable if superceded by subsequent assignments by the employee.

    But facts and pragmatic legal issues are boring. I do not mean to take away the fun arguing a constitutional issue.
    Stan

  24. ping; no deal what eye am throwuing out is the potential of correction of injustice the largest one in history. what your throwing is sarcasm.First you dont believe the story so I have to create the defences then you critisize the amount of references to the sarcasm you have created. What part of your the problem dont your understand.

  25. why dont you quit making any refrence to me on this blog.

    Sure – as soon as ya stop wastin blog space on your whinin, I’ll stop throwin at ya – deal?

    Now get busy ta savin your grandfather’s good name that ya be smirchen.

  26. You be the one that needs to stop blamin Mikey.

    So it comes down to ya squanderin everythin that your grandfathers did – they must be rollin in their graves at what ya let slip through your fingertips.

    World’s greatest inventor – NOT. Ya can’t even invent a ways to safekeep what ya have.

    Ya just want to come on these boards and whine and cry abouts how unfair everythin in life is.

    Don’t bother – weza don’t want to hear it. Go and invent yourself out of your dilemma and stop botherin us.

  27. Mikey – cepts I ‘ve never asked anythin directly of you for me – I aint wantin your money, or inventions for me – alza I want is for you to actually invent somethin that works and to stop whinin how so many things are against you. Overcome instead of whinin. Capish?

  28. In many vital areas research isent recieving break through conceptions because the comanies are concerned about retaining secresey causing non involvement of consultants who could advance the project, so funds continue to be squandered. Government funds shouldent be alocated to these companies and consultnts should recieve a 15% of savings for breakthroughs cost reducing development

  29. Ping no I am a business man who sells a valuable product. Your a thief trying every dirty trick in the book to get intellectual property for nothing and cut me out of the deal what part of your a rip dont you understand. Eye havent gotten any of that money thats why I need an 200 attorneys. I earn money by selling what i am best at producing. I encourage you to do the same within the framework of the law of course.Beggin nothing.

  30. Mikey, forced work = indentured servitude.

    C’mon Mikey – it seems that you are the thieve wantin other peoples money. Why don’t you earn some of that money? why you always be beggin here?

  31. Ping no my plan forces corperations to pay for inventors attorneys Just make it a yearly patent assesment into a fund.No its not his fault its people like you who keep pulling the system in the wrong direction. I got lotsa good inventions for sale you got money.See my website we can custom concieve and you can startup in 90 days.

  32. IN the blythe dole act the rights of the inventor should not be able to be extinguished due to government involvment the true inventor needs to stay connected with the invention to ensure sucessful development. Government involvement shouldent occur unless private sources are unavailable. Universities shouldent profit instead of the inventor. government funds should only be allocated when efficient development can occur. Only top viable projects selected by expert comittie should be government funded .The governments repayment intrests should come first before the inventor as long as he remains project involved.Universities should profit the same as a private competing facility hired by the inventor

  33. so its not indentured servatude.

    But Mikey, your plan forces the people to work contingent, and that is indentured servitude.

    Also, I see ya throwing your great grandfather under the bus, as if he invented the justice system, it’s his fault that that same system fails you so badly.

    Ya know, maybe its time for you to stop all your whining and actually invent somethin that works. Get busy – ya got lotsa work to do.

  34. Ping; no I dident invent indentured servatude and my coment doesent advocate it but my great grandfather invented the justice system and this present patent ststem is any thing but.To work contingent you have to believe in the merits of the case and risk your time so its not indentured servatude. Corperations are using money to tilt the justice system so let them consider it a fine for previous abuses.

  35. Dear Ping:
    AI,

    Iza surprised that ya didn’t fit in Bilski 14

    ____

    I think you are confusing me with Diehr Dierhrist? Besides, mentioning Bilski 14 to the anti patent crowd is like flashing a cross to a Vampire, or a profit statement to Mooney.

  36. IANAE: I do not work for anyone. Yet I have several products on the market that I am not getting paid for.
    I think you are naive, you think INVENTORS are getting compensated for their contribution.
    I would say that in most cases the inventors get the short end of deal. WHEN there is a deal. Most companies tell you right to your face “Sue Me. I will keep you in court so long you will be broke” What part of that is Justice???
    This needs to be fixed.

    We also had the patent office give another inventor a patent when we filed first. HOW DO YOU FIGHT THE GOV. THEY PROTECT THEIR OWN

  37. Mikey,

    Try again, but this time try inventin somethin that will be legal. Or did you invent indentured servitude as well?

  38. OK ping;I say we draft patent reform that requires 50% of patent attorneys to work for inventors. Presently 100% are corperate only or wont work contingent. Charge the corperations to level the legal playing field. Just the fear of this will get them to bargain fairly to begin with.Is there two hundred attorneys in the house.

  39. The Bayh-Dole act is flawed. Consider the case where there is
    no assignment of the invention
    to the university. What right does the government, through the Bayh-Dole
    act, have to give the benefits of the invention to the university and away
    from the inventor. Seems like a violation of the constitution to me?

  40. C’mon Mikey, invent something to take care of this already – it’s been like a thousand MRT years since I’ve seen ya recognize the problem. What the he lls takin ya so long?

  41. Ianie; remember I am not the inventor because I am not named on the patents so eye couldent possibly be on strike.Strikes involve employees not bankrupt businesses due to your and thousands of disbelieving potential customers and those who dont want to deal due to money already owed for previous ip.Ive been explaining to you that a conspericy exists to exclude both through intimidation and corruption within the office.Big business has also convinced these the patent office that invention occures in the r+d departments instead of out of my mouth they form interoffice inventor conception packs to steal inventions.They also pick inventions from overherd and espionoged conversations and my intrernet usage.In total about 40 different methods.I am not perfectly willing to invent without compensation they are murdering and intimidating like you in order to steal and thats not half way legal or the correct incentive to invent.The previous and present patent system now needs to compensate for the attrosities of the past is is called justice and award new limited patents.

  42. a patent should be granted in appriciation for the conception that improves everyone who uses its life.He also doesnt understand that without it it would not exist and no one can use it.

    That’s the part I don’t understand. You and your family have been inventing pretty much everything of significance for two centuries now, and I don’t see your name on a single issued patent. Why do we need patents as an incentive to innovate, if you’re perfectly willing to invent the entire world anyway?

    Oh, wait, I see it now. It’s right there on your website.

    If we are successful in obtaining issued patents [...], we will continue to produce intellectual materials. If not, we must close our doors and human advancement, in essence, will stop.

    Congress, if you’re listening, patent reform is more important than you think. The inventor is threatening to go on strike.

  43. Ianae; you should realize that the founding fathers in the 1830 articles of confederation put the power in the high federal/high royal for a very good reason.When it comes to making the right decisions there is only one true wiseman thats the worlds only inventor of significance.me no conciet intended just the facts.Presently oboma doesent recognize the asset he is wasting he gets my ip coming in from othere sources. He uses the term beligerently no one ownes a monopoly on wisdom this is retartive compared to what could occur. This is why he is so anti inventor He doesent comprehend that a patent should be granted in appriciation for the conception that improves everyone who uses its life.He also doesnt understand that without it it would not exist and no one can use it. Also he doesent understand that no one is under obligation to use it so they can obstain from use in most cases and there is no cost to them.

  44. …except the inventions that protect your other inventions.

    Now there’s a puzzler.

    Mikey, yous gots some esplainin to do.

  45. First you have to protect the inventor and there is nothing in the patent system about that.

    Sounds like a major design flaw.

  46. Trying to correct the patent system is nearly impossible you have thousands of people pulling against you in other directions and thousands that dont believe you such as yourself you block head.First you have to protect the inventor and there is nothing in the patent system about that.The inventions all work and are in common use everywhere.

  47. Mikey waited all of thirty minutes to respond to my post.

    In MRT time, that’s like 300 years.

    What took ya so long Mikey?

    And whys no inventions on protectin your stuff? (unless O course, your inventions don’t work…)

  48. Dear Jules; I of course also invented psychiatric wards and padded wall hospital rooms At port huron hospital in the 1970or 1980s just to show you the instant deversity of invention fields.Of course trying to prove that to everyone individually would take millions of years.Correcting inventorship determination methods in our patent system is the suruest way to prove this although I have cluster methods that prove it beyond astronomical ods.

  49. Dear Mr. Thomas,
    You really brigten up the place. We went from a boring gray to a very soothing padded white.
    Respectfully.

  50. ping; ya I invented that with sherry louis lambchop in detroit. Ego has become nessary to prove anything otherwise the frauds get away with everything that is probably what you would like.I have no one to blame except 200years of theiving murdering frauds and corruption and people that want it to stay that way.Of course there are layers of corruption that would have made justice impossible at any time.Also conspitacys to refuse to deal and only willing to steal makes patents worthless.

  51. Do a better job of inventing ; impossible

    Well then you really should be mad at yourself, shouldn’t you? Ya really have no one else to blame, cause you invented almost everything that is possible. I quite imagine that you invented the EGO that prevents you from seeing (eye) the real problem here.

    Think about that a while before responding – you will recognize several layers in the message, since of course, you invented such a message.

  52. Ping;Do a better job of inventing ; impossible eye have invented almost everything that is possible. Eye could use an army of attorneys to get the top 10000 patents back into the correct name.Is there an ATTORNEY IN THE HOUSE! Ive already invented the major types of these drugs labs subinvent new variations.

  53. Wishful thinking EG.

    must reside, at least initially, in the contractor to prevent these two objectives from being easily circumvented

    must?

    Nah – if in fact the “must” were true, then the rest of the universe of university-inventor contracts deals would not have to be worded as they are – they wouldn’t have to be worded at all.

    I done shown already how the actual wording of the B-D stuff does not implicate the original ownership settings in Title 35.

    And don’t blame the court for frustrating the objectives – put the blame where it belongs – on Stanford – don’t they supposedly have one the “premier” academia on patent stuff there?

    Mikey,

    Don’t get upset with me – Iza just something you invented – if ya gonna be upset with anyone – be upset with yourself and do a better job of inventin. Iza suggest that ya focus on inventin some psychotropic drugs.

    AI,

    Iza surprised that ya didn’t fit in Bilski 14 somehow in your addition to the thread. But I also observed the (C)onstitutional authority picture in my reference to how the B-D act was made law (it was not a constitutional amendment and thus must be inferior and cannot serve to frustrate the ownership implication of who is awarded rights in a patent.

  54. DC: “The legal basis for inventor rights is derived from constitutional principles that give Congress power to enact patent laws that grant exclusive rights “to inventors.” US Constitution, Article I, § 8, cl. 8.”…………. The US Constitution helps break this seeming conflict by focusing on inventors as the original recipient of rights. ”

    AI: In addition, it’s pertinent to point out that it’s” WE THE PEOPLE”, as highlighted in the Constitution, that grants Congress the Power to enact said legislation, thus establishing an Inventors Constitutional Right to a patent.

  55. EG,

    I am not inclined to take B-D quite so literally for any number of reasons, not the least of which are:

    1. To say that title resides by operation of law in a contractor to a funding agreement strips title from lower tier subcontractors, which even the federal agencies do not accept as an appropriate interpretation. See, e.g.:

    48 C.F.R. PART 52–SOLICITATION PROVISIONS AND CONTRACT CLAUSES

    2. It would likewise create a prima facie conflict, in the case of funding agreements with the Department of Defense, with 10 U.S.C. 2320, which differentiates between the rights of contractors and subcontractors (at any tier).

    I cannot speak to how universities handle compliance with USG funding agreements (based upon what I have read in Stanford’s case, apparently not very well), but I can speak with authority concerning how such matters are handled under contracts for the performance of R&D work with ordinary businesses and individuals.

    Contractors and subcontractors are expected to have agreements in place with employees sufficient to preserve the rights that are associated under B-D with the USG, contractors are expected to handle all the required disclosures/paperwork/etc. by dealing directly with the USG, subcontractors are free to bypass contractors entirely and deal directly with the USG even though privity of contract is absent, contractors may not demand by any means rights in the inventions of subcontractors (at any tier), and so on and so on.

    As I noted in one of my above comments, B-D is built upon the assumption that the party to a funding agreement (including its subcontractors at any tier) has established agreements in place assigning rights to at least subject inventions in the contractor. Where the system has the potential to fail is in situations where contractors/subcontractors have failed to have such agreements in place. In these situations it is beyond reasonable argument that the USG has a right to pursue an action for breach of contract. It is, however, quite another matter to interpret B-D as substantively and intentionally amending Patent Law 101.

    If there is recourse to be had by Stanford, to rely upon B-D in such a slavish and counter-intuitive manner is folly in my opinion. There are a host of existing legal doctrines that can accomplish the same result without grinding a fundamental underpinning of patent law into the ground.

  56. Ping: wow my sarcasm is part of the grand comspiracy.Ping with your attitudes you have no business being associated with the patent business or basic honesty.As far as the constitution goes You will notice it was discovered in 1958 not on display since 1776 I remember speaking a text at a friend of the familys house into a tape recorder. I think I did the amendments or some of them to and miranda rights later also.I was the correct person to concieve it as the high federal. Yes ping controlling greed is dificult I need a small army although I invented the national guard I might need to call on them to do the job.I am trying to correct the ability of these vermin to perpetrate their crimes with patent reform but with incoherent mobsters like you and many others it has been dificult.People abusing the cival rights I gave them are making obtaining justice nearly impossible through this corrupt patent system.

  57. EG, no doubt a reasonalbe construction of the statute. But it rips from other owners their property without compensation, shreds prior contract obligations, and disrupts reliance interests in other cases.

    Imagine I have filed a patent application on my invention and may even have a patent on it. Gov. contractor calls up, seeing my patent, and asks for a license. They then build the first prototype.

    Under the reasoning of the government and you, EG, the Government and Stanford now own my patent. I say, go pound sand, becase there is no way in Hades you can take my patent without my consent. I’ll see you in court.

  58. I finally have some time to way into this discussion (sorry for the length, but it takes a bit to illustrate what’s wrong with the Federal Circuit’s decision):

    Michael S. is correct that Patent Law 101 says that rights to the invention normally reside with the inventor until assigned. The problem is that Bayh-Dole changes the normal Patent Law 101 on where invention rights normally reside. That’s where I agree with what Malcolm said: when you take money from the feds, it comes with strings attached and that’s what happens under Bayh-Dole with regard to where the invention rights reside in what are called “subject inventions” which is what is involved in the Stanford case.

    There are three significant objectives in Bayh-Dole: (1) allowing retention of invention rights by the contractor (e.g. a university) receiving federal funds that lead to “subject inventions”; (2) insuring that the feds’ rights in those “subject inventions” are protected; and (3) encouraging commercialization of those “subject inventions.” The first two objectives are definitely at play in the Stanford case, and why rights to “subject inventions” must reside, at least initially, in the contractor to prevent these two objectives from being easily circumvented.

    What the Federal Circuit did in its ruling in Stanford was to allow easy circumvention of these two objectives and based on what? A flimsy Visitor’s Confidentality Agreement (VCA) with a “boilerplate” assignment provision that just happened to have the “right” wording in the Federal Circuit’s view. While Stanford could have phrased its assignment agreement more artfully, the fact is Stanford at least tried to do what is required by Bayh-Dole to protect both its rights and those of the feds. That comes out clearly in Bayh-Dole regulation 410.14(f)(2) which requires the contractor (i.e., Stanford) to make sure its employees (including university researchers) understand and agree in writing to disclose “subject inventions” and to protect the feds rights in these “subject inventions” including executing necessary paperwork to file patent applications on those “subject inventions.” That would necessarily include executing appropriate assignments. By allowing this “boilerplate” assignment in the VCA to trump Stanford’s reasonable effort to comply with this Bayh-Dole reg because of “inartful wording” of Stanford’s assignment, the Federal Circuit has frustrated these two key objectives of Bayh-Dole.

    Also, the Federal Circuit’s ruling is at odds with 35 USC § 202(d). 35 USC § 202(d) says that if the university elects not to retain title, the university 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 university under Bayh-Dole.

    Even more significantly, the Federal Circuit’s ruling appears to frustrate what is intended by 35 USC § 202(c)(7). 35 USC §202(c)(7) expressly prohibits a nonprofit organization, like Stanford, from assigning rights in federally sponsored research to third parties (like Cetus or Roche in this case) without approval of the respective federal agency. That a university researcher can so easily defeat the prohibition of 35 USC § 202(c)(7) by signing a VCA that incidentally assign rights to “subject inventions” to third parties seems very strange to me.

    The Federal Circuit’s ruling also cannot be so easily reconciled with the holding in Central Admixture. In essence, this ruling allows a “third party” (e.g., Roche) to challenge and “void” title to a “subject invention.” That is exactly what the Federal Circuit said in Central Admixture cannot be done. Instead, as was held Central Admixture, only the appropriate federal agency may “void” such title in appropriate circumstances under Bayh-Dole.

    SCOTUS may view Bayh-Dole’s impact differently from how I and others view it. But I won’t be surprised if SCOTUS agrees with the DOJ’s position that title to this “subject invention” must reside with Stanford by virtue of what Bayh-Dole says and in view the two objectives of Bayh-Dole noted above,

  59. Ned Heller; Was that G.M deal a true bankruptcy or did some people ger paid out of that.G.M. is another auto company that should owe me a pile of money.Sara Mcpherson; The planet krypton I think was invented by me. Ive never been there but they tell me its nice. I did the invention of the comic book superman batman and spiderman with the neighbor.

  60. ” Any federal statute that would override pre-existing contract obligations would effectively impair the obligation of contracts.”
    Tell that to the GM bond holders.
    Posted by: David N. Caracappa | Nov 04, 2010 at 11:33 AM

    True, bankruptcy is an exception. Recall though that Obama could not by edict or law force Wall Street to terminate contractual bonuses? Congress was mulling taxing them at 100%, but gave up that idea partly on constitutional grounds IIRC.

  61. James Daily: I would say that when an R&D team organized and funded by a company invents, the invention comes from the company as a discrete entity, is intended for the benefit of the company, and is delivered to the public (in the form of a patent application and products & services) with the intent that the source be identified as the company.

    I think the proper focus is on how the invention itself was made, and not peripheral or subsequent events like patenting or selling product. In that context, I see an invention as being delivered to the company rather than by a company to the outside world. However, as you say, the court may well draw the line in a different place, especially if the facts are unusual.

    It’s an interesting discussion, but I think it’s run its course.

    Blindman: The more common example is where two photographers take a virtually identical photo

    That example doesn’t feel as analogous to inventorship, and it doesn’t have the same degree of independence between the authors. Photography doesn’t even feel like authorship to me.

    Still, use whatever hypothetical you prefer. Neither supports any requirement that inventorship be first-inventorship.

  62. >>>If you wrote a book that was coincidentally word-identical to someone else’s previously-authored book that you had never seen, you would still be entitled to copyright.<<<

    INANE –
    The more common example is where two photographers take a virtually identical photo from the same spot on the same day or at the same time of day on different days when the scene was identical….. both can register copyrights in their identical works.

  63. And that was a Case that was just thrown out because the Commissionership changed hands. And the reason I changed the name was because I folowed the USPTO and what it did when a new One came aboard. I had no Counsel. I was being attacked by Robots at every turn. And for whatever reason it continued. And it was the WHOLE Company. Remember, Stubby was in on it when he was just suckin up. Even if he was way into it. He was not the decision maker…OOPS or was he. But that my dear Virginia has nothing to do with anything.

  64. When a company “speaks”, the speech comes from the company as a discrete entity, is intended for the benefit of the company, and is delivered to the public with the intent that the source be identified (or not) as the company. Invention is more of a thing that happens in someone’s mind or immediate vicinity, and it’s more readily identifiable with the intellectual activities of an individual.

    I would say that when an R&D team organized and funded by a company invents, the invention comes from the company as a discrete entity, is intended for the benefit of the company, and is delivered to the public (in the form of a patent application and products & services) with the intent that the source be identified as the company.

    The second two points are, I think, self-explanatory. The first (“comes from the company as a discrete entity”) may require explanation. We know that inventors, even those that are sole inventors, are not islands. It is the rare case that an idea springs fully formed from the head of a single person. Usually it is the product of collaboration and gradual improvement. In the corporate setting, that occurs because of the organizational efforts of the corporate entity. There’s a direction and management there that shows the invention is an act of the corporation through its agents, the scientists.

    But, as you say, maybe this a line drawing exercise, and I just find it easy to draw the line in a different place. But if it is a line drawing exercise, then a court may well decide to draw it elsewhere, which was really my overall point. I don’t think it will affect many cases in the real world either way, just unusual corner cases like this one, so I don’t have strong feelings on the matter.

  65. My man IANAE nails it:

    Nothing here is hard and fast, of course, and the facts of any particular situation might justify a different conclusion.

    it’s more a question of where we want to draw the line in a big gray area, and how much abstraction we’re willing to accept between the actions of a company and the actions of its people.

    The real question is – Who has the marker drawing the line in the big gray area?

  66. There’s a nebulous ‘you’ there.

    It is indeed. A lot of the concepts we associate with persons begin to fall apart when we try to apply them to corporations.

    Why can a company wish it had an answer (which is really the employees wishing they had an answer) but can’t invent a solution (which is really the employees inventing a solution)? I still don’t see the fundamental distinction that makes invention a special kind of act that cannot (easily) be ascribed to a corporation.

    It’s not really a “fundamental” distinction, it’s more a question of where we want to draw the line in a big gray area, and how much abstraction we’re willing to accept between the actions of a company and the actions of its people.

    I guess it’s because it’s usually somebody’s job to do the inventing, so we generally know who did it and can view them separately from the company.

    Also, the act of invention doesn’t typically involve the company’s interaction with the public on its own behalf, acting as a separate entity. When a company “speaks”, the speech comes from the company as a discrete entity, is intended for the benefit of the company, and is delivered to the public with the intent that the source be identified (or not) as the company. Invention is more of a thing that happens in someone’s mind or immediate vicinity, and it’s more readily identifiable with the intellectual activities of an individual.

    Nothing here is hard and fast, of course, and the facts of any particular situation might justify a different conclusion.

    As a common sense matter (for whatever that’s worth), we ascribe inventive acts to corporations all the time. We say things like “Xerox invented the GUI” or “Bayer invented aspirin” or “DuPont invented Kevlar.”

    I always understand such statements as shorthand for “someone in Xerox’s R&D department invented the GUI”. Anyway, our colloquial understanding probably doesn’t line up well with the concept of corporate inventorship, considering that aspirin was actually invented ten years before Bayer was, and Teflon (from the “inventors” of Kevlar) was clearly invented by an individual, by accident, with no meaningful inventive input from DuPont. It’s really more of a branding thing than a constitutional issue.

  67. You can speak through an agent by setting out vague result-oriented guidelines about what you want the speech to accomplish

    There’s a nebulous ‘you’ there. In a corporation, that ‘you’ is a person or group of people: a manager or committee or what-have-you. So why does the speech via the agent get attributed to the corporation rather than the manager as an individual? The manager would seem to qualify as “an individual or an identifiable group of individuals within the company that does the real [speaking].”

    And if not the manager, then why not attribute it to the agent who fleshed out the particulars? Or attribute it to both individuals as joint speakers? Again, they seem to be an identifiable group.

    the company’s involvement tends to be more on the level of wishing they had an answer to the problem

    Why can a company wish it had an answer (which is really the employees wishing they had an answer) but can’t invent a solution (which is really the employees inventing a solution)? I still don’t see the fundamental distinction that makes invention a special kind of act that cannot (easily) be ascribed to a corporation.

    As a common sense matter (for whatever that’s worth), we ascribe inventive acts to corporations all the time. We say things like “Xerox invented the GUI” or “Bayer invented aspirin” or “DuPont invented Kevlar.”

  68. Ianae; The odds of two persons independantly inventing an invention are astronomoical one is a thief and one is the true inventor.As far as the charriot goes I dident have my time machine running at the time and iI was trying to create a good selling movie its called fiction. I though a movie of jungle monkeys hitting themdelves over the head for a handfull of grubs would not sell well I also created most all of the other memorable blockbluster movies television shows music ect.

  69. The roman charriot I concieved for the movie ben-hur with my neighbor.

    Well, that’s different. You had to invent that for the sake of historical accuracy.

  70. Someone finally has supported my position that the Constitution forbids the first-to-file system.

    That doesn’t actually support your position.

    The Constitution doesn’t say anything about the inventor being the first inventor. Two people who independently invent are both inventors, and therefore either might be granted a patent consistently with the constitutional power. The only criteria for choosing between them are in the statute and caselaw.

    Take copyright, for example. It gets the same constitutional treatment as patents. If you wrote a book that was coincidentally word-identical to someone else’s previously-authored book that you had never seen, you would still be entitled to copyright. You would be an author, even though you would not be the first author.

  71. ” Any federal statute that would override pre-existing contract obligations would effectively impair the obligation of contracts.”

    Tell that to the GM bond holders.

  72. Although little know ive invented many items now thought to be concieved primatively.Pointy metal was arround since the knife invention in 1805 I f you ask the african tribes men it was a great improvement for them.The crossbow and blow gun were also concieved by me in 1957 and possibly the sling shot. I often concieve things for underpriveliged persons unable to afford manufactured goods such as the stone plow for the shri-lankins in the 1960s or 1970s.The roman charriot I concieved for the movie ben-hur with my neighbor.

  73. “Property law courses generally begin with the concept of first-possession as an originator of property rights. In patent law, the first-possession principle leads to a rule that potential patent rights are owned by the inventors unless and until they are assigned to another entity. … The legal basis for inventor rights is derived from constitutional principles that give Congress power to enact patent laws that grant exclusive rights “to inventors.” US Constitution, Article I, § 8, cl. 8. ”

    HURRAY! Someone finally has supported my position that the Constitution forbids the first-to-file system. Thank you!

  74. 1n the 1960s? Sorry Ianae;I think you may need to see the doctor again on this one. I dont think I should go into my vietnam era weapons improvements due to national security.

    I guess my big question is why you felt the need to invent pointy metal in 1963 (non-pointy sawmill applications having existed for some time) when according to your website the flintlock rifle was invented in 1807 (roughly contemporaneous with the ship-mounted cannon), and repeating firearms in 1864. As ranged weapons go, a metal spear sounds like a lateral move at best.

  75. Ianae; You really need to visit my website to get everything in correct cronological order this is rather inefficient having to type all this. Although the water powered isent on the site yet only steam powered I understand its still available for vieving if your a history buff.The wworlds first dan was built in 1810 at what was my familys property. The water poweered grist mill is in the 1833 dictionary I have so the location would highly probably be at this dam.I may have invented the water powered sawmill concept myself.1n the 1960s? Sorry Ianae;I think you may need to see the doctor again on this one. I dont think I should go into my vietnam era weapons improvements due to national security.

  76. Ianae;What sane person would voluntarily sell an item of property.I think you may need to talk to the doctor what I mean is you would be insane to voluntarily sign off on valuable intellectual property without compensation. True another method of stealing an invention is buying it for an insanley low price.

  77. The wheel was invented by george in 1807-1810 in conjunction with the worlds first sawmill.

    Sawmill? So also water power and metallurgy around the same time, I presume?

    I invented the metal pointed spear in 1963.

    Which quickly replaced the 150-year-old sawblade as the weapon of choice? I bet the Vietnam War really hit its stride at that point.

  78. Ianae; corperations cant invent anything there not human there a business entity.They can own through legal aquiring.Ianae; The only things of significance before 1803 were the bow and arrow in 1768 by george as a 1year old and dog cowardenated lamb slaughters in 1708. The wheel was invented by george in 1807-1810 in conjunction with the worlds first sawmill. I invented the metal pointed spear in 1963. The stone ground pointed stick may go way back.

  79. James Daily: My point is that there may be circumstances (perhaps even common circumstances) in which it is most proper to say that the corporation-through-its-agents has invented something rather than individuals.

    There may well be. However, inventing requires a much closer connection between the inventor and the invention than speaking does between the speaker and the speech. You can speak through an agent by setting out vague result-oriented guidelines about what you want the speech to accomplish, but you can’t invent through an agent without more or less giving the agent a conceived idea and detailed instructions. It’s the difference between desiring the result (speech) and figuring out a previously unknown way to achieve the result (invention).

    James Daily: If the counter to that is “no, ultimately it was an individual that had the idea and performed the research” then that would seem counter to the idea that corporations can ever be said to act at all.

    I didn’t mean for my position to sound like that. What I meant was that in your fact scenario (which is probably the most typical way companies contribute to innovation), the company’s involvement tends to be more on the level of wishing they had an answer to the problem. It’s generally an individual or an identifiable group of individuals within the company that does the real inventing.

    I don’t want to say that it’s impossible for a corporation to invent, but I think it’s rather like finding the difference between abstract ideas and machine-or-transformation. We want to believe there’s room for an exception, and we leave open the possibility of finding one, but we shouldn’t hold our breath waiting for it to be found if its greatest proponents can’t point one out.

    Michael R. Thomas: literally all inventions since 1768

    Okay, now you’ve got me curious. How far did you guys get in the 35 years before you invented fire? Was it just a series of improvements on the wheel and the spear, or what?

    Michael R. Thomas: Clearly if A voluntary assignment of invention is alleged there needs to be psychiatric evaluation to determine the mental competency of the individual.

    Exactly. What sane person would voluntarily sell an item of property? Gives new meaning to “our prices are so low they’re insaaaane!” if a sale is insane at any price.

  80. entire website with an open mine

    And here I thought that open mine fields were outlawed by the Geneva Convention.

    including your sarcasm

    Wow, my sarcasm is a part of the grand conspiracy.

    I’ve made it – I belong! Iza feel all warm and fuzzy now.

    Amazing though Mikey, youza invented all these things, but can’t invent a security mechanism that defeats the disgusting lifestyle human monkeys from conspiring in their greed.

    Does this make you monkey food? Place you lower onthe scale of evolution than the human monkeys you so despise? Youz gots esplaining to do here.

    Iza gonna love the part about since north america wasn’t discovered until 1803 howza the Constitution came about.

  81. Ping; I was born the high royal under 1830 U.S.articles of confederation. I earned the status of high federal at about 1 year old also under the articles of confederation for military inventions.My great great grandfatheer discovered north america in 1803 everything in present history is a conspiracy to deny greatness and compensation for these accomplishments including your sarcasm. I guess we could allow you to remain on the planet a bit longer as long as you like grubs and snakes.True the planet existed but forensics indicate a disgusting lifestyle human monkeys being eaten by wild animals and territorial wars In the subtropical jungles only.

  82. Doctor;cant blame you for your skeptisism. It would take about 2 years of evaluation of the new facts about invention conception I have put together and still if your not predijuice you will come up with a negative determination. It all stems from our defective patent system when it comes to inventorship determination. This is compounded by greed and corruption that permiates the system.You would first need to study my entire website with an open mine to begin to comprehent the magnitude of the incorrectness of invention history.

  83. nor would everything man made on the planet.

    Mikey, Iza curious which planet are you from, as Earth existed long before your three grandfathers. But thanks for visiting!

  84. Patent rights are first possessed by the government. Rights to an invention are first possessed by the inventor(s). Before treating with the government, the inventor(s) may well involve other natural persons or companies. When the government first doles out its patent rights, therefore, it may in fact be bargaining with these others.

  85. Ned Heller; Clearly if A voluntary assignment of invention is alleged there needs to be psychiatric evaluation to determine the mental competency of the individual. Also the potential of illegal duress generated by threats of violence needs to be considered although the power of conspitacy to exclude the inventor fraudulently makes the invention worthless to him furthur destroying his incentive to produce another one if able and in most cases he is not able in my opinion.

  86. Ping; myself and my grandfathers are responsible for literally all inventions since 1768 and without us they would not exist nor would everything man made on the planet.We are a slightly diferent species called worlds top genetic codes for intellectual genious.

  87. Well M. Slonecker, I can see a whole host of constitutional provisions involved in this case (due process, contract clause, patent clause, eminent domain). It will be a wonder if the Supremes could avoid discussing them. Avoiding them would seem to require a construction of B-D that is consistent with pre-existing law that inventions are owned by the inventor and can only be taken from him by voluntary assignment.

  88. Mr. Heller,

    Re your 6:33, you are just starting to scratch the surface of the numerous possibilities that can arise, many of which can quite easily result in multiple opportunities for parties to think that they somehow now hold rights.

    For example, X conceives, X is employed by Y the next day to perform work under a USG contract, X works diligently works under the contract on what he previously conceived, X gets laid off and leaves Y’s employ before X has performed an ARTP, and then the next day in his garage (just before he leaves to file for unemployment) X completes the ARTP. Who owns the rights? Almost universally the answer is X.

    Take it one step further. X “conceives” and “develops” on his own, joins Y’s employ, and then completes an ARTP under a federal contract to which B-D applies. Under the USG theory, Y would own the rights. In most cases where employee agreements have been executed, Y would own the rights. Ok…that takes care of patents, but what about “trade secrets/proprietary information”? They would reside with X, which kinda messes things up for Y and the USG.

  89. Mr. Heller,

    Re your 6:22 above, you may want to read the definition of a “subject invention” for purposes of the Bayh-Dole Act, i.e., conceived or actually reduced to practice. “Constructive” doesn’t cut it, not to mention a whole host of other possibilities.

    Perhaps some day if you are really hard up for reading material you may want to consider reading up on what is known as “Rights in Technical Data and Computer Software”, with particular emphasis on what the term “developed” means. You will find that it dove tails quite nicely with patent law…though I can assure you that virtually no one within the USG and most federal contractors realizes this and what is its impact under law. Hint: “Conception” precedes “developed”, which in turn precedes “actual reduction to practice”.

    BTW, under the USG theory it would seem the contractor holds title, with the USG receiving whatever it is in turn provided under Bayh-Dole.

  90. Copyright law is different from patent law in that a work is not a work until it is written down. However, under patent law one can file a patent application on a conception and still later actually reduce it to practice. The separation between the two (conception and reduction to practice) potentially allows two entities to claim ownership if one entity obtains assignment of inventions conceived, while the second entity obtains assignments of inventions reduced-to-practice.

    That is in fact what happened in this case. The one company obtain an assignment of inventions conceived (using their confidential information). Later, the invention was reduced-to-practice using money from the federal contractor.

    Again, copyright law is quite different than patent law in terms of deciding when a work or an invention is “made.” It may be easy to implement a “work-for-hire” doctrine for copyrightable works, but it is awkwardly applied in the case of inventions.

  91. Suppose the inventor both conceives an invention and files a patent application on it prior to joining the federal contractor. Thereafter, while employed by the federal contractor, he reduces the invention to practice using federal funds.

    Who owns the patent even under the government theory?

  92. malcom;are you guys trying to create yet another method to rip the inventor and drive them from the united states destroying americas greatness and world leadership.By the way dident you get an intellectual property from me can I get paid.

  93. Mr. Mooney,

    I “feel” for the unfairness imposed by law upon corporations. Just the other day I was standing in line at the DMV behind a corporation. You can well imagine its shock (and my dismay) when told by the clerk “No, you can’t get a driver’s license.”

  94. Is the evidence for this proposition stronger or weaker than the evidence for the proposition that the authors of the Constitution intended corporations tp have all the rights under the Constitution that individual people do?

    My point there was not to make an originalist argument. Rather, rightly or wrongly, we have given corporations many of those rights, and that although an originalist might say the founders did in fact mean individual inventors, they were operating under a very different research and development framework from the one we have today. One might argue this is vaguely similar to the way the First Amendment protects movies and television despite the fact that those were alien concepts to the founders.

    Thus I would not be surprised if a court that took a flexible approach to Constitutional interpretation (or a broad view of corporate rights) decided that corporations and universities could also be inventors.

  95. No doubt the authors of the Constitution may have intended a narrow meaning of ‘inventors,’

    Is the evidence for this proposition stronger or weaker than the evidence for the proposition that the authors of the Constitution intended corporations tp have all the rights under the Constitution that individual people do?

  96. Ned Heller; the ones that say so what if the inventor gort riped off are the ones that I would like to put in a time machine and send them back to 1803. Let them freeze from winter exposure or starve because they cant forage enough raw grubs and snakes.

  97. My compliments to M. Slonecker, who had the same thought that I did but obviously posted it first.

    Art. 1 Sec. 8 provides that Congress has the power “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    Thus there is exact parallelism between Copyright and Patent law with regard to Constitutional limitations.

    17 USC 201(b) of course states that “In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”

    If you follow Dennis’ analysis, then the work for hire doctrine is stautorily unconstitutional, but equitably sound. I don’t believe that the Supreme Court is willing to upset that much older and larger applecart for the sake of patent law, even if the resultant problem could be solved in equity. It is far more likely that if the decision does not favor Stanford, it will be based on a statutory interpretation of the Bayh-Dole language in view of the remainder of Title 35.

  98. Well, everybody wants to cure disease X. If I pay someone to cure disease X, and he’s the one who figures out how, it seems pretty clear that he’s the inventor. It’s not like I conceived it and he reduced it to practice or anything.

    Well let’s try an entirely different approach, since we may be operating from different assumptions.

    Corporations can only act through agents. My point is that there may be circumstances (perhaps even common circumstances) in which it is most proper to say that the corporation-through-its-agents has invented something rather than individuals.

    If the counter to that is “no, ultimately it was an individual that had the idea and performed the research” then that would seem counter to the idea that corporations can ever be said to act at all. What is the material difference between invention and, say, making political speech such that a corporation cannot do the former but can do the latter?

  99. Ping, you hit on my second point there. The inventor may not have agreed to assign anything to the company and the company may not have been a federal contractor at the time he joined. He may have in fact assigned his prior conceived inventions to his own trust or to another company and notified his new employer in writing of the prior conceptions and assignments so that the employer could not take title if the invention were reduced to practice on the job.

    That is close to the facts we have here.

    The effect of the government position is to take property from the inventor without his consent. Now some would say that is theft. Others would say, so what?

  100. If eye could perfect time travel none of the ripoffs would ever have been born. They represent the mob with a 10000 to one ratio and no inventor security program in the patent system means being riped off is what can naturally be expected Albert Einstein my relative cryed when he though of the rips they have pulled in 1955 just before he and my grandfather were murdered to steal their IP.

  101. James Daily: suppose that the corporation was formed with a specific purpose in mind (e.g. “we are going to cure disease X”).

    Well, everybody wants to cure disease X. If I pay someone to cure disease X, and he’s the one who figures out how, it seems pretty clear that he’s the inventor. It’s not like I conceived it and he reduced it to practice or anything.

    I think you’d have to name the individual researchers in your hypo.

    IANAE: the invention of time travel.

    Michael R. Thomas: no I think I did that myself

    I don’t suppose it’s too late to warn yourself not to fall for those dirty tricks that result in the theft of your inventions?

    Unless one of those dirty tricks involves time travel…

  102. Ianae; no I think I did that myself when I invented the television show outer limits I got a complaint that that the end of the shows were changing from what they were originally filmed as.grsndfathers next big invention was fruit trees and metal 1805 then boats and steam engine saw mill houses railroad northern lattitudes human occupation ect.Right ianae look right here for the inventor its me 100% of the time or close.

  103. Perhaps, but it would require the same level of direction and involvement from the corporation as a whole that would ordinarily be required for an individual to make the same claim.

    Well, suppose a start-up consisting entirely of the small team of researchers that would otherwise be considered the joint inventors. Further suppose that all of the inventive activity occurred after the corporation was formed, but also suppose that the corporation was formed with a specific purpose in mind (e.g. “we are going to cure disease X”). Finally, to the extent it matters, suppose all inventive activity occurred on corporate time using corporately-owned resources.

    This scenario seems plausible enough.

  104. Michael R. Thomas: since 1803 with the invention of fire by my great great grandfather.

    And then, in 1804, the invention of time travel.

    James Daily: Can we not say that the act of invention, undertaken on behalf of and at the direction of the corporation, is an act of the corporation?

    Perhaps, but it would require the same level of direction and involvement from the corporation as a whole that would ordinarily be required for an individual to make the same claim. I find it difficult to imagine a fact scenario where that would be the case. Presumably some individual or group of individuals conceived the idea somewhere along the line, and it seems like that would be the first place to look for an inventive entity.

    If you can think of a really interesting set of facts, it would make for a fun discussion.

  105. When an individual provides those things, that individual does not thereby qualify as an inventor, even if he is as a result a sine qua non of the invention.

    That’s true, but the point is not to make the corporation a co-inventor alongside the individuals but rather to make the corporation the sole inventor. But I’ll concede that may not be a particularly convincing argument.

    Try this one, then. A corporation acts through its agents. A scientist working for a corporation is just another agent. Can we not say that the act of invention, undertaken on behalf of and at the direction of the corporation, is an act of the corporation?

  106. James Daily; Corperations cant invent anything only humans can thats been true since 1803 with the invention of fire by my great great grandfather.A significant valuable invention starts with an inventor designing an advancement then experimentation and previous art and development determine the sucess of impractability of the development. corperations can sink all the money they want into unguided experiments except its a waste without breakthrough usages and experiments this is where the inventor gets cut outr of the deal lresulting in lack of incentative to attempt to create and lack of ability to create. I.B.M. hired 40,000 engineeers for forty years and produced nothing.We need to seperate conception from research and development and award patents to concievers or we destroy the incentive to create. No creation means no human advancement in any field.

  107. The corporate entity provides the funding, the equipment, the assistance, the opportunity, and often the direction and management.

    When an individual provides those things, that individual does not thereby qualify as an inventor, even if he is as a result a sine qua non of the invention.

    In general, when you do all those things in support of someone else doing the actual inventing, the way you get the rights to that invention is by contract.

  108. I would question whether, under current doctrine, the Constitution actually mandates that “inventors” may only mean individual people. If corporations can have broad First Amendment rights, as recently affirmed in Citizens United, perhaps they can also be considered inventors.

    An invention by a scientist in the research department of a corporation or in a university lab is often as much the product of the corporation or university as a whole as it is the individual. The corporate entity provides the funding, the equipment, the assistance, the opportunity, and often the direction and management. In cases with multiple inventors, it is often the corporate entity that brings the inventors together.

    Perhaps one way to think of it is that the invention would not have happened but for the efforts of the corporate entity.

    So while the Constitution may break the conflict under the traditional interpretation, I’m not sure the traditional interpretation will necessarily hold. No doubt the authors of the Constitution may have intended a narrow meaning of ‘inventors,’ but the nature of research and development has changed significantly in the past 223 years and in ways the founders likely did not anticipate. Discarding the narrow meaning of ‘inventors’ would harmonize patent law internationally and be consistent with the Constitutional treatment of corporations in other areas of the law.

    I’m open to arguments showing that this would have significant negative effects, though.

  109. Ned Heller: If state law can provide automatic assignment of future inventions by contract. How can this be legal what part of ip theft and cival rights violation dont they understand not to mention inovation retardation.

  110. Of course you dont have the knowledge that eye do

    And that’s a good thing because such knowledge will drive any sane person completely bonkers and lose the ability to recognize sarcasm. Ya better watch out Mikey – oops, too late.

  111. if the inventor voluntarily associates himself with the entity receiving federal funds.

    Consider the following hypothetical:

    1) Company A recieves no federal funds and never has.

    2) I go to work for Company A.

    3) Company A decides, without my knowledge of input to receive federal funds.

    4) voluntary association?

    Now consider adding step 2a) – the work agreement between Company A and myself generously awards me the right to maintain all rights to any invention, but gives Company A right to match any offer. Now, step 3 occurs – what next?

  112. Ianae; Comments like yours are unamerican you must be one of the rips how do you justify this position.Of course every patent paid for so far is stolen from me so eye guess in retrospect your right; Ping is there an attorney in the house,clearly you dont know what end is up. Of course you dont have the knowledge that eye do about the conception circumstances concerning the inventions.

  113. If state law can provide automatic assignment of future inventions by contract, I don’t see why a federal statute cannot provide automatic assignment of future inventions if the inventor voluntarily associates himself with the entity receiving federal funds.

    There may be a question of course of whether this also applies if the federal contract is entered into after the employee has become an employee. The employee may not have voluntarily agreed, implicitly or explicitly, to assign his inventions to the federal contractor. Similarly, the employee may have also agreed to assign the patent rights to a third party even though he or she may be receiving federal funds. Any federal statute that would override pre-existing contract obligations would effectively impair the obligation of contracts.

    But this seems to be expressly forbidden by the Constitution. I don’t think the issue here is so much the patent clause, but the clause regarding the obligation of contracts.

  114. Like I said in the other thread, too many questions.

    This goes to the very basis of the concept of property.

    Common law says that when “a subject, animate or inanimate, which otherwise could not be brought under the control or use of man, is reduced to such control or use by his individual labor or skill, a right of property is acquired in it.” (dissent in Geer v. Connecticut, USSC).

    This to me represents the root of property rights in an “invention”. An “invention” cannot exceed what exists in nature, Man being a part of that nature.

    “Reduction to practice” is the patent law way of saying “brought under the control or use of man”.

    Under common law, property rights in the invention belong in the first instance to the inventor, unless there is some statutory prohibition.

    If there is no such prohibition, before being divested of his or her property, an inventor must be given notice of the proposed divestment, and the opportunity to mount a defense thereto, in additional to potential compensation if so divested.

    So, does Bayh-Dole contain any prohibition on the creation of property rights by operation of common law, or on their initially vesting in the inventor?

    I think the answer to the first question is “no”, as Bayh-Dole attempts to vest invention-related property rights in the contractor, thereby implicitly acknowledging their existence.

    35 USC 200-212 are, IMHO, poorly drafted. Is contained therein a prohibition on invention-related property rights initially vesting in the inventor?

    I think there is, albeit in the form of a necessary implication.

    The question then is, what constitutes sufficient notice and opportunity to be heard in view of this implied prohibition, and does it satisfy the 14th Amendment?

    The specific contractual provisions will matter, the jurisdictions will matter, privity of contract will matter, and so on.

    I think that this opportunity for a constitutional exploration is why cert was granted.

  115. Guess again they steal all valuable patents from inventors using every dirty trick in the book.

    Including the dirtiest trick of all – paying money in exchange for them in an amount agreed to beforehand by the inventor.

    This practice of paying a mutually-agreeable sum in exchange for property is un-American and must be stopped!!!!eleven!

  116. A sure sign of someone who wears his underpants on his head.

    And here I thought that was a sign of the three underling horsemen.

    O wait, it is, well then, ya might check into this as a trademark issue. Ya know anyone who is good with IP law?

  117. Ianae; Companies dont steal patents? Guess again they steal all valuable patents from inventors using every dirty trick in the book.Clearly Bayh-Dole is another example of the 40 or so methods that inventors are relieved of their intellectual property rights.(ripped)There creating a monopoly of non investment to make the invention worthless to the inventor so they can steal legally.

  118. OMG! I’m like, an inventor, and I claim a method for evacuating all the “smart conversation” from: a room; or the internet (yes all of it)!

    YEAH! Now it’s mine forever and you have to, I’m Serious, pay me! Go Palin!

  119. Why does a criminal get more jail time for stealing a TV then a company or CEO gets for stealing a patent[?]

    Because companies don’t steal patents. They pay people in exchange for patents.

    So, basically, the same reason we “criminals” don’t get any jail time for “stealing” coffee from the local Starbucks.

    They should have to pay a royalty to those that INVENT the product[!] That inventors NAME should be on every Patent[!]

    I agree. There should be some sort of payment of money to the inventor, and his name should be on the patent. Wait, doesn’t that happen already?

    “And all those exclamation marks, you notice? Five? A sure sign of someone who wears his underpants on his head.”

  120. And I am just sitting on the edge of my seat with more. And wondering WHEN am I going to get my life back as a productive Citizen of this United States! HERE HERE!!!!!!!!!!!!!!!

  121. As an inventor I think this is exactly why we need to get the GRANTS out of the University’s. The Inventor should own the patent. The inventor should have tough laws that protect their rights.

    Why does a criminal get more jail time for stealing a TV then a company or CEO gets for stealing a patent????

    The private sector including the consumer benefits when JOBS are created and technology improves their lives. Then the govt benefits from the TAXES that are paid at every level of a products development.

    If the University’s wants to produce products they need to raise the money open a business & compete with the rest of us. What they do with that money is up to them. Pay their Professors more?? Lower the students fees??? That is what is great about the Freedom we have in the United States!!!
    They should have to pay a royalty to those that INVENT the product!!! That inventors NAME should be on every Patent!!!
    If you really want to get the best inventions the Patent time should be extended to 40 yrs. The person with the most passion needs to have more time to not only perfect the idea, which takes money!! Pay for the patent, which take money!! AS WELL AS Inventory, Marketing, Employees, which all takes money!! Making MONEY TAKE TIME!!!!!!
    We have sacrificed so much to then have the BIG BOY on the block infringe on our patent. NO ONE CARES!!

  122. Mr. Crouch,

    Sounds to me like this might be an interesting topic to be explored in a paper by one or more of your classroom charges.

    It might also be interesting to apply Article 1, Section 8, Clause 8 to the work for hire doctrine under copyright law.

    Challenging “conventions wisdom” is always a useful, interesting, and challenging exercise.

  123. Mr. “ping”,

    “One observation to make – did the Bayh-Dole act pass as a general law or as a Constitutional amendment.”

    A general law in lieu of a constitutional amendment, or so the “living/breathing” theory goes. ;)

    Mr. Crouch,

    This situation fairly demostrates why I deem it folly to immediately jump in to the details of a statute without first standing back and thinking about Patent Law 101. In this case all of the parties allied with Stanford seem to have followed the well-know rule “ready…fire…aim”.

    It may turn out that Stanford is entitled to receive title, but if this is so it is certainly not because of anything contained in Section 200 et. seq.

    Having worked with Bayh-Dole, Stevenson-Wydler, and a host of other federal statutes relating to R&D work funded in part with federal funds, the one thing that is abundantly clear is that their drafters likewise failed to take or audit Patent Law 101. For example, I have seen federal regulations and contract provisions that attempt to secure rights to the government even when no federal funds are/were used by a contractor (but this is the subject of a whole other, hair raising discussion).

    I have oft repeated the observation I made shortly after beginning to work within the federal R&D and procurement system that any similarity between the system and the law is purely coincidental, and certainly not intended.

  124. The argument seems to be that the acceptance of government funds for a project, directly or by employment with a funded entity, constitutes acceptance of the Bayh-Dole provisions and a relinqishing of rights by the funded inventor(s).

    If you are an inventor and want exclusive rights without any clouds over them, don’t touch the Federal funds.

  125. One observation to make – did the Bayh-Dole act pass as a general law or as a Constitutional amendment.

    I will leave the answer (and its implication to ya’ll).

  126. My take (which probably is wrong): In general, potential patent rights are owned by the inventors unless and until they are assigned to another entity. For inventors under obligations to a contractor, once that contractor enters into a funding agreement with the US Government, 35 U.S.C. § 202 kicks in and operates as an assignment of invention from the inventor through the contractor to the US Government.

    At least that is how I would have constructed 35 U.S.C. § 202.

    The trouble is that the obligation of the inventors to a contractor initially has to be one of assignment of IP rights to the contractor.

Comments are closed.