University Times

Faculty members say speaker was wrong about Bayh-Dole

To the editor:

I am compelled to augment your coverage of Mr. Joseph Allen’s presentation on “Patent Ownership Under Bayh-Dole” (March 31 University Times). Mr. Allen’s principal conclusion was that the Bayh-Dole act requires universities to obtain advance assignments of inventions as a condition of federal funding.

In the ensuing discussion, Professor Karen Norris and I disputed this erroneous conclusion, citing the Supreme Court ruling in the case of Stanford v. Roche.

All this is déjà vu. Flash back to the fall of 2014. The administration requires all faculty members to sign advance IP assignments, invoking the Bayh-Dole Act. The University Senate balks, citing Stanford v. Roche. The administration backs off, offering assignments (Options A and B) for those who want to give their inventions away for free (attention: sarcasm) and providing an agreement (Option C) for those who do not.

Our lawyers would never have allowed Option C if advance assignments were required by law. Further, their actions showed that our administration deliberately misled us in the fall of 2014. (Senior administrators plainly knew then, as now, that Bayh-Dole does not require advance assignments.)

Why are we being misled again? Our administration is telegraphing a new IP policy that they favor, requiring advance invention assignments. This needs to be justified. Enter Mr. Allen, who was introduced as a scholar of the Bayh-Dole Act, and who is actually a lobbyist.

So our administration invited Mr. Allen to lobby us in favor of a soon-to-be-proposed IP ownership policy. This follows the previous debacle in 2014, where the policy was, in a word, imposed.

What happened to shared governance? When will our administration stop imposing, proposing and lobbying, and start listening to its scholars? This is the right thing to do because we scholars actually own the future IP that our administrators presently want to get their hands on.

Dennis P. Curran
Distinguished Service
Professor and
Bayer Professor of Chemistry
Dietrich School of Arts
and Sciences

Mark Redfern, William Kepler Whiteford Professor of Bioengineering and vice provost for Research, responds:

In response to Professor Curran’s letter, I would like to clarify a couple points. First, Mr. Joseph Allen was invited by the faculty members of the policy review committee to help us understand the issues involved in Bayh-Dole. Mr. Allen was chosen because of his background as a staffer for U.S. Sen. Birch Bayh during the development of the Bayh-Dole Act and as the director of the U.S. Department of Commerce’s Office of Technology Commercialization. The presentation was an open forum to allow the entire University community to hear Mr. Allen’s thoughts on the issue.

For Professor Curran to state that “our administration invited Mr. Allen to lobby us in favor of a soon-to-be-proposed IP ownership policy” is totally false and disrespectful to the committee. The committee is made up of fellow faculty members who are working hard to develop a draft policy that will be fair and allow our research to have maximal impact. They have reached out to the Pitt community for input through the policy review web site survey (www.policyreview.pitt.edu), held open town hall meetings, and engaged the faculty in other open forums like Mr. Allen’s presentation. The committee is taking all this input from the Pitt community seriously as they begin drafting the policy. Once written, the draft policy will then go through the University’s shared governance process.

Clearly, Professor Curran does not agree with Mr. Allen’s views. But to falsely accuse the faculty on the committee of some conspiracy against the broader Pitt community is simply wrong.

To the editor:

I want to point out that Joe Allen, who is quoted in your recent article (March 31 University Times), is factually incorrect concerning the Bayh-Dole Act and the related ruling of the Supreme Court in the Stanford v. Roche case.

The Bayh-Dole Act does not mandate contractor ownership of inventions funded by federal funds.  To quote directly from the Supreme Court ruling in Stanford v. Roche, “Held: The Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors (i.e, the university) or authorize contractors to unilaterally take title to such inventions.”

The Supreme Court reiterates in several places in its ruling that “although much in intellectual property law has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not.”

Mr. Allen’s interpretation of the Bayh-Dole Act is completely inconsistent with the Supreme Court’s ruling in 2011.  Needless to say whose interpretation of the law is final.

Barry Gold
Professor
Department of
Pharmaceutical Sciences
School of Pharmacy

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