At 10:00 PM 7/23/99 -0700, you wrote:
As a former university patent manager I am quite familiar with Bayh - Dole,
and with the philosophy underlying it. The purpose of granting IP rights to
the research institute was to help ensure that the federal money was well
spent, i.e., by the research results becoming commercialized through
university licensing to private companies instead of having the USG just
set them on a shelf. That such taxpayer money should lead to intellectual
property owned solely by some private corporation was never a part of that
philosophy. (Government efforts to commercialize inventions in its so-called
"technology transfer" programs have been a laugh, mostly because (a) the
Congress and (b) the research sponsors themselves do not understand
the commercialization process, with its inherent marketing requirements
and need for technology licensing expertise, and hence they don't know how
to support and sustain such programs -- nor do they really give a rip.)
And all of that pertains especially to road pavers such as NSI, whom I
agree doesn't own squat.
Bill Lovell
>
>> > > We should expect a
>> > > long hard fought legal battle...coming soon. I do not understand
how the
>> > > folks at NTIA could have made this error (if, indeed, they did) since
>> > > the DOC did not have the constitutional authority to transfer a
database
>> > > held in "public trust" over to a private corporation.
>>
>> Almost every *research* contract issued by the USG allows the contractor to
>> retain the intellectual property rights. This is the essence of the
circa 1981
>> Bayh-Dole Act. IMHO, the question here is whether or not there are any IP
>> rights at all in the database itself. Under US law, databases are not
>> protectible unless kept secret or arranged in some creative fashion.
>
>I'm glad you highlighted the word *research*.
>
>There is considerable room to debate the nature of the NSF/NTIA-NSI
>Cooperate Agreement.
>
>Rarely is "research" mentioned. (Indeed the cooperative agreement doesn't
>use that word a context which would support a "research" interpretation.)
>
>But....
>
>My own reading, based on the fact that there is a right of transfer at the
>end, plus the performance conditions, is that that Cooperative Agreement
>is one for the performance of administrative duties, much like the
>concessionaire of a national park might administer the Awhanee Hotel in
>Yosemite. (Hint, the contractor doesn't get to keep the Hotel when the
>contract is done.)
>
>On the other hand, there are those "who were there" who say that the
>Cooperative Agreement was more like the government paying someone to pave
>a badly rutted road over private property to a government site so that the
>government can get its trucks in more easily. (Hint, title to the the
>road doesn't get conveyed to the govenment as a result. The government
>benefited by less wear and tear on its trucks.)
>
>The language about the transfer at the end may be explained by some
>trouble that apparently occured at the end of the SRI administration, at
>which time SRI apparently tried to withhold everything from the
>government.
>
>Anyway, there are merits on both sides of the see-saw. (I still see the
>balance as being that NSI was merely admistering a government database.
>But its a balance that apparently others who were close to the situation
>at the time of the formation of the Cooperative Agreement see otherwise.)
>
> --karl--
>
