Can a state law or regulation define ownership of a US Patent?

At PatentlyO, Dennis Crouch wrote:


An important element of the original district court decision here (that was affirmed without opinion) points out a Florida State Regulation that “An invention which is made in the field or discipline in which the employee is employed by the University or by using University support is the property of the University…” R. 6C4–10.012(3)(c) (emphasis added). To be clear, this regulation is not a “contract” with the future inventor but instead a regulation in the Florida code that identifies ownership of the patent right — seemingly in conflict with the statement in Stanford v. Roche that “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.”




link: https://patentlyo.com/patent/2017/08/right-trial-attorney.html#comments

The post is about the case AIA America v. Avid Radiopharma (Fed. Cir. 2017), which case includes the text:


Dr. Hardy and his team believed the Athena agreement
undervalued their research. Soon thereafter, Mr.
Sexton, a Kansas City businessman who had no experience
in scientific research but saw a business opportunity
for himself, offered Dr. Hardy and his team a better deal
than they had with Athena. Initially, Dr. Hardy and his
team attempted to undermine the agreement with Athena
by misrepresenting the origins of their work on the London
Mutation. This attempt failed when Imperial determined
that it owned the discovery under United Kingdom
law by its employment of the inventors. Dr. Hardy, his
team, and Mr. Sexton then “decided to make sure [they]
didn’t give anything else away.” J.A. 2759:13–14.



The question of Dennis related to the power of the Florida government to
dictate patent ownership, but then there was a question of the power of
the federal government to do so.

LBE wrote:


In Stanford v. Roche, 563 U.S. 776; 131 S. Ct. 2188; 180 L. Ed. 2d 1 , — Stanford claimed that Holodny had no rights to assign because the University’s HIV research was federally funded, giving the school superior rights in the invention under the Bayh-Dole Act. — The Supreme Court noted: The
question here is whether the University and Small Busi-
ness Patent Procedures Act of 1980—commonly referred to
as the Bayh-Dole Act—displaces that norm and automati-
cally vests title to federally funded inventions in federal
contractors. We hold that it does not.
Theoretically, Congress might have written Bayh-Dole differently, to displace the norm, and that would have been within the scope of Congressional powers. But, as you suggest, not likely within the scope of powers of Florida lawmakers. Or, is there an 11th Amendment/Florida Prepaid Postsecondary kind of issue?



AND


Prior to Bayh-Dole, many government agencies were reluctant to relinquish their ownership of the government funded patents to universities or industry. Instead these agencies granted nonexclusive licenses to anyone who wished to produce the inventions.

AND from a 1924 case:

It is unthinkable that, where a valuable instrument in the war against disease is developed by a public agency through the use of public funds, the public servants employed in its production should be allowed to monopolize it for private gain and levy a tribute upon the public which has paid for its production, upon merely granting a nonexclusive license for its use to the governmental department in which they are employed.

Not clear what the answer to Dennis’ question is…




Further on the pre-Bayh-Dole period:


Before the Bayh-Dole Act was passed in 1980, federal funding to universities resembled a system of government selection and subsidization of private innovators. Researchers received federal money either through allocation by the university or based on the individual research proposal. The intellectual property resulting from such federally funded research then belonged to the federal government, who usually dedicated it to the public domain, and granted nonexclusive licenses for its use



from 18 Harv. J. Law & Tec 459 (2005)

**


Before 1980, most inventions made with government funding were never patented. n4 The U.S. government generally held title to those few inventions that were actually patented, whether created at federal labs or in academia. n5 Non-exclusive licenses were usually available at a reasonable rate, though these were never very popular. n6



from 2005 B.C. Intell. Prop. & Tech. F. 93001

**

Innovation's Golden Goose, supra note 10. ("Before Bayh-Dole, the fruits of research supported by government agencies had belonged strictly to the federal government.



from Carl E. Gulbrandsen , 2007 Wis. L. Rev. 1149

**

As to state law and patents-->


To support this position, the court looked to Jim Arnold Corp. v. Hydrotech Systems, n58 which held that patent ownership is a state court question. n59 In doing so, the court read that holding expansively; though Jim Arnold Corp.'s holding concerned only whether the state court had jurisdiction, here the court read it to mean that state law controls in patent ownership cases. n60
Having established that state law generally controls patent ownership, Akazawa held that the same doctrine should apply when foreign law, rather than [*64] state law, controls.



from 64 Okla. L. Rev. 57 (2011)

**


Other state laws regulating issues related to patents have not been preempted. This seems to create some room for state legislatures to regulate a limited range of patent related issues.
For example, a state contract law has overcome preemption challenges where it governed agreements to license or assign a patent. n146 In deciding this case, the Supreme Court stated that "[c]ommercial agreements traditionally are the domain of state law." n147 The Court then found that the [*781] state law did not violate any of the three objectives of federal patent law. n148 First, it found that the state law actually encouraged invention by providing royalties to patent owners. n149 Second, the Court found that the state licensing law encouraged disclosure of inventions. n150 Third, the enforcement of a licensing agreement under state licensing law did not withdraw any idea from the public domain. n151 Based on these findings, the Supreme Court determined that the state contract law was not preempted. n152



from 68 S.C. L. Rev. 761 (2017)

**

We have previously held that patent ownership is determined by state, not federal law. Akazawa, 520 F.3d at 1357 (citing Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 1572 (Fed. Cir. 1997) ("[T]he question of who owns the patent rights and on what terms typically is a question exclusively for state courts.")). However, "the question of whether [**11] a patent assignment clause creates an automatic assignment or merely an obligation to assign is intimately bound up with the question of standing in patent cases," and therefore we have "treated it as a matter of federal law." DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008). Usually, federal law is used to determine the validity and terms of an assignment, but state law controls any transfer of patent ownership by operation of law not deemed an assignment.

from Sky Technologies, 576 F.3d 1374
**


Under the classical conception of the patent, individual states lost the power to determine entitlement to a patent or the scope of the patent property right. But the Constitution's Patent Clause authorized Congress only to "secure" the exclusive patent right. Once a patent was issued and entered the stream of commerce, its management as a property right largely befell the states. That division of responsibility has very largely persisted, although with qualifications emanating from the first sale doctrine, federal antitrust, and misuse policy. Federal law defines entitlement to a patent, its appropriate scope, and enforcement power by means of infringement actions. By contrast, state commercial law determines questions about licensing, assignment, and descent.



from 58 Ariz. L. Rev. 263 (2016)

**

"there is nothing that limits assignment as the only means for transferring patent ownership...by operation of law," Akazawa, 520 F.3d at 1356
**
The Tenth Circuit acknowledged that "states retain the power to 'adopt rules for the promotion of intellectual creation within their own jurisdictions' so long as those rules do not impermissibly interfere with the federal patent scheme."

174 F.3d 1104, 1108-9 (10th Cir. 1999).

**

See also the discussion of University Patents v. Kligman, 762 F. Supp. 1212 (1991), within
http://www.iphandbook.org/handbook/ch05/p04/
Therein a policy presented in a "handbook" was deemed sufficient to transfer patent ownership