Let’s get into the details–dance with devils, reveal Bayh-Dole’s true character. Get some sympathy.
Let’s consider again that heading of Title 35 USC, Chapter 18:
“Patent Rights in Inventions Made with Federal Assistance.”
In Bayh-Dole, “patent rights” are restricted, relative to ordinary patents, “patent rights” includes contractor “rights to patent” relative to federal claims on that right, “patent rights” also includes the federal government’s right to grant exclusive licenses to inventions owned by the federal government; “invention” is broadened in weird ways to include non-patentable stuff, and “federal assistance” is really, really broad.
Bayh-Dole does four things:
authorizes as a default that nonprofit and small business federal contractors, if they acquire a covered invention, may, by timely disclosure and notice, preempt any claim of federal ownership to that invention.
establishes procedures by which federal agencies and new statutes can vary from this default.
authorizes federal agencies the right to grant exclusive licenses in inventions owned by the federal government and establishes procedures for federal licensing.
establishes the patent property rights in covered inventions, including imposing a working requirement for those inventions, whether owned by a contractor or by the federal government.
establishes the conditions upon which the federal government may receive a license to or ownership of a subject invention or require the licensing of a subject invention.
Bayh-Dole applies generally to inventions arising in federally supported research or development (35 USC 200), applies to rights to subject inventions acquired by nonprofit and small business contractors (35 USC 202(a)), applies to other federal statutes (35 USC 210), and applies to federal agencies (most everything else). Not in this list? Bayh-Dole doesn’t apply. Continue reading