Monthly Archives: January 2017

Exclusive licenses, assignments, and ticks, Part 2

We aren’t done. There is another issue to deal with, that of “prudential standing”–which has to do with the standing to bring an action in federal court, such as for patent infringement. There are cases that find that a license has … Continue reading

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Exclusive licenses, assignments, and ticks, Part 1

Washington University (in St. Louis) uses a template exclusive license agreement that makes the typical extension to assignment–it grants full rights in making, using, and selling, adds the right to sublicense, and gives the licensee first crack at enforcing the … Continue reading

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How a Moloch state defends its own

A while ago, I was going around with someone about a technical bit in Bayh-Dole. She thought my position was “baloney” because her lawyers had said it was. The language in the law, though, doesn’t support her position, nor do … Continue reading

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A Bayh-Dole FAQ with One Question Only and Multiple Answers

Q. Has Bayh-Dole been successful? A. Yes! It’s the legacy of important people. How can anyone call it a disaster? To do so is to smirch the reputations of decent people who have done a heroic thing with the best … Continue reading

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Sooner or later, Oklahoma IP counsel might get it right about inventions

[expanded to include further discussion of the OU policy claim to inventions] In a talk last fall, the IP counsel for the University of Oklahoma, presented this slide on the university’s patent policy: It appears to be a quote from … Continue reading

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Bayh-Dole reduced to its basics [warning: none of this ever happens]

Bayh-Dole stripped of contingencies, for universities, reduces to this: Use the patent system to promote the practical application of inventions. A federal agency is an agency, department, corporation, or other entity of the federal government. A contractor is any party … Continue reading

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What happens if a contractor fails to report a subject invention?

James Love and Knowledge Ecology International have made a request to the Office of the Inspector General at Health & Human Services to examine whether Cold Spring Harbor Laboratory and Isis Pharmaceuticals failed to disclose two inventions as required by … Continue reading

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Institutional Patent Licensing–One of the least “direct” ways to obtain new technology

A few weeks ago I was involved in a discussion about how a region might import new technology developed at distant universities. One of the participants, with a background in AUTM-style technology transfer, made the off-hand comment that if we … Continue reading

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Government and non-government markets and federal government waste under Bayh-Dole

Bayh-Dole requires that when a contractor retains title to a subject invention, the contractor must grant to the government a non-exclusive license. Here’s Bayh-Dole on that government license (35 USC 202(c)(4)): (4) With respect to any invention in which the … Continue reading

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Ten Years After 25 Years After Bayh-Dole, Part 8

While the patent system might give freedom to just any inventor and patent owner, the federal Government is not any ordinary patent owner, but has particular purposes and interests and expectations–and those may be present in federal patent policy, in … Continue reading

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