Monthly Archives: March 2017

Circumventing Bayh-Dole, Fitt the First

Circumventing Bayh-Dole is easy. University administrators have been circumventing Bayh-Dole since the law became effective in 1981. Let’s look at three sorts of circumvention: 1) circumvention for non-compliant convenience–to make Bayh-Dole do even better what people claim Bayh-Dole was intended … Continue reading

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Bayh-Dole Secrecy, Part 7

The story so far: Bayh-Dole’s secrecy provision regarding reports of invention use was changed in 1984 to make it appear that federal agencies had no discretion in the matter, and that they “shall” treat all information in invention use reports … Continue reading

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Bayh-Dole Secrecy, Part 6

Bayh-Dole makes information regarding the use of subject inventions a government secret. It does this in a roundabout way by requiring federal agencies to treat those reports as confidential and as the sort of information that is exempt from FOIA … Continue reading

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The Bayh-Dole government license (and Grinches)

The federal government has five methods to deal with the exploitation of federally supported inventions. Let’s list them and make a few points, ending with a discussion on the value of the government’s license to “practice and have practiced” subject … Continue reading

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Exclusive License and Assignment

I have discussed in a number of articles the issue of exclusive license and assignment for inventions. The distinction matters under Bayh-Dole because Bayh-Dole’s standard patent rights clause (37 CFR 401.14(a)(k)(1)) forbids nonprofit contractors from assigning subject inventions other than to … Continue reading

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Bayh-Dole Secrecy, Part 5

We have looked at Bayh-Dole and at FOIA. The upshot is that the 1984 amendment that changed Bayh-Dole’s secrecy requirement at 202(c)(5) from “may” to “shall” apparently fails to meet the requirements of FOIA for withholding information. 202(c)(5) does not … Continue reading

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The heart plug in federal grants and contracts

I see a question in my search feed: “Does a Bayh-Dole patent clause make a grant a contract?” Let’s sort this out. Short answer. No, the presence of a patent rights clause does not change the nature of the agreement. Bayh-Dole … Continue reading

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Bayh-Dole Secrecy, Part 4

[revised to make clear that 35 USC 202(c)(5) does not require federal agencies to contract to agree to keep invention use reports secret–the law stipulates that federal agencies will treat such information as a class of information–“commercial and financial” and “privileged … Continue reading

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Not fixing a hole in Bayh-Dole

Bayh-Dole does not disturb federal common law with regard to inventions. Inventors supported by federal research funds own their inventions. The Supreme Court made this clear in Stanford v Roche. Bayh-Dole applies to subject inventions only. Subject inventions are patentable inventions … Continue reading

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Bayh-Dole Secrecy, Part 3

[updated with additional discussion of the nature of the 1984 change relative to a similar construction in 35 USC 202(c)(4)] Let’s examine the 1984 amendment to Bayh-Dole’s secrecy provision for invention use reports in more detail. It is worth pointing out … Continue reading

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