A question on RE: practice the invention

Search on RE: “what does “practice the invention” mean under bayh dole.”

Practice means “to make, use, or sell” an invention. Practice means to use any of the substantial rights to a patentable invention. Practice means to “work” an invention so that the benefits of that invention are available to the public. Practice is not limited to merely the “use” of an invention.

Bayh-Dole uses “practice” with regard to inventions at 35 USC 202(c)(4):

With respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferrable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world:

This language comes from the Kennedy executive branch patent policy by way of the NIH IPA master agreement. Norman Latker, patent counsel at the NIH, drafted both the IPA master and Bayh-Dole. Latker claimed that Bayh-Dole was based on the IPA master. Here’s Kennedy, in its definition of “Governmental purpose”:

the right of the Government of the United States (including any agency thereof, state, or domestic municipal government) to practice and have practiced (made or have made, used or have used, sold or have sold) throughout the world by or on behalf of the Government of the United States.

The Nixon revisions to Kennedy remove “practice and have practiced” and replace these terms directly with “make, use, and sell.”

The IPA master repeats this language. Here’s the license requirement:

The Grantee shall grant to the Government of the United States a nonexclusive. irrevocable, royalty-free license for governmental purposes and on behalf of any foreign government . . .

Exhibit A of the IPA master then has the required license, repeating the Kennedy policy language:

As used herein, “governmental purpose” means the right of the Government of the United States (including any agency thereof, state or domestic municipal government) to practice and have practiced (made or have made, used or have used, sold or have sold) throughout the world by or on behalf of the Government of the United States.

Put another way, the federal agency shares the patent holder’s right to work the invention for any government purpose. Bayh-Dole is part of federal patent law. Federal patent law establishes the patent property rights that run with any invention. Bayh-Dole establishes those property rights for inventions arising in federally supported research or development. Bayh-Dole divides the interest in those patent property rights when a federal contractor elects to retain title to an invention made in federally supported work that the contractor has acquired.

The government becomes, as it were, a co-owner under any patent the government issues on inventions made in federally supported work, with limitations on how the government may exploit the rights it has. Those limitations are here in 35 USC 202(c)(4) [the license], (c)(5) [reporting on use kept secret], (c)(7)(A) [limitation on withholding approval for nonprofit contractor assignment of subject inventions][; and 203 [compulsory licensing, including exclusive licensing that would void any existing exclusive or non-exclusive licenses and as set out in 35 USC 207(a)(2), the government can use exclusive licenses to assign inventions].

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