Author Archives: Gerald Barnett

Guide to Bayh-Dole by the Layers, 5

Fifth Layer: practice On to the next layer of Bayh-Dole, actual practice. We will restrict our discussion here to university practice, but things are much the same for other nonprofits. Small business practice has its own peculiarities, including the oddness … Continue reading

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Guide to Bayh-Dole by the Layers, 4

Fourth layer: Funding agreements We have looked at Bayh-Dole the statute, the implementing regulations, and the standard patent rights clauses. These are all apparatus that are disconnected from contractors and inventors–just laws and regulations and templates. The apparatus gets connected … Continue reading

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Guide to Bayh-Dole by the Layers, 3

Third layer: Patent rights clauses, continued We are still working through Bayh-Dole’s third layer, the patent rights clauses. We finish up the discussion of the (f)(2) written agreement requirement with another look at subject invention reporting and assignment, the parallels … Continue reading

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Guide to Bayh-Dole by the Layers, 2

Second Layer: Regulations Third Layer: Patent rights clauses The second layer of Bayh-Dole involves the implementing regulations. We will consider only those that have to do with the contracting section, 202-204. These regulations are found at 37 CFR part 401. … Continue reading

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Guide to Bayh-Dole by the Layers, 1

A helpful way to look at Bayh-Dole is as a set of layers of law, regulation, contracting, enforcement, and outcomes. There are at least eight such layers, not counting the historical situation and the legislative context. Let’s work through these … Continue reading

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The Faster Cures FAQ on Bayh-Dole, 5

We are working through the Faster Cures FAQ on Bayh-Dole. This is the last bit. 7. What have the impacts of Bayh-Dole been? Bayh-Dole has both passionate supporters and detractors. Advocates argue that it has brought the results of federally … Continue reading

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Pissed at NIST, short form

Supreme Court: Bayh-Dole applies only to subject inventions. Subject inventions are ones owned by a contractor. Congress did not intend a sea-change in initial invention ownership. Bayh-Dole does not apply to inventions made in projects with federal support until contractors … Continue reading

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NIST makes Bayh-Dole a vesting statute

NIST has issued its final rule on Bayh-Dole and disregards the Supreme Court on the ownership of subject inventions. The Supreme Court was clear that Bayh-Dole’s definition of subject invention means that an invention must be “owned by the contractor” to … Continue reading

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The Faster Cures FAQ on Bayh-Dole, 4

We are working through the Faster Cures FAQ on Bayh-Dole. 5. What are march-in rights, and what does Bayh-Dole say about them? Has the government ever exercised its march-in rights? Bayh-Dole requires federal agencies to include a right to “march-in” and … Continue reading

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The Faster Cures FAQ on Bayh-Dole, 3

We are working through the Faster Cures FAQ on Bayh-Dole. 4. What requirements does Bayh-Dole place on universities? None. Bayh-Dole applies to federal agencies, not to universities. It’s only loose chatter to say that Bayh-Dole requires universities to do anything. … Continue reading

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