Author Archives: Gerald Barnett

Bayh-Dole Basics, 1: public covenant

The Bayh-Dole Act is part of federal patent law. Bayh-Dole establishes a policy (35 USC 200) regarding the use of the patent system for inventions arising in federally supported research or development. This policy establishes the property rights in patents … Continue reading

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Mississippi State University misrepresents Bayh-Dole

Here’s Mississippi State University’s Office Technology Management answering the question “Why does the University patent technology?” It is required under federal grants – The University is required to patent and commercialize the technology under terms of the Bayh-Dole Act. If the … Continue reading

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The bozonet on mount stupid

I mentioned “mount stupid” last week in a three-part article on the University of Utah. Mount stupid is a bit of a meme derived from accounts of the Dunning-Kruger effect, which I have referred to in developing an account of … Continue reading

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You should want to see Bayh-Dole operate as written. Here’s why.

Let’s start with some Bayh-Dole basics. Bayh-Dole preempts all other statutes but Stevenson-Wydler on matters of federal policy on inventions made in research contracts (35 USC 210). Bayh-Dole is the only authority on the matter. Bayh-Dole requires federal agencies to … Continue reading

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How Bayh-Dole complicates the definitions in Stevenson-Wydler

The only law that Bayh-Dole does not expressly supersede is the Stevenson-Wydler Act. It’s worth comparing language in the two laws, as Bayh-Dole draws from Stevenson-Wydler, but then works its own magic. Consider the definition cascade on inventions. Here’s Stevenson-Wydler: … Continue reading

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Whistling all the way to the bank, revisited 3

Having established the contracting problem for government-sponsored “basic research,” let’s get into how the patent administration folks got into changing things around from government ownership to institutional ownership, when the institutions didn’t have policies and practices that swept up inventions … Continue reading

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Whistling all the way to the bank, revisited 2

The “Whistling” article struggles with the problem of the standard patent rights clause language about “electing to retain title.” I’ve wondered over this wording for years. It appears to be at the heart of the “cleverly crafted scheme” to intercept … Continue reading

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Whistling all the way to the bank, revisited 1

Back in 2010, I wrote an article titled “Whistling all the way to the bank.” The article explored the problem of compensation tied to the argument that the Bayh-Dole Act was a “vesting statute” that vested ownership of inventions made … Continue reading

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Bayh-Dole in another simple diagram

Bayh-Dole conflates three distinct forms of federal contracting for research and then moves one form–university-hosted research–into the category of another, procurement from commercial firms. Here’s the diagram:   The effect of Bayh-Dole is depicted by the blue arrows. The box … Continue reading

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University of Utah’s Mount Stupid Disclosure Claim, 3

Now let’s look at what the University of Utah requires by way of assignment. My snark controls have apparently failed. Here is a link to the template Assignment Agreement (warning, the link downloads a Word document). The template gives as … Continue reading

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