Category Archives: Agreements

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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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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On Exclusive Licenses For Research Technology

Here’s a response I wrote for a research team that is working through issues regarding the licensing of their inventive technology. The team is spread across multiple institutions in multiple countries, working on an enabling technology in medical engineering. ***** The … Continue reading

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Exclusive licenses, assignments, and ticks, Part 4

Per Bayh-Dole, universities should not create “gray” areas in which nonprofits allow exclusive licensees the rights that only an assignee should have and at the same time not transfer to those exclusive licensees the public covenant required by (k) of … Continue reading

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Exclusive licenses, assignments, and ticks, Part 3

We may now come back around to our primary interest–does the WU Exclusive License template agreement assign patent rights? The answer appears to be yes, it does. It grants exclusive rights to make, use, and sell, leaving only vestigial rights … Continue reading

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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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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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Exclusive licensing in Bayh-Dole, Part 1: Licenses and Assignments

Here is what Bayh-Dole says about exclusive licenses: Notwithstanding any other provision of this chapter, no small business firm or nonprofit organization which receives title to any subject invention and no assignee of any such small business firm or nonprofit … Continue reading

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How can universities demonstrate they aren’t patent trolls?

Let’s say, just for the sake of argument, that university administrators at places like Caltech don’t want to be labelled patent trolls. What might make it clear that universities are not just one more set of patent trolls? “We’re not … Continue reading

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