Category Archives: Agreements

What should the federal government do with patents it issues to itself? Part 2

The Bayh-Dole Dissatisfaction with the Patent System According to its advocates, starting with Sen. Bayh, the idea of behind Bayh-Dole was to require federal agencies to pre-assign their ownership interest in invention contract deliverables to university contractors. It’s a clever … Continue reading

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What should the federal government do with patents it issues to itself? Part 1

Here is a question: What should the federal government do with patents it issues to itself? Some Context In the 1940s and 1950s, as the United States government contracted for research services associated with the development of weapons systems and … Continue reading

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Sublicensing in Bayh-Dole

Let’s look at sublicensing of inventions made with federal support. Here’s the summary: Contractors can distribute rights in subject inventions in advance by assignment, substitution, and subcontracting. A contractor can grant sublicenses if it loses title to the government, provided … Continue reading

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Fair pricing and the Army’s Zika vaccine

Summary: The Army does not need to require fair pricing in general as a condition of an exclusive patent license with Sanofi for its Zika vaccine inventions. To achieve fair pricing, the Army must intend to exercise its government license to practice … Continue reading

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The sound and fury of nonprofit assignments of subject inventions

Over the past few months I have returned the issue of exclusive licenses and assignments in Bayh-Dole. Here’s the operative requirement for nonprofits (35 USC 202(c)(7)(A)): (7) In the case of a nonprofit organization, (A) a prohibition upon the assignment of … 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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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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