Category Archives: Agreements

A non-compliant Bayh-Dole written agreement at Yale-5

We are working through Yale’s “Patent Policy Acknowledgement & Agreement.” We have been looking at Paragraph 6 of the Yale patent policy to try to make sense of what inventions Yale really does assert an interest in. Paragraph 6 demands … Continue reading

Posted in Agreements, Bayh-Dole, Policy | Tagged , , , | Comments Off on A non-compliant Bayh-Dole written agreement at Yale-5

A non-compliant Bayh-Dole written agreement at Yale-4

We are working through Yale’s “Patent Policy Acknowledgement & Agreement.” Most recently we borked about employment and faculty freedom. Now let’s look at how the agreement deals with consulting. It tries to worry the problem of conflicting obligations–Yale doesn’t want … Continue reading

Posted in Agreements, Bayh-Dole, Policy | Tagged , , , , | Comments Off on A non-compliant Bayh-Dole written agreement at Yale-4

A non-compliant Bayh-Dole written agreement at Yale-3

We are working through Yale’s “Patent Policy Acknowledgement & Agreement.” The agreement requires personnel signing it to “abide” by Yale’s patent policy, as if that patent policy does not apply but for this agreement. That’s a bit odd. Even odder, … Continue reading

Posted in Agreements, Bayh-Dole, Policy | Tagged , , | Comments Off on A non-compliant Bayh-Dole written agreement at Yale-3

A non-compliant Bayh-Dole written agreement at Yale-2

Now let’s look at a “Patent Policy Acknowledgement & Agreement” from Yale University. Here it is: Yale’s web site asserts that this agreement is required “for grant and patent compliance.” That’s a strange combination–grant and patent. One might think grant … Continue reading

Posted in Agreements, Bayh-Dole, Policy | Tagged , , , | Comments Off on A non-compliant Bayh-Dole written agreement at Yale-2

A non-compliant Bayh-Dole written agreement at Yale-1

Bayh-Dole’s standard patent rights clause introduces a requirement not in Bayh-Dole. 37 CFR 401.14(f)(2) requires contractors to require their employees, other than clerical and non-technical employees, to make a written agreement to protect the government’s interest in subject inventions: The … Continue reading

Posted in Agreements, Bayh-Dole, Policy, Present Assignment | Tagged , , | Comments Off on A non-compliant Bayh-Dole written agreement at Yale-1

University inventions that aren’t exactly worthless-2

Companies, it turns out, are pretty good at evaluating inventions that are “worth” something to them. Companies with large research enterprises appear to be less good than others, however. The story at Xerox PARC was that inventors hoped that their … Continue reading

Posted in Agreements, Policy, Technology Transfer | Tagged , , , , | Comments Off on University inventions that aren’t exactly worthless-2

Bayh-Dole Basics, 8: Reasonable Terms

Bayh-Dole policy (35 USC 200) that the patent system is to be used “to promote the utilization of inventions arising in federally supported research or development.” That “utilization” is then set forth in the definition of “practical application” (35 USC … Continue reading

Posted in Agreements, Bayh-Dole | Tagged , , , | Comments Off on Bayh-Dole Basics, 8: Reasonable Terms

Invention Option Theory and Bayh-Dole Crock Work

At one point, many years ago, I thought Bayh-Dole was totally clever. I was very wrong, but here’s how I thought Bayh-Dole worked. The federal government had a general claim under federal law to own any invention made under federal … Continue reading

Posted in Agreements, Bayh-Dole, History | Tagged , , , , , | Comments Off on Invention Option Theory and Bayh-Dole Crock Work

Best practices in university invention management, 10

We have reached the last installment of our work with the ipHandbook’s model invention assignment agreement. We started this journey making note of how university patent administrators make things more complicated than they ever need to be. The basic approach … Continue reading

Posted in Agreements, IP, Policy | Tagged , , , , , | Comments Off on Best practices in university invention management, 10

Best practices in university invention management, 9

We are deep into the ipHandbook’s model invention assignment agreement (IAA). We have hit the basic disclosure and assignment clause that depends on a restrictive clause with three parts that together establish the scope of the present assignment. Part (i) … Continue reading

Posted in Agreements, IP, Policy | Tagged , , , | Comments Off on Best practices in university invention management, 9