Category Archives: Agreements

Penn State’s IP Protection Racket, 3: The 1992 IP Agreement, con’t

We are looking at the Penn State IP Agreement in its 1992 form. Part (A) of the agreement sets out what appears on the surface to be a broad scope for inventions (and other stuff) to be assigned to the … Continue reading

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Penn State’s IP Protection Racket, 2: The 1992 IP Agreement, Part A

Penn State manages its IP by means of an IP policy statement and an IP Agreement form. The policy statement made effective in 1991 requires various university personnel (including in the category “academic”–whatever that means) to “complete” an IP Agreement … Continue reading

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AAU Fools with Words, 2

Let’s look then at the AAU statement produced by the task force charged with–if we read the preamble correctly–finding better words to declare that university technology transfer operations are to advance the public interest. AAU starts with fake history: Before … Continue reading

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Key Concept 3: FOIL Technology

FOIL Technology FOIL is an acronym that stands for “Fragmented Ownership Institutionally Licensed.” Technology that is FOIL is fragmented across institutional owners that then seek to license their portion of the technology for development as a commercial product. FOIL is … Continue reading

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Key Concept 2: Substantial rights

Substantial Rights Substantial rights is a concept used by courts in considering whether an invention has been licensed or assigned. The substantial rights in an invention are the rights to make, use, and sell. If these rights are licensed exclusively, … Continue reading

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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. (35 USC 201) A contractor can grant sublicenses if it loses title to … 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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