Category Archives: Bayh-Dole

The Poetry of Aspirational IP Systems

In 2015, Ann Hammersla, once a senior university licensing officer and now working for the NIH, gave a talk at an NIH Regional Seminar on Program Funding and Grants Administration–“Inventions, Data Sharing, Reports to NIH, and other Intellectual Property Considerations.” … 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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A New Guide to Bayh-Dole–Outline Version

Here’s an alternative guide to Bayh-Dole. There’s a whole book in here, but I’ve left out the chapter and verse documentation and the historical evidence and interviews and the like. This is not the version of Bayh-Dole you will read … Continue reading

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The bogus argument for “mixing” research funds, 5

Let’s say that companies have diverse views about patenting, as the Harbridge House report documented, and some companies might decline to participate in federal research because they can’t get title to inventions and won’t settle for a mere license. We … Continue reading

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The bogus argument for “mixing” research funds, 4

The origins of the argument for “mixing” government and private research funds can be found in the 1968 Harbridge House report. The report identifies six industry attitudes toward patenting, ranging from indifference to defensive positions to critical to business. The special … 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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That special special case 6: Bayh-Dole the enabler

The Benefits of the Special Special Case There’s a good argument that the special special case has put more money into the pharmaceutical industry than would otherwise be there. The chase for such lucrative profits has in turn attracted speculators … Continue reading

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That special special case 5: From invention to patent to flip

Patent System and Public Covenants If the patent system is good as it is, and does not require a public covenant to run with inventions made in federally supported research, then why should federal policy endorse the two circumventions of … Continue reading

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