Category Archives: Bayh-Dole

Persons under Bayh-Dole

Bayh-Dole defines “contractor” as “Any person, small business firm, or nonprofit organization that is a party to a funding agreement.” In turn, 1 USC 1 defines “person” thus: In determining the meaning of any Act of Congress, unless the context indicates … Continue reading

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Bayh-Dole, Tyrannosaurus

Bayh-Dole is a mess of a law. There’s the mess of the conception itself, the disgusting and ineffectual idea that the federal government should sue its citizens for using inventions made with public funding to advance public purposes–and should do … Continue reading

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One way Bayh-Dole destroys innovation opportunity in the U.S.

When Bayh-Dole came into effect in 1981, it had this requirement for subject inventions retained by contractors (35 USC 202(c)(3)) (my bold): (3) A requirement that a contractor electing rights file patent applications within reasonable times and that the Federal … Continue reading

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Federal agency patent enforcement: Gilead, 3

If you turn off all logic, then Bayh-Dole is whatever it is. But with logic on, the compelling public interest reason for the federal government to claim inventions made by federal employees (or even by the employees of federal contractors) … Continue reading

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Federal agency patent enforcement: Gilead, 2

Now let’s look at how Bayh-Dole deals with federal agency patent dealings with regard to licensing. 35 USC 207 authorizes patent dealing and 35 USC 209 stipulates the conditions under which exclusive licenses may be granted and the terms and … Continue reading

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Federal agency patent enforcement: Gilead, 1

Set aside for the moment the standing of a contractor or contractor’s assignee for such stuff. Consider a federal agency. Does a federal agency have standing under Bayh-Dole’s extension of patent law–and especially 35 USC 200 and 207–to seek injunctive … Continue reading

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Bayh-Dole Nutshell 1: Use it or lose it

If you don’t achieve practical application in a reasonable time, you lose the right to enforce your patent.  Bayh-Dole’s fundamental policy is that the patent system must be used to promote the utilization of inventions arising from federally supported research … Continue reading

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Federal agency patent enforcement under Bayh-Dole, 5

Let’s work through the situation on federal ownership of inventions outside of Bayh-Dole protocols for acquiring inventions from contractors that screw up their patenting of subject inventions. Again, we are looking for any indication that federal agencies, in acquiring patents, … Continue reading

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More NIH Bayh-Dole Slop

The NIH cannot get Bayh-Dole right. Or maybe the NIH doesn’t want to get Bayh-Dole right. Here’s an NIH announcement from 2018 about policy changes, “Notice Regarding 2018 Bayh-Dole Act Final Rule – Rights to Federally Funded Inventions and Licensing … Continue reading

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Federal agency patent enforcement under Bayh-Dole, 4

We are working through the contention that Bayh-Dole does not authorize federal agencies to enforce patents on federally owned inventions. It’s clear that there is no such authorization in Bayh-Dole, though the law authorizes everything else–getting patents, licensing patents, administrating … Continue reading

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