Well, now we can look at Bayh-Dole’s nonprofit assignment provision. It’s in Bayh-Dole’s specification for what must be included in a patent rights clause that runs with any funding agreement with a nonprofit or small business. Here, 35 USC 202(c)(7)(A):
In the case of a nonprofit organization, (A) a prohibition upon the assignment of rights to a subject invention in the United States without the approval of the Federal agency, except where such assignment is made to an organization which has as one of its primary functions the management of inventions (provided that such assignee shall be subject to the same provisions as the contractor);
We have the same restriction to nonprofit organizations, and the same structure–a prohibition followed by an exception. But things are different.
a prohibition upon the assignment of rights to a subject invention in the United States
The prohibition is restricted to the US. A nonprofit can assign foreign rights without conditions. Also, any small company can assign any rights in a subject invention without any conditions. One wonders, what changes when a subject invention is owned by a nonprofit so that there must be federal approval, but only for US assignments? Continue reading