Tag Archives: 37 CFR 401.9

Bayh-Dole for university faculty

Let’s put Bayh-Dole plainly for university faculty. Under federal patent law, inventors own their inventions. Federal patent law does not require inventors to use the patent system. Federal patent law does not require inventors to assign their inventions. Bayh-Dole is … Continue reading

Posted in Uncategorized | Tagged , , , | Leave a comment

The NIH’s View of Bayh-Dole Compliance, 3

We are working through NIH guidance on Bayh-Dole reporting requirements. In the process we are making note about how thoroughly NIH misrepresents Bayh-Dole. Sloppy? Indifferent? Does it matter? The next bit is going to be a bother: If it helps, … Continue reading

Posted in Bayh-Dole | Tagged , , | Comments Off on The NIH’s View of Bayh-Dole Compliance, 3

Guide to Bayh-Dole by the Layers, 3

Third layer: Patent rights clauses, continued We are still working through Bayh-Dole’s third layer, the patent rights clauses. We finish up the discussion of the (f)(2) written agreement requirement with another look at subject invention reporting and assignment, the parallels … Continue reading

Posted in Bayh-Dole | Tagged , , , | Comments Off on Guide to Bayh-Dole by the Layers, 3

The devils in the details: Bayh-Dole supports academic freedom, 2

Part 1 of this article is here. By requiring the contractor to require “technical” employees to make a written agreement, (f)(2) does some fundamental things within the framework of definitions set up by Bayh-Dole. Watch the devils tumble out in … Continue reading

Posted in Bayh-Dole, Bozonet, Freedom, Sponsored Research, Stanford v Roche | Tagged , , , , , , | Comments Off on The devils in the details: Bayh-Dole supports academic freedom, 2

The devils in the details: Bayh-Dole supports academic freedom, 1

Bayh-Dole supports the academic freedom of faculty inventors. University administrators refuse to comply. Here, we walk through the law, the implementing regulations, the various patent rights clauses to show the result. Fair warning to university administrators reading this piece. I … Continue reading

Posted in Bayh-Dole, Bozonet, Freedom, Sponsored Research, Stanford v Roche | Tagged , , , , , , , , , | Comments Off on The devils in the details: Bayh-Dole supports academic freedom, 1

Bayh-Dole Basics, 4: contractor comments

Bayh-Dole defines anyone on the other side of a funding agreement from a federal agency as a contractor.  The term is arbitrary and misleading. Let’s look at both aspects. The standard patent rights clause requires the contractors that host federally … Continue reading

Posted in Bayh-Dole | Tagged , , , , , , , , , | Comments Off on Bayh-Dole Basics, 4: contractor comments

Bayh-Dole basics, 3: funding agreement comments

Bayh-Dole uses the definition of “funding agreement” for much heavy lifting. The definition does much more than merely restrict Bayh-Dole’s interest to grants, contracts, and cooperative agreements. The definition establishes the scope of the law to include experimental work, developmental … Continue reading

Posted in Bayh-Dole | Tagged , , , , , , , | Comments Off on Bayh-Dole basics, 3: funding agreement comments

The booger way of innovation

Consider these two pathways by which universities might acquire inventions under Bayh-Dole’s patent rights clause. 1. Non-compliant. University by policy asserts ownership of all inventions made by faculty. University refuses to comply with the (f)(2) written agreement requirement in Bayh-Dole’s … Continue reading

Posted in Bayh-Dole, Bozonet | Tagged , , , | Comments Off on The booger way of innovation

Going to Eleven on NIST and (f)(2)

NIST is drafting new rules for the standard patent rights clause authorized by Bayh-Dole. Included in the proposed new provisions is a requirement that contractors require the assignment of inventions to the contractor. This is a bad idea. Besides, it’s … Continue reading

Posted in Bayh-Dole, Bozonet, Policy, Sponsored Research, Stanford v Roche | Tagged , , , , , | Comments Off on Going to Eleven on NIST and (f)(2)

Some Questions from a Future FAQ on Bayh-Dole

Q. Can a university violate the Bayh-Dole Act? A. No. Bayh-Dole applies to federal agencies. The law requires federal agencies to adopt uniform practices regarding patent rights to inventions in funding agreements. Bayh-Dole (now) authorizes the Department of Commerce to … Continue reading

Posted in Bayh-Dole, Policy, Present Assignment, Stanford v Roche | Tagged , , , , | Comments Off on Some Questions from a Future FAQ on Bayh-Dole