Tag Archives: 37 CFR 401.9

Another question on RE: what to do if a subcontractor has a subject invention?–1

Posted on October 7, 2019 by Gerald Barnett

Bother. For the TL;DR crowd, I’ll copy the end to the beginning: What to do if a subcontractor has a subject invention? It’s not yours. It’s theirs. If the subcontractor is a company, then if you have previously negotiated a … Continue reading →

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Does Bayh-Dole Require a Written Assignment?

Posted on November 19, 2018 by Gerald Barnett

Does Bayh-Dole require a written assignment? No. But Bayh-Dole is screwy. I’ll elaborate. Look all you want, there’s no assignment requirement in Bayh-Dole. Heck, the Supreme Court looked for an assignment requirement and couldn’t find it. Here’s how the majority … Continue reading →

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Bayh-Dole’s “subject invention” botch of the Federal Procurement Regulations, 3

Posted on November 13, 2018 by Gerald Barnett

A careful read of Bayh-Dole and its omission of the patent agreement requirement argues not only did Bayh-Dole reverse the “presumption” of federal ownership of inventions made under contract but also repudiated the federal requirement that contractors own inventions so … Continue reading →

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Mapping Bayh-Dole Flow of Control

Posted on July 30, 2018 by Gerald Barnett

I have updated this article from June 24, 2011  in light of the Stanford v Roche decision. In its previous version, the article sets out the idea that a federal agency has a right to claim title to inventions made … Continue reading →

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Only Bayh-Dole and University Research Enterprise, 3

Posted on July 26, 2018 by Gerald Barnett

We are working through Bayh-Dole without the cover of the political bluffery that permitted Bayh-Dole to become national policy. Without the bluffery, Bayh-Dole addresses the same situation addressed previously by the IPA program, which in turn took up the Harbridge … Continue reading →

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Bayh-Dole for university faculty

Posted on June 28, 2018 by Gerald Barnett

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 →

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

Posted on May 22, 2018 by Gerald Barnett

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 →

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Guide to Bayh-Dole by the Layers, 3

Posted on April 18, 2018 by Gerald Barnett

[The default patent rights clause authorized by Bayh-Dole is the inventor patent rights clause at 37 CFR 401.9, a subset of 37 CFR 401.14. The default is enabled when contractors comply with 37 CFR 401.14(f)(2)–except they never do. Under the … Continue reading →

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

Posted on March 13, 2018 by Gerald Barnett

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 →

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

Posted on March 12, 2018 by Gerald Barnett

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 →

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