Tag Archives: assignment

Patent agreements in Federal Procurement Regulations and Bayh-Dole, 2

If we return for a moment to O’Connor’s article–it is a great read for what it aims to do, but for O’Connor’s theme of abstract mistaken assumptions rather than providing a specific account of Latker’s lack of drafting ability–there is … Continue reading

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Bayh-Dole Basics, 7: Disclosure comments, 1

This will be longish. For the brief of heart, here’s a synopsis. Invention disclosure is the heart of Bayh-Dole standard patent rights compliance. Disclosure is not reporting that an invention exists. Disclosure means providing, for an invention owned by a … Continue reading

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Best practices in university invention management, 7

Let’s have a look, then, at the invention assignment agreement that ipHandbook recommends that universities should use with their faculty. We start with the “consideration”: In consideration of the sum of One Dollar ($1.00) and: my past, present, and/or future … Continue reading

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Has NIST finally created a foobar standard patent rights clause?

Words in laws ought to mean something. According to Bayh-Dole’s standard patent rights clause, the initial contractor must require its employees to make a written agreement to establish the government’s rights in subject inventions. But, but, but . . . … Continue reading

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What has NIST done, actually?-3

The start of this article is here. We have been working through what NIST’s introduction of an assignment requirement for subject inventions actually does. In one view, nothing. In another, a technical if not prissy requirement that inventions a contractor … Continue reading

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What has NIST done, actually?-2

Let’s work through what NIST has done with its new rule on assignment of subject inventions by written agreement. The Supreme Court in Stanford v Roche (2011) ruled that Bayh-Dole’s contracting provisions apply only to subject inventions, and that subject inventions … Continue reading

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What has NIST done, actually?-1

NIST has made an attempt to turn Bayh-Dole into a vesting statute. From all appearances, that is what a casual reader would think has happened with NIST’s new subject invention assignment language. With help from inept (if not complicit) university … Continue reading

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Guide to Bayh-Dole by the Layers, 4

Fourth layer: Funding agreements We have looked at Bayh-Dole the statute, the implementing regulations, and the standard patent rights clauses. These are all apparatus that are disconnected from contractors and inventors–just laws and regulations and templates. The apparatus gets connected … Continue reading

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NIST makes Bayh-Dole a vesting statute

NIST has issued its final rule on Bayh-Dole and disregards the Supreme Court on the ownership of subject inventions. The Supreme Court was clear that Bayh-Dole’s definition of subject invention means that an invention must be “owned by the contractor” to … Continue reading

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Nonprofit assignment of subject inventions in the standard patent rights clause 37 CFR 401.14(a)(k)(1)

Universities ubiquitously claim as a matter of formal policy to handle patentable inventions in the public interest. That expectation forms a basis for the federal government to award grants–subvention funding, grants-in-aid–for faculty-proposed research hosted by these universities. That’s also the … Continue reading

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