Tag Archives: assignment

Does Bayh-Dole Require a Written Assignment?

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, 1

Bayh-Dole botches its management of invention ownership. To see how, we need to look at how Bayh-Dole in 1980 changed the Federal Procurement Regulations put in place in 1975. In particular, let’s look at how the definition of subject invention … Continue reading

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Five easy ways to circumvent Bayh-Dole’s “manufactured substantially” requirement

Bayh-Dole makes American manufacture of product based on subject inventions the centerpiece of the law. Bayh-Dole’s statement of policy and objective calls out promotion of inventions “made in the United States by United States industry and labor” (35 USC 200). … Continue reading

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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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