Tag Archives: assignment

The consequences of Bayh-Dole non-disclosure of inventions, 3

Finally, we reach a non-empty consequence of an invention becoming a subject invention, even if not disclosed to the federal agency. This consequence has to do specifically with subject inventions made under the nonprofit patent rights clause. Bayh-Dole stipulates that … Continue reading

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The consequences of Bayh-Dole non-disclosure of inventions, 2

We are looking at the consequences of a contractor not disclosing a subject invention to the federal agency that funded work in which the invention was made. One consequence is that the federal agency “may receive title” to such an … Continue reading

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Would you believe still more on Can universities assign patent rights under Bayh-Dole?

The distinction between exclusive license and assignment also matters in Bayh-Dole practice. Bayh-Dole’s definition of funding agreement at 35 USC 201(b) makes clear that any assignment by a contractor extends the funding agreement–and necessarily the patent rights clause–to the assignee. … Continue reading

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More on Can universities assign patents rights under Bayh-Dole?

35 USC 201(b) makes clear that any assignee of a subject invention becomes a party to the funding agreement–a “contractor” in Bayh-Dole’s definitional usage: The term “funding agreement” means any contract, grant, or cooperative agreement entered into between any Federal agency, other … Continue reading

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Can universities assign patent rights under Bayh-Dole?

Another RE search question: “can universities assign patent rights under bayh dole?” Answer. Yes. See 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 … Continue reading

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Oh wow. Implications of Bayh-Dole’s broad scope

For Bayh-Dole’s preemption to operate “uniformly,” Bayh-Dole’s scope has to be as broad as any federal statutes and executive branch patent policy. Since those statutes and executive branch patent policy do not worry who has ownership of any invention “arising … Continue reading

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Federal law on inventions made with federal support, 4

One cannot read “contractor” in Bayh-Dole and assume that “contractor” only refers to the initial or prime contractor. One must always look to the circumstances of a given contract to determine whether others have been made parties to the funding … Continue reading

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Federal law on inventions made with federal support, 3

Now, let’s emphasize a few points. There are at least three ways that a contractor may come to own an invention made with federal support: inventors assign their inventions state law (in some cases, such as Ohio Rev Code 3345.14) … Continue reading

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Federal law on inventions made with federal support, 2

Next, we add citations and qualifications to ground this framework. Specialty statutes for specific federal purposes control federal claims of ownership of inventions made under federal contract. See the list of such statutes at 35 USC 210. If a specialty statute … Continue reading

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Federal law on inventions made with federal support

First, the brief version: Specialty statutes for specific federal purposes control federal claims of ownership of inventions made under federal contract. The Nixon patent policy as amended by Reagan’s executive order otherwise controls federal claims of ownership of inventions made under … Continue reading

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