Tag Archives: assignment

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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Xtandi demonstrates how Bayh-Dole is a do WTF you want law, 1

There is a big divide regarding what Bayh-Dole was supposed to accomplish with regard to the use of patents on publicly funded research. On one side is the view that publicly supported research should be freely or otherwise reasonably available … Continue reading

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Bayh-Dole Basics, 5: invention assignment comments

Here is a basic distinction. Bayh-Dole prohibits nonprofits from assigning subject inventions except to an invention management organization or with the approval of the federal agency–and then only if the assignee accepts the nonprofit patent rights clause. Bayh-Dole says nothing … Continue reading

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Bayh-Dole Basics 5: invention assignment

Assignment of an invention involves conveying all substantial rights in the invention–the exclusive rights to make, to use, and to sell. These substantial rights can be conveyed expressly by transferring title (that is, the right of ownership) or implicitly by … Continue reading

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Bayh-Dole basics, 2: subject invention comments

There are three categories of invention in Bayh-Dole–inventions arising in federally supported research or development, subject inventions, and inventions owned by the federal government. The general scope of Bayh-Dole given in 35 USC 200 is that of “inventions arising in … Continue reading

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You should want to see Bayh-Dole operate as written. Here’s why.

Let’s start with some Bayh-Dole basics. Bayh-Dole preempts all other statutes but Stevenson-Wydler on matters of federal policy on inventions made in research contracts (35 USC 210). Bayh-Dole is the only authority on the matter. Bayh-Dole requires federal agencies to … Continue reading

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Exclusive License and Assignment

I have discussed in a number of articles the issue of exclusive license and assignment for inventions. The distinction matters under Bayh-Dole because Bayh-Dole’s standard patent rights clause (37 CFR 401.14(a)(k)(1)) forbids nonprofit contractors from assigning subject inventions other than to … Continue reading

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Five Audit Issues for University Compliance with Bayh-Dole

While most discussions about Bayh-Dole compliance focus on the time periods for reporting inventions, filing patent applications, and giving notice of election to retain title, the compliance issues that matter are often overlooked. The top five involve ownership, money, and … Continue reading

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