Tag Archives: assignment

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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The VA gets a bit of Bayh-Dole

The Department of Veteran’s Affairs produced a template Cooperative Technology (Inventions) Administration Agreement available at a web site called Agreement Sample.  The template is modeled on a CRADA agreement, but instead of research, the agreement concerns the administration of inventions made … Continue reading

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These are not the investors Congress was looking for

Universities routinely assign federally funded inventions to companies. They do so under the cover of an exclusive patent license, expecting that they won’t get caught. There are two kinds of exclusive license. In one, a true exclusive license, the licensee … Continue reading

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Bayh-Dole inventor disclosure summary

Let’s summarize. Bayh-Dole does not require inventors to disclose inventions arising in federally supported research or development. It’s just not there. Go look. I’ll wait. Bayh-Dole does not require inventors to give up rights to their inventions.  It’s not there. … Continue reading

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NIST’s Explanation of the Addition of an Assignment Requirement

NIST added an assignment requirement to the standard patent rights clause authorized by Bayh-Dole. There’s no authority in Bayh-Dole, however, for an assignment requirement. The Supreme Court in Stanford v Roche made clear that Bayh-Dole does not vest ownership, does … Continue reading

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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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