Tag Archives: assignment

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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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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