Tag Archives: contractor

Another question on RE: When does Bayh-Dole not apply?–4

Now that you have a better idea about Bayh-Dole and have done some thinking about why someone might want it Bayh-Dole to apply and others might not want it to apply, let’s work the definition of invention (at 35 USC … Continue reading

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Another question on RE: When does Bayh-Dole not apply?–2

Let’s get into the details–dance with devils, reveal Bayh-Dole’s true character. Get some sympathy. Let’s consider again that heading of Title 35 USC, Chapter 18: “Patent Rights in Inventions Made with Federal Assistance.” In Bayh-Dole, “patent rights” are restricted, relative … Continue reading

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Another question on RE: When does Bayh-Dole not apply?–1

When does Bayh-Dole not apply? Bayh-Dole is part of federal patent law, Title 35 USC, placed in Chapter 18 with heading “Patent Rights in Inventions Made with Federal Assistance.” Thus, broadly, we can expect that Bayh-Dole does not apply to … 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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“Government” rights in federally supported inventions, 2

We might ask, then, what happens if a contractor does not acquire ownership of an invention made in the performance of work under a federal funding agreement. The answer is that the Nixon patent policy as revised remains in effect, … Continue reading

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Bayh-Dole’s Ruby Slippers

This is a story about 35 USC 201(b), 35 USC 202(a), 37 CFR 401.9, and 37 CFR 401.14(f)(2) and (g)(1). These provisions of Bayh-Dole, implementing regulations, and standard patent rights clause, when read together, create ruby slippers. The story requires … Continue reading

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Only Bayh-Dole and University Research Enterprise, 4

Consider, then, this (f)(2) written agreement requirement that’s outside Bayh-Dole but made a condition of federal funding agreements anyway. The (f)(2) requirement is most certainly not a private patent agreement between a university as employer and its faculty inventors. It … Continue reading

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