Tag Archives: exclusive license

What Bayh-Dole Does–enabling but not requiring exploitation of patent monopolies

Prior to the NIH Institutional Patent Agreement program, the Kennedy executive branch patent policy required federal agencies to do the following: Allow contractors with real businesses in non-governmental markets to own inventions made under federal contract, except in research directed … Continue reading

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Bayh-Dole Government License–5: Impact Beans

We are working through a recent “webinar” on the Bayh-Dole government license to practice and have practiced. In part, the webinar provides the opportunity to set some things right about Bayh-Dole and to resist the machinations of NIST to try … Continue reading

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Follow up: What if a university fails to patent under Bayh-Dole?

If a university fails to patent under Bayh-Dole, nothing ever happens. But that’s not even the meaningful answer. Look, even if a university gets a patent on a subject invention–one arising from federally sponsored research or development–there’s absolutely nothing in … Continue reading

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Working through an old misrepresentation of Bayh-Dole, 3

I have previously pointed out the University of Rochester’s strange policy statement with regard to commercialization. This is part of Rochester’s new and stinky. A statement currently pops up on the Rochester site that it will be down for a … Continue reading

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A sense of proportion–3

Prior to federal funding becoming the dominant source of university research funding, most universities operated their invention policies with a review committee that made recommendations to the university president with regard to particular inventions. The volume of invention reporting was … Continue reading

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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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Invention is not a thing, 14

Bayh-Dole’s public protection apparatus, even unused as it is, makes it clear that the federal invention economic system is intended to be different from that of private exploitation of patents for financial gain. In the federal economic system, patents are … Continue reading

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Another question on RE: Can Bayh-Dole void an exclusive license?

Can Bayh-Dole void an exclusive license? Let’s unravel this one. A rewrite– Question: Can a federal agency void an exclusive license under Bayh-Dole’s standard patent rights clause? Answer: Yes. Now some text. The exclusive license voiding has more to it … 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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Bayh-Dole Basics, 8: Reasonable Terms Comments-2

Now we get to government rights under march in. Here we have complications. In 1968, Norman Latker, NIH’s patent counsel, revived the Institutional Patent Agreement program, under which the NIH (and later the NSF) contracted with nonprofits so that a … Continue reading

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