Tag Archives: exclusive license

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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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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“Promote” in Bayh-Dole, 4

In arguing in Public Citizen v NIH that secret exclusive deals were the only way the NIH could fulfill its public mission–or at least the mission of its patent licensing office–the NIH produced some interesting metrics. In 2000, the NIH … 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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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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Assignment of subject inventions, not assignment of patents

Let’s make something really clear about inventions and patents. Courts have repeatedly held that an assignment of an invention is made when all substantial rights in an invention are conveyed, whether by assignment or exclusive license. The rights to make, … Continue reading

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