Tag Archives: (f)(2)

Bayh-Dole’s “subject invention” botch of the Federal Procurement Regulations, 3

A careful read of Bayh-Dole and its omission of the patent agreement requirement argues not only did Bayh-Dole reverse the “presumption” of federal ownership of inventions made under contract but also repudiated the federal requirement that contractors own inventions so … Continue reading

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Patent agreements in Federal Procurement Regulations and Bayh-Dole, 1

Sean O’Connor starts an excellent article that gives a detailed account of history behind the Bayh-Dole Act (“Mistaken Assumptions: the Roots of Stanford v. Roche in Post-War Government Patent Policy“) this way: The Bayh-Dole Act of 1980 was built on a … 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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More Impractical Advice About NIST’s Changes to Bayh-Dole’s Regulations

NIST–can’t live with them, but law firms sure can. Here’s another law firm popping off about NIST’s recent revisions to Bayh-Dole’s implementing regulations and standard patent rights clause. Keep in mind that NIST’s chief counsel is already on record not … Continue reading

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Mapping Bayh-Dole Flow of Control

I have updated this article from June 24, 2011  in light of the Stanford v Roche decision. In its previous version, the article sets out the idea that a federal agency has a right to claim title to inventions made … 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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Only Bayh-Dole and University Research Enterprise, 3

We are working through Bayh-Dole without the cover of the political bluffery that permitted Bayh-Dole to become national policy. Without the bluffery, Bayh-Dole addresses the same situation addressed previously by the IPA program, which in turn took up the Harbridge … Continue reading

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The rule of law

Let’s look at Bayh-Dole and subject inventions from another angle. Same material as in our last article, developed a bit differently. Nothing in federal patent law requires an inventor to use the patent system. Nothing in federal patent law vests … Continue reading

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Best practices in university invention management, 5

More fun examples from the ipHandbook to demonstrate, ahem, best practices in university ownership of inventions. The visiting scientist. Professor from another university visits and invents. He is compensated through funds from Professor Z’s federal contract. That is, if he … Continue reading

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The NIH’s View of Bayh-Dole Compliance, 5

We are working NIH’s not so tasty guidance to participants in its SBIR and STTR programs directed at small businesses. We reach the NIH’s account of the “principal features” of Bayh-Dole, at least with regard to “intellectual property” requirements: Principal … Continue reading

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