Tag Archives: patent rights clause

NIST’s Chief Counsel on Bayh-Dole, 4

One last slide from NIST’s chief counsel’s talk from 2013. Much to discuss. How to unwind this assertion? The Bayh-Dole Act requires federal agencies to use an arbitrary default patent rights clause. In the absence of Bayh-Dole, executive branch patent … Continue reading

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NIST’s Chief Counsel on Bayh-Dole, 3

NIST’s chief counsel gives, let us say, a unhelpful representation of the law. Let’s continue with his second slide titled “Bayh-Dole Highlights.” The government does not “retain” a license. The government is entitled to receive that license. The law uses … Continue reading

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NIST’s Chief Counsel on Bayh-Dole, 2

As further evidence that NIST’s chief counsel does not properly describe Bayh-Dole, consider this point in his first slide of Bayh-Dole “highlights”: This point is accurate only in an obscure technical sense. Bayh-Dole does not preclude a contractor, having obtained … Continue reading

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NIST’s Chief Counsel on Bayh-Dole, 1

In 2011, the Supreme Court provided a clear interpretation of the Bayh-Dole Act in Stanford v Roche. Bayh-Dole applies only to subject inventions. A subject invention is a patentable invention made in work funded by the federal government and owned … Continue reading

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Guide to Bayh-Dole by the Layers, 5

Fifth Layer: practice On to the next layer of Bayh-Dole, actual practice. We will restrict our discussion here to university practice, but things are much the same for other nonprofits. Small business practice has its own peculiarities, including the oddness … 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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Guide to Bayh-Dole by the Layers, 3

[The default patent rights clause authorized by Bayh-Dole is the inventor patent rights clause at 37 CFR 401.9, a subset of 37 CFR 401.14. The default is enabled when contractors comply with 37 CFR 401.14(f)(2)–except they never do. Under the … Continue reading

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The Faster Cures FAQ on Bayh-Dole, 3

We are working through the Faster Cures FAQ on Bayh-Dole. 4. What requirements does Bayh-Dole place on universities? None. Bayh-Dole applies to federal agencies, not to universities. It’s only loose chatter to say that Bayh-Dole requires universities to do anything. … Continue reading

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The Faster Cures FAQ on Bayh-Dole, 1

Faster Cures has at its web site a FAQ on Bayh-Dole. Let’s work through their account of Bayh-Dole and help them where they appear challenged. 1. What is the Bayh-Dole Act? Co-sponsored by Senators Birch Bayh of Indiana and Robert … Continue reading

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Subject invention reporting and federal funding agreements

It would be interesting to see an audit of university invention reporting practices, especially in light of the definition of “funding agreement” and what it means for an invention to be made “in the performance of work under a funding … Continue reading

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