Tag Archives: Stanford v Roche

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

Posted in Bayh-Dole | Tagged , , , , , , | Leave a comment

The Faster Cures FAQ on Bayh-Dole, 2

We are working through the Faster Cures FAQ on Bayh-Dole. 2. What does Bayh-Dole say about the ownership of inventions and technologies? Pursuant to Bayh-Dole, universities and other nonprofit organizations that receive federal funding, may “elect to retain title to … Continue reading

Posted in Bayh-Dole | Tagged , , , | Leave a comment

University of Connecticut patent practice hash, 4

So now back to UConn’s patent policy claim. Look at it again: Under Connecticut state law, the University owns all inventions created by employees in the performance of employment with the University or created with University resources or funds administered … Continue reading

Posted in Bayh-Dole, Policy, Stanford v Roche | Tagged , , | Leave a comment

University of Connecticut patent practice hash, 1

Let’s work through the University of Connecticut’s intellectual property practice on disclosure and ownership of inventions. We will start in the middle, with a disclosure form–much like a university inventor might do. UConn has an “Innovation Alert” web “portal” that … Continue reading

Posted in Bayh-Dole, Present Assignment, Stanford v Roche | Tagged , , , , , | Comments Off on University of Connecticut patent practice hash, 1

Bayh-Dole Basics, 4: contractor comments

Bayh-Dole defines anyone on the other side of a funding agreement from a federal agency as a contractor.  The term is arbitrary and misleading. Let’s look at both aspects. The standard patent rights clause requires the contractors that host federally … Continue reading

Posted in Bayh-Dole | Tagged , , , , , , , , , | Comments Off on Bayh-Dole Basics, 4: contractor comments

You should want to see Bayh-Dole operate as written. Here’s why.

Let’s start with some Bayh-Dole basics. Bayh-Dole preempts all other statutes but Stevenson-Wydler on matters of federal policy on inventions made in research contracts (35 USC 210). Bayh-Dole is the only authority on the matter. Bayh-Dole requires federal agencies to … Continue reading

Posted in Bayh-Dole | Tagged , , , , , , | Comments Off on You should want to see Bayh-Dole operate as written. Here’s why.

Whistling all the way to the bank, revisited 1

Back in 2010, I wrote an article titled “Whistling all the way to the bank.” The article explored the problem of compensation tied to the argument that the Bayh-Dole Act was a “vesting statute” that vested ownership of inventions made … Continue reading

Posted in Bayh-Dole, Stanford v Roche | Tagged , , , , , , | Comments Off on Whistling all the way to the bank, revisited 1

Bayh-Dole the Monster

The Bayh-Dole Act makes a great deal about public interest. Throughout the law are gestures toward worthy objectives–use of inventions, manufacturing in the United States, government licenses, and the right of federal agencies to step if they need to. But … Continue reading

Posted in Bayh-Dole, Stanford v Roche | Tagged , , , , , | Comments Off on Bayh-Dole the Monster

Sublicensing in Bayh-Dole

Let’s look at sublicensing of inventions made with federal support. Here’s the summary: Contractors can distribute rights in subject inventions in advance by assignment, substitution, and subcontracting. (35 USC 201) A contractor can grant sublicenses if it loses title to … Continue reading

Posted in Agreements, Bayh-Dole | Tagged , , | Comments Off on Sublicensing in Bayh-Dole

Going to Eleven on NIST and (f)(2)

NIST is drafting new rules for the standard patent rights clause authorized by Bayh-Dole. Included in the proposed new provisions is a requirement that contractors require the assignment of inventions to the contractor. This is a bad idea. Besides, it’s … Continue reading

Posted in Bayh-Dole, Bozonet, Policy, Sponsored Research, Stanford v Roche | Tagged , , , , , | Comments Off on Going to Eleven on NIST and (f)(2)