Tag Archives: Stanford v Roche

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

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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

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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

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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

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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

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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

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Bayh-Dole’s only purpose is to exploit public suffering for profit

The Bayh-Dole Act was created to permit the pharmaceutical industry to gain patent monopolies over inventions in medicinal chemistry made with federal government support. I have been through the history. I have worked through law for a decade. I practiced … Continue reading

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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

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Penn State’s Protection Racket, 14: Assignment and Present Assignment

Here’s Penn State’s current IP Agreement’s sort-of assignment clause: In so agreeing, I especially acknowledge my responsibilities: (1) to assign and do hereby assign to the University (or its designee) all rights which I have or may acquire in inventions, … Continue reading

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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

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