Tag Archives: Stanford v Roche

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 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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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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Bayh-Dole nonsense in a talk at the University of Pittsburgh

Last year (March 2016), Joe Allen gave a talk at the University of Pittsburgh, “Patent Ownership Under Bayh-Dole, reported in the University Times. Called “a key architect of the Bayh-Dole Act,” Allen manages to fill a talk summary with mostly … Continue reading

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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

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Working through an old op/ed on university ownership of inventions

I was out browsing the web and came across an op/ed from 2011 published in the Baylor University magazine Lariat. The anonymous author was opining about the Stanford v Roche case and the title makes clear the position: “Patents should … Continue reading

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Royalty sharing as federally mandated divisiveness

Here’s a sliver of divisiveness in Bayh-Dole (35 USC 202(c)(7)). In the case of a nonprofit organization, …. (B) a requirement that the contractor share royalties with the inventor On the face of it, this seems to be a happy requirement. … Continue reading

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Bayh-Dole served up by the Catholic University of America’s general counsel

Here’s a bit from the office of general counsel at Catholic University of America. See how many things this statement of Bayh-Dole gets wrong in only four sentences. I’ll give you a few minutes. The Bayh-Dole Act of 1980 (Patent … Continue reading

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