Tag Archives: subject invention

NIST’s Explanation of the Addition of an Assignment Requirement

NIST added an assignment requirement to the standard patent rights clause authorized by Bayh-Dole. There’s no authority in Bayh-Dole, however, for an assignment requirement. The Supreme Court in Stanford v Roche made clear that Bayh-Dole does not vest ownership, does … Continue reading

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“Government” rights in federally supported inventions, 2

We might ask, then, what happens if a contractor does not acquire ownership of an invention made in the performance of work under a federal funding agreement. The answer is that 15 USC 2218(d) remains in effect, and even though … Continue reading

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Bayh-Dole’s “subject invention” botch of the Federal Procurement Regulations, 1

Bayh-Dole botches its management of invention ownership. To see how, we need to look at how Bayh-Dole in 1980 changed the Federal Procurement Regulations put in place in 1975. In particular, let’s look at how the definition of subject invention … Continue reading

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What the NIH says about Bayh-Dole, 1

The NIH has published comments on the NIST changes to the regulations that implement the Bayh-Dole Act and the standard patent rights clause. Jamie Love at Knowledge Ecology International┬ácalls out in a tweet a passage in the “Background” section in … Continue reading

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Invention, subject invention, and the clever scheme of Bayh-Dole

Here is the definition of invention in the Kennedy executive branch patent policy, 1963 (Section 4(b)): Invention or Invention or discovery–includes any art, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety … Continue reading

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Undisclosed subject inventions made in development and commercialization contracts

A note on subject inventions not disclosed under Bayh-Dole–and a place for auditors to romp and play as auditors are wont to do, if auditors were ever to romp and play with regard to anything consequential in Bayh-Dole. What follows … 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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Ten Year Note

Ten years ago, on September 4, 2008, I started the Research Enterprise blog. My idea was to use the blog to document what I had learned about university-based technology transfer over 15 years of licensing practice, and to describe ways … Continue reading

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Bayh-Dole Basics, 7: Disclosure comments, 2

We are working through the details of Bayh-Dole’s requirement that all subject inventions must be disclosed. What are subject inventions? What is the scope of a funding agreement? Who must disclose? What is the nature of the disclosure? Good questions, … Continue reading

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AUTM’s invitation to delude yourself, 3

To show how clueless the universities have been about Bayh-Dole–look at this finding from the GAO’s 1998 report on university administration of Bayh-Dole inventions: The policies varied among the universities in connection with how they determined whether the invention was … Continue reading

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