Tag Archives: subject invention

Another question on RE: When does Bayh-Dole not apply?–6

To get at subject inventions, we will cover some of the same ground as that series of RE articles on subject inventions, but from a different angle. Bayh-Dole’s contracting provisions do not apply if an invention made under federal contract … Continue reading

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Another question on RE: When does Bayh-Dole not apply?–5

We are working through when Bayh-Dole does not apply. Bayh-Dole doesn’t apply to works of authorship or copyright or data or data rights or know how or trade secrets (except to keep trade secrets secret even when the trade secret … Continue reading

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Another question on RE: When does Bayh-Dole not apply?–4

Now that you have a better idea about Bayh-Dole and have done some thinking about why someone might want it Bayh-Dole to apply and others might not want it to apply, let’s work the definition of invention (at 35 USC … Continue reading

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Another question on RE: When does Bayh-Dole not apply?–3

Back for more of when Bayh-Dole does not apply, I see. Well, let’s get serious about this. Let’s look at the Bayh-Dole definitional cascade for subject invention. We worked through “invention”–strange, broad, both patentable and not demonstrably not patentable, except … Continue reading

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More on Can universities assign patents rights under Bayh-Dole?

35 USC 201(b) makes clear that any assignee of a subject invention becomes a party to the funding agreement–a “contractor” in Bayh-Dole’s definitional usage: The term “funding agreement” means any contract, grant, or cooperative agreement entered into between any Federal agency, other … Continue reading

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Does Bayh-Dole apply only to patentable IP?

Here is a question at Research Enterprise. Does Bayh-Dole apply only to patentable IP? Answer: No. In its contracting parts, Bayh-Dole applies to subject inventions, and the definition of subject invention includes more than patentable IP but also restricts what … Continue reading

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When is an invention a subject invention?–5

We have pounded our way through the definition of subject invention. We started with the observation that Bayh-Dole is part of federal patent law, not merely an executive branch regulation. Bayh-Dole preempts other federal law and executive branch patent policy … Continue reading

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When is an invention a subject invention?–4

We are working through Bayh-Dole’s definition of “subject invention” at 35 USC 201(e). For an invention to be a subject invention, it must meet every element of the definition. Folks can’t just say something is a subject invention and by … Continue reading

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When is an invention a subject invention?–3

We are dealing with when an invention becomes a subject invention under Bayh-Dole. An invention must meet every element of Bayh-Dole’s definition at 35 USC 201(e) to become a subject invention and cause Bayh-Dole to preempt most other federal law … Continue reading

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When is an invention a subject invention?–2

We are working through the answer to when an invention is a Bayh-Dole subject invention. The reasoned answer is when the invention meets every element of the definition of subject invention at 35 USC 201(e). The simple answer in practice … Continue reading

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