Tag Archives: subject invention

NIST’s Chief Counsel on Bayh-Dole, 3

NIST’s chief counsel gives, let us say, a unhelpful representation of the law. Let’s continue with his second slide titled “Bayh-Dole Highlights.” The government does not “retain” a license. The government is entitled to receive that license. The law uses … Continue reading

Posted in Bayh-Dole | Tagged , , , , , , | Comments Off on NIST’s Chief Counsel on Bayh-Dole, 3

NIST’s Chief Counsel on Bayh-Dole, 2

As further evidence that NIST’s chief counsel does not properly describe Bayh-Dole, consider this point in his first slide of Bayh-Dole “highlights”: This point is accurate only in an obscure technical sense. Bayh-Dole does not preclude a contractor, having obtained … Continue reading

Posted in Bayh-Dole | Tagged , , , , , , | Comments Off on NIST’s Chief Counsel on Bayh-Dole, 2

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 , , , , , , | Comments Off on NIST’s Chief Counsel on Bayh-Dole, 1

Guide to Bayh-Dole by the Layers, 1

[4/30/18: fixed an editing artifact, bringing together text on “housekeeping” into a single section where it belongs] A helpful way to look at Bayh-Dole is as a set of layers of law, regulation, contracting, enforcement, and outcomes. There are at … Continue reading

Posted in Bayh-Dole | Tagged , , | Comments Off on Guide to Bayh-Dole by the Layers, 1

Subject invention reporting and federal funding agreements

It would be interesting to see an audit of university invention reporting practices, especially in light of the definition of “funding agreement” and what it means for an invention to be made “in the performance of work under a funding … Continue reading

Posted in Bayh-Dole | Tagged , , , , | Comments Off on Subject invention reporting and federal funding agreements

The effect of eliminating Bayh-Dole invention reporting

The invention reporting requirement is fussy bureaucracy as it is presently practiced. Federal agencies appear to do nothing with the information reported other than to run up costs at taxpayer expense to receive the information. Nothing meaningful happens as a … Continue reading

Posted in Bayh-Dole | Tagged , , , , , | Comments Off on The effect of eliminating Bayh-Dole invention reporting

Why universities might fail to report subject inventions

James Love asks why universities fail to report subject inventions. The question might seem rather odd, because in practice Bayh-Dole has been construed to give university administrators incentives to expand the definition of subject invention and so claim anything and … Continue reading

Posted in Bayh-Dole | Tagged , , , , | Comments Off on Why universities might fail to report subject inventions

Nonprofit assignment of subject inventions in the standard patent rights clause 37 CFR 401.14(a)(k)(1)

Universities ubiquitously claim as a matter of formal policy to handle patentable inventions in the public interest. That expectation forms a basis for the federal government to award grants–subvention funding, grants-in-aid–for faculty-proposed research hosted by these universities. That’s also the … Continue reading

Posted in Bayh-Dole | Tagged , , , , | Comments Off on Nonprofit assignment of subject inventions in the standard patent rights clause 37 CFR 401.14(a)(k)(1)

Xtandi demonstrates how Bayh-Dole is a do WTF you want law, 3

The first part of this article is here. The exclusive license that UCLA granted to Medivation meets the requirements for an assignment of the subject invention. The license grants substantially all rights in the subject invention (to all compounds for … Continue reading

Posted in Bayh-Dole | Tagged , , , , , , | Comments Off on Xtandi demonstrates how Bayh-Dole is a do WTF you want law, 3

Xtandi demonstrates how Bayh-Dole is a do WTF you want law, 2

The first part of this article is here. To explore these issues, let’s take a look at Xtandi, a prostate cancer drug that has received press recently in the debate over high drug prices. Xtandi sells in the U.S. for … Continue reading

Posted in Bayh-Dole | Tagged , , , , , , , | Comments Off on Xtandi demonstrates how Bayh-Dole is a do WTF you want law, 2