I made this a twitter thread. I’ll post it here as well and work to round it out as I have time. It’s the flip side of being blunt about what happens under Bayh-Dole if an inventor does not assign an invention made in federally funded work to a federal contractor.
Under Bayh-Dole (35 USC 201(b)) federal contractors can add parties to any funding agreement. These parties become, by definition (35 USC 201(c)), contractors, and Bayh-Dole’s patent rights clauses apply to those new parties.
A new party may be added by any federal contractor to a funding agreement by “any assignment, substitution of parties, or subcontract of any type” (35 USC 201(b)). The patent rights clauses flow down to new parties based on what those new parties are. There’s one key exception to the flow down when adding parties. We will come back to that.
If the new party is a nonprofit, then the nonprofit patent rights clause applies–37 CFR 401.14 with paragraph (k).
If the new party is a small business, then the small business patent rights clause applies–37 CFR 401.14 without paragraph (k).
If the new party is a large business, then the small business patent rights clause applies (as conflated with executive branch patent policy by a clueless or mischievous NIST) except that the clause does not preempt federal statutes that require federal ownership of inventions.
And if the new party is an individual, then the individual inventor patent rights clause applies–37 CFR 401.9. Continue reading