Author Archives: Gerald Barnett

Can universities assign patent rights under Bayh-Dole?

Posted on September 23, 2019 by Gerald Barnett

Another RE search question: “can universities assign patent rights under bayh dole?” Answer. Yes. See 35 USC 202(c)(7)(A): In the case of a nonprofit organization, (A) a prohibition upon the assignment of rights to a subject invention in the United States without the approval of … Continue reading →

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Does Bayh-Dole apply only to patentable IP?

Posted on September 2, 2019 by Gerald Barnett

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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University inventions that aren’t exactly worthless-4

Posted on August 30, 2019 by Gerald Barnett

If we work through these issues, it is apparent that it is a very special case where an invention cannot be used unless it is first productized, and that such productization will not be undertaken by the federal government, or … Continue reading →

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University inventions that aren’t exactly worthless-3

Posted on August 29, 2019 by Gerald Barnett

To show the limits of policy rationalizations over the university use of patents to benefit the public, let’s consider only those university inventions that have “worth”–that aren’t (in the eyes of university administrators, at least) “worthless.” If we work this … Continue reading →

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University inventions that aren’t exactly worthless-2

Posted on August 28, 2019 by Gerald Barnett

Companies, it turns out, are pretty good at evaluating inventions that are “worth” something to them. Companies with large research enterprises appear to be less good than others, however. The story at Xerox PARC was that inventors hoped that their … Continue reading →

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University inventions that aren’t exactly worthless-1

Posted on August 27, 2019 by Gerald Barnett

Let’s work the logic of university administrators thinking, ahem, about innovation. We have to do this sort of thing because it appears few university administrators bother with logic. Logic certainly is easily distracted by fallacies and is perhaps then overrated. … Continue reading →

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When is an invention a subject invention?–5

Posted on August 16, 2019 by Gerald Barnett

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

Posted on August 15, 2019 by Gerald Barnett

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

Posted on August 14, 2019 by Gerald Barnett

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

Posted on August 13, 2019 by Gerald Barnett

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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