Author Archives: Gerald Barnett

When is an invention a subject invention?–1

Posted on August 12, 2019 by Gerald Barnett

[Y’all are reading this one. I’ve made a few edits for clarity. Where it matters I’ve left some strike-throughs.] A search query here at Research Enterprise recently asked how to determine if an invention is a “government subject invention.” Here … Continue reading →

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Bayh-Dole Rooster Farms

Posted on August 6, 2019 by Gerald Barnett

In February 2019, ILR Review published “Academic Entrepreneurship: The Bayh-Dole Act versus the Professor’s Privilege.” The article is paywalled, but a slide version of the paper by the authors is available at the National Academies website. The authors compare U.S. … Continue reading →

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USC still misrepresents Bayh-Dole, 2018 version-Fitt 3

Posted on August 5, 2019 by Gerald Barnett

Now, for comedy. USC turns from the obligations of the Bayh-Dole act for universities to technology transfer: Benefits of disclosure and technology transfer include: Bayh-Dole does not require technology transfer. A contractor may comply with Bayh-Dole by using its subject … Continue reading →

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USC still misrepresents Bayh-Dole, 2018 version-Fitt 2

Posted on August 2, 2019 by Gerald Barnett

[Update 2/10/2021–still misrepresents, still wrong.] USC’s “Bayh-Dole Act Obligations for Universities” overdramatizes–no, misrepresents–Bayh-Dole. USC turns to its own policies. Even here, things are not quite what they seem. Under the USC Intellectual Property Policy, with some exceptions called out within … Continue reading →

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USC still misrepresents Bayh-Dole, 2018 version-Fitt 1

Posted on August 1, 2019 by Gerald Barnett

USC has a document on the web titled “Bayh-Dole Act Obligations for Universities” dated Sept 26, 2018 by the “USC Office of Research.” Let’s have a look. This memorandum provides an overview of University and Federal policies and procedures concerning … Continue reading →

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Study Example 1: “Reasonable terms” in Bayh-Dole

Posted on July 31, 2019 by Gerald Barnett

Here is Joseph Allen, attempting to make the case that “reasonable terms” in Bayh-Dole’s definition of practical application applies only to licensing terms: Bayh-Dole adopted many of these terms with their original meaning. Section 203 says that the agency funding … Continue reading →

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Bayh-Dole Adds Bureaucracy, 2: Complications of Ownership Positions

Posted on July 30, 2019 by Gerald Barnett

So far, this should all be easy and clear. Heh. The Nixon patent policy states the general federal policy for inventions made with federal support. A set of specialty statutes supersede the Nixon patent policy for specific contracting purposes. Bayh-Dole … Continue reading →

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Bayh-Dole Adds Bureaucracy, 1: Conditional Preemption

Posted on July 29, 2019 by Gerald Barnett

Bayh-Dole conditionally preempts federal statutes pertaining to the ownership of inventions made with federal support (35 USC 210(a)). If a party to a federal funding agreement acquires ownership of such an invention–a subject invention–then Bayh-Dole conditions, as conveyed through that … Continue reading →

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The Arizona Commerce Authority Guidance on Bayh-Dole, 5

Posted on July 26, 2019 by Gerald Barnett

What might the Arizona Commerce Authority do to revise their guidance? Here are some helpful suggestions. First, audience. Focus on small company issues and leave the nonprofits for another time. There’s plenty written for nonprofits elsewhere. Give an account of … Continue reading →

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The Arizona Commerce Authority Guidance on Bayh-Dole, 4

Posted on July 25, 2019 by Gerald Barnett

We are dealing with Arizona Commerce Authority advice about Bayh-Dole and IP rights. Almost done. Or fed up. Or bored with such nonsense. But first, march-in. Then general gestures about IP. The government’s march-in rights are one of the most … Continue reading →

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