Author Archives: Gerald Barnett

Bayh-Dole Basics, 1: public covenant

Posted on February 22, 2018 by Gerald Barnett

The Bayh-Dole Act is part of federal patent law. Bayh-Dole establishes a policy (35 USC 200) regarding the use of the patent system for inventions arising in federally supported research or development. This policy establishes the property rights in patents … Continue reading →

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Mississippi State University misrepresents Bayh-Dole

Posted on February 20, 2018 by Gerald Barnett

Here’s Mississippi State University’s Office Technology Management answering the question “Why does the University patent technology?” It is required under federal grants – The University is required to patent and commercialize the technology under terms of the Bayh-Dole Act. If the … Continue reading →

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The bozonet on mount stupid

Posted on February 19, 2018 by Gerald Barnett

I mentioned “mount stupid” last week in a three-part article on the University of Utah. Mount stupid is a bit of a meme derived from accounts of the Dunning-Kruger effect, which I have referred to in developing an account of … Continue reading →

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You should want to see Bayh-Dole operate as written. Here’s why.

Posted on February 16, 2018 by Gerald Barnett

Let’s start with some Bayh-Dole basics. Bayh-Dole preempts all other statutes but Stevenson-Wydler on matters of federal policy on inventions made in research contracts (35 USC 210). Bayh-Dole is the only authority on the matter. Bayh-Dole requires federal agencies to … Continue reading →

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How Bayh-Dole complicates the definitions in Stevenson-Wydler

Posted on February 15, 2018 by Gerald Barnett

The only law that Bayh-Dole does not expressly supersede is the Stevenson-Wydler Act. It’s worth comparing language in the two laws, as Bayh-Dole draws from Stevenson-Wydler, but then works its own magic. Consider the definition cascade on inventions. Here’s Stevenson-Wydler: … Continue reading →

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Whistling all the way to the bank, revisited 3

Posted on February 14, 2018 by Gerald Barnett

Having established the contracting problem for government-sponsored “basic research,” let’s get into how the patent administration folks got into changing things around from government ownership (with its open access, often without conditions or formalities) to institutional ownership (or, more accurately, … Continue reading →

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Whistling all the way to the bank, revisited 2

Posted on February 13, 2018 by Gerald Barnett

The “Whistling” article struggles with the problem of the standard patent rights clause language about “electing to retain title.” I’ve wondered over this wording for years. It appears to be at the heart of the “cleverly crafted scheme” to intercept … Continue reading →

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Whistling all the way to the bank, revisited 1

Posted on February 12, 2018 by Gerald Barnett

Back in 2010, I wrote an article titled “Whistling all the way to the bank.” The article explored the problem of compensation tied to the argument that the Bayh-Dole Act was a “vesting statute” that vested ownership of inventions made … Continue reading →

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Bayh-Dole in another simple diagram

Posted on February 9, 2018 by Gerald Barnett

Bayh-Dole conflates three distinct forms of federal contracting for research and then moves one form–university-hosted research–into the category of another, procurement from commercial firms. Here’s the diagram:   The effect of Bayh-Dole is depicted by the blue arrows. The box … Continue reading →

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University of Utah’s Mount Stupid Disclosure Claim, 3

Posted on February 8, 2018 by Gerald Barnett

Now let’s look at what the University of Utah requires by way of assignment. My snark controls have apparently failed. I will try to line out at least some of the snark. Here is a link to the template Assignment … Continue reading →

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