Author Archives: Gerald Barnett

Why is Bayh-Dole not part of the Federal Grants and Cooperative Agreements Act?

Posted on February 13, 2017 by Gerald Barnett

Why is Bayh-Dole a part of federal patent law? It concerns how federal agencies contract for research, not (apparently) how patents are awarded. It doesn’t make any sense for Bayh-Dole to be in patent law. Instead, why wasn’t Bayh-Dole made … Continue reading →

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Free Competition and Enterprise in Bayh-Dole

Posted on February 10, 2017 by Gerald Barnett

One reason that Bayh-Dole is so difficult to parse is that there are multiple levels at work. It’s easier to just say that Bayh-Dole gives universities ownership of inventions made with federal support, and they can do anything they want … Continue reading →

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Negotiating a share of royalties under Bayh-Dole

Posted on February 8, 2017 by Gerald Barnett

[See the afterthought for something shorter and blunt and just as useless.] In his amicus brief to the Supreme Court in the Stanford v Roche case, former Senator Birch Bayh made an odd claim–that inventors had the right to negotiate … Continue reading →

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Affordances, Innovation, and University Patents

Posted on February 6, 2017 by Gerald Barnett

I first hit affordances in Don Norman’s book The Design of Everyday Things. Here’s some key points: The term affordance refers to the relationship between a physical object and a person . . . . An affordance is a relationship between … Continue reading →

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University IP Bustle and Evidence for Bayh-Dole’s Performance

Posted on February 3, 2017 by Gerald Barnett

There are any number of assertions that the Bayh-Dole Act has been wildly successful. Even many critics of Bayh-Dole start from the position that Bayh-Dole is successful, and then carp about bits of collateral damage and beg for crumbs and … Continue reading →

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Exclusive licenses, assignments, and ticks, Part 4

Posted on February 2, 2017 by Gerald Barnett

Per Bayh-Dole, universities should not create “gray” areas in which nonprofits allow exclusive licensees the rights that only an assignee should have.  If universities do so, they are required at the same time to transfer to those exclusive licensees/assignees the … Continue reading →

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Exclusive licenses, assignments, and ticks, Part 3

Posted on February 1, 2017 by Gerald Barnett

We may now come back around to our primary interest–does the WU Exclusive License template agreement assign patent rights? The answer appears to be yes, it does. It grants exclusive rights to make, use, and sell, leaving only vestigial rights … Continue reading →

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Exclusive licenses, assignments, and ticks, Part 2

Posted on January 31, 2017 by Gerald Barnett

We aren’t done. There is another issue to deal with, that of “prudential standing”–which has to do with the standing to bring an action in federal court, such as for patent infringement. There are cases that find that a license has … Continue reading →

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Exclusive licenses, assignments, and ticks, Part 1

Posted on January 30, 2017 by Gerald Barnett

Washington University (in St. Louis) uses a template exclusive license agreement that makes the typical extension to assignment–it grants exclusive rights in making, using, and selling, adds the right to sublicense, and gives the licensee first crack at enforcing the … Continue reading →

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How a Moloch state defends its own

Posted on January 27, 2017 by Gerald Barnett

A while ago, I was going around with someone about a technical bit in Bayh-Dole. She thought my position was “baloney” because her lawyers had said it was. The language in the law, though, doesn’t support her position, nor do … Continue reading →

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