Category Archives: Agreements

AAU Fools with Words, 2

Posted on July 3, 2017 by Gerald Barnett

Let’s look then at the AAU statement produced by the task force charged with–if we read the preamble correctly–finding better words to declare that university technology transfer operations are to advance the public interest. AAU starts with fake history: Before … Continue reading →

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Key Concept 3: FOIL Technology

Posted on June 28, 2017 by Gerald Barnett

FOIL Technology FOIL is an acronym that stands for “Fragmented Ownership Institutionally Licensed.” Technology that is FOIL is fragmented across institutional owners that then seek to license their portion of the technology for development as a commercial product. FOIL is … Continue reading →

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Key Concept 2: Substantial rights

Posted on June 27, 2017 by Gerald Barnett

Substantial Rights Substantial rights is a concept used by courts in considering whether an invention has been licensed or assigned. The substantial rights in an invention are the rights to make, use, and sell. If these rights are licensed exclusively, … Continue reading →

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What should the federal government do with patents it issues to itself? Part 2

Posted on June 25, 2017 by Gerald Barnett

The Bayh-Dole Dissatisfaction with the Patent System According to its advocates, starting with Sen. Bayh, the idea of behind Bayh-Dole was to require federal agencies to pre-assign their ownership interest in invention contract deliverables to university contractors. It’s a clever … Continue reading →

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What should the federal government do with patents it issues to itself? Part 1

Posted on June 24, 2017 by Gerald Barnett

Here is a question: What should the federal government do with patents it issues to itself? Some Context In the 1940s and 1950s, as the United States government contracted for research services associated with the development of weapons systems and … Continue reading →

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Sublicensing in Bayh-Dole

Posted on June 20, 2017 by Gerald Barnett

Let’s look at sublicensing of inventions made with federal support. Here’s the summary: Contractors can distribute rights in subject inventions (even in advance) by assignment, substitution, and subcontracting. (35 USC 201) A contractor can grant sublicenses if it loses title … Continue reading →

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Fair pricing and the Army’s Zika vaccine

Posted on May 24, 2017 by Gerald Barnett

Summary: The Army does not need to require fair pricing in general as a condition of an exclusive patent license with Sanofi for its Zika vaccine inventions. To achieve fair pricing, the Army must intend to exercise its government license to practice … Continue reading →

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The sound and fury of nonprofit assignments of subject inventions

Posted on May 7, 2017 by Gerald Barnett

Over the past few months I have returned the issue of exclusive licenses and assignments in Bayh-Dole. Here’s the operative requirement for nonprofits (35 USC 202(c)(7)(A)): (7) In the case of a nonprofit organization, (A) a prohibition upon the assignment of … Continue reading →

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Exclusive License and Assignment

Posted on March 20, 2017 by Gerald Barnett

I have discussed in a number of articles the issue of exclusive license and assignment for inventions. The distinction matters under Bayh-Dole because Bayh-Dole’s standard patent rights clause (37 CFR 401.14(a)(k)(1)) forbids nonprofit contractors from assigning subject inventions other than to … Continue reading →

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The heart plug in federal grants and contracts

Posted on March 16, 2017 by Gerald Barnett

I see a question in my search feed: “Does a Bayh-Dole patent clause make a grant a contract?” Let’s sort this out. Short answer. No, the presence of a patent rights clause does not change the nature of the agreement. Bayh-Dole … Continue reading →

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