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Category Archives: Agreements
On Exclusive Licenses For Research Technology
Here’s a response I wrote for a research team that is working through issues regarding the licensing of their inventive technology. The team is spread across multiple institutions in multiple countries, working on an enabling technology in medical engineering. ***** The … Continue reading
Posted in Agreements, Projects, Sponsored Research, Technology Transfer
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Exclusive licenses, assignments, and ticks, Part 4
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
Posted in Agreements, Bayh-Dole, Bozonet
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Exclusive licenses, assignments, and ticks, Part 3
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
Posted in Agreements, Bayh-Dole
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Exclusive licenses, assignments, and ticks, Part 2
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
Posted in Agreements, Bayh-Dole
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Exclusive licenses, assignments, and ticks, Part 1
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
Posted in Agreements, Bayh-Dole
Tagged assignment, exclusive license
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Institutional Patent Licensing–One of the least “direct” ways to obtain new technology
A few weeks ago I was involved in a discussion about how a region might import new technology developed at distant universities. One of the participants, with a background in AUTM-style technology transfer, made the off-hand comment that if we … Continue reading
Posted in Agreements, Bayh-Dole, Freedom, Technology Transfer
Tagged Bayh-Dole, L word, license, patent
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Exclusive licensing in Bayh-Dole, Part 1: Licenses and Assignments
Here is what Bayh-Dole says about exclusive licenses: Notwithstanding any other provision of this chapter, no small business firm or nonprofit organization which receives title to any subject invention and no assignee of any such small business firm or nonprofit … Continue reading
Posted in Agreements, Bayh-Dole, IP
Tagged 35 USC 204, assignee, Bayh-Dole, do WTF law, exclusive license
2 Comments
How can universities demonstrate they aren’t patent trolls?
Let’s say, just for the sake of argument, that university administrators at places like Caltech don’t want to be labelled patent trolls. What might make it clear that universities are not just one more set of patent trolls? “We’re not … Continue reading
Posted in Agreements, Commons, Freedom, Policy
Tagged commons, license, patent, public good, troll
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What we have lost
Before their efforts turned to Bayh-Dole, the folks advocating invention mining at universities aimed to make the IPA a standard across all government agencies. Yes, “uniform” policy was what they argued for, but that was the politics. What they wanted … Continue reading
Posted in Agreements, Bayh-Dole, Policy
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Attacking Bayh-Dole monopoly pricing
[Added a comment at the end.] PhRMA published recently a white paper arguing that Bayh-Dole’s march-in provisions should not be used to mitigate monopoly patent pricing. Here’s the basic argument from the executive summary. It’s a few sentences, but it … Continue reading
Posted in Agreements, Bayh-Dole
Tagged Bayh-Dole, monopoly, profits
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