Category Archives: Bayh-Dole

Can universities assign patent rights under Bayh-Dole?

Posted on September 23, 2019 by Gerald Barnett

Another RE search question: “can universities assign patent rights under bayh dole?” Answer. Yes. See 35 USC 202(c)(7)(A): In the case of a nonprofit organization, (A) a prohibition upon the assignment of rights to a subject invention in the United States without the approval of … Continue reading →

Posted in Bayh-Dole | Tagged , , | Comments Off on Can universities assign patent rights under Bayh-Dole?

Does Bayh-Dole apply only to patentable IP?

Posted on September 2, 2019 by Gerald Barnett

Here is a question at Research Enterprise. Does Bayh-Dole apply only to patentable IP? Answer: No. In its contracting parts, Bayh-Dole applies to subject inventions, and the definition of subject invention includes more than patentable IP but also restricts what … Continue reading →

Posted in Bayh-Dole | Tagged , | Comments Off on Does Bayh-Dole apply only to patentable IP?

When is an invention a subject invention?–5

Posted on August 16, 2019 by Gerald Barnett

We have pounded our way through the definition of subject invention. We started with the observation that Bayh-Dole is part of federal patent law, not merely an executive branch regulation. Bayh-Dole preempts other federal law and executive branch patent policy … Continue reading →

Posted in Bayh-Dole | Tagged , | Comments Off on When is an invention a subject invention?–5

When is an invention a subject invention?–4

Posted on August 15, 2019 by Gerald Barnett

We are working through Bayh-Dole’s definition of “subject invention” at 35 USC 201(e). For an invention to be a subject invention, it must meet every element of the definition. Folks can’t just say something is a subject invention and by … Continue reading →

Posted in Bayh-Dole | Tagged , , | Comments Off on When is an invention a subject invention?–4

When is an invention a subject invention?–3

Posted on August 14, 2019 by Gerald Barnett

We are dealing with when an invention becomes a subject invention under Bayh-Dole. An invention must meet every element of Bayh-Dole’s definition at 35 USC 201(e) to become a subject invention and cause Bayh-Dole to preempt most other federal law … Continue reading →

Posted in Bayh-Dole | Tagged , | Comments Off on When is an invention a subject invention?–3

When is an invention a subject invention?–2

Posted on August 13, 2019 by Gerald Barnett

We are working through the answer to when an invention is a Bayh-Dole subject invention. The reasoned answer is when the invention meets every element of the definition of subject invention at 35 USC 201(e). The simple answer in practice … Continue reading →

Posted in Bayh-Dole | Tagged , | Comments Off on When is an invention a subject invention?–2

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 →

Posted in Bayh-Dole | Tagged , | Comments Off on When is an invention a subject invention?–1

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 →

Posted in Bayh-Dole, Policy | Tagged , , , , | Comments Off on Bayh-Dole Rooster Farms

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 →

Posted in Bayh-Dole, Policy | Tagged , , | Comments Off on USC still misrepresents Bayh-Dole, 2018 version-Fitt 3

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 →

Posted in Bayh-Dole, Policy | Tagged , , | Comments Off on USC still misrepresents Bayh-Dole, 2018 version-Fitt 2