Category Archives: Bayh-Dole

The devils in the details: Bayh-Dole supports academic freedom, 1

Posted on March 12, 2018 by Gerald Barnett

Bayh-Dole supports the academic freedom of faculty inventors. University administrators refuse to comply. Here, we walk through the law, the implementing regulations, the various patent rights clauses to show the result. Fair warning to university administrators reading this piece. I … Continue reading →

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The IPA and Wisconsin’s 1969 Patent Policy, Table of Links

Posted on March 10, 2018 by Gerald Barnett

In May 2017 I wrote a series of articles that traced the development of the University of Wisconsin’s patent policy, how the Wisconsin Alumni Research Foundation shaped federal policy to disenfranchise faculty inventors in favor of its own money-making ventures … Continue reading →

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Bayh-Dole Basics, 5: invention assignment comments

Posted on March 9, 2018 by Gerald Barnett

Here is a basic distinction. Bayh-Dole prohibits nonprofits from assigning subject inventions except to an invention management organization or with the approval of the federal agency–and then only if the assignee accepts the nonprofit patent rights clause. Bayh-Dole says nothing … Continue reading →

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Bayh-Dole Basics 5: invention assignment

Posted on March 8, 2018 by Gerald Barnett

Assignment of an invention involves conveying all substantial rights in the invention–the exclusive rights to make, to use, and to sell. These substantial rights can be conveyed expressly by transferring title (that is, the right of ownership) or implicitly by … Continue reading →

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Bayh-Dole Basics, 4: contractor comments

Posted on March 7, 2018 by Gerald Barnett

Bayh-Dole defines anyone on the other side of a funding agreement from a federal agency as a contractor.  The term is arbitrary and misleading. Let’s look at both aspects. The standard patent rights clause requires the contractors that host federally … Continue reading →

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Bayh-Dole Basics, 4: contractor

Posted on March 6, 2018 by Gerald Barnett

A primary focus of Bayh-Dole is the disposition of invention rights in funding agreements between federal agencies and nonprofit organizations and small businesses. Funding agreements can take the form of contracts, grants, and cooperative agreements, and these agreements are extended … Continue reading →

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Bayh-Dole basics, 3: funding agreement comments

Posted on March 5, 2018 by Gerald Barnett

Bayh-Dole uses the definition of “funding agreement” for much heavy lifting. The definition does much more than merely restrict Bayh-Dole’s interest to grants, contracts, and cooperative agreements. The definition establishes the scope of the law to include experimental work, developmental … Continue reading →

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Bayh-Dole Basics, 3: funding agreement

Posted on March 2, 2018 by Gerald Barnett

Bayh-Dole requires federal agencies to use a standard patent rights clause in every funding agreement for experimental work, development, or research, unless they can justify something different. A “funding agreement” is defined (35 USC 201(b)) as any contract, grant, or … Continue reading →

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Bayh-Dole basics, 2: subject invention comments

Posted on March 1, 2018 by Gerald Barnett

There are three categories of invention in Bayh-Dole–inventions arising in federally supported research or development, subject inventions, and inventions owned by the federal government. The general scope of Bayh-Dole given in 35 USC 200 is that of “inventions arising in … Continue reading →

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Bayh-Dole Basics, 2: subject invention

Posted on February 28, 2018 by Gerald Barnett

For federal research and development contracts, Bayh-Dole defines a new category of invention in federal patent law, the “subject invention.” A subject invention is an invention that is or may be patentable is owned by a party to a funding … Continue reading →

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