Category Archives: Bayh-Dole

Taking Apart APLU’s Talking Points on Bayh-Dole, 1

Posted on November 15, 2017 by Gerald Barnett

The APLU has published a set of talking points about a bunch of things (original spelling retained): TALKING POINTS: UNIVERISTY TECHNOLOGY COMMERCIALIZATION, FEDERAL RESEARCH FUNDING, THE BAYH-DOLE ACT, AND FEDERAL SUPPORT FOR ENTREPRENURSHIP/GAP FUNDING PROGRAMS Let’s call them “cash cows” … Continue reading →

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Bogus intended incentives of the patent system

Posted on November 14, 2017 by Gerald Barnett

Here is an article espousing the virtues of the Bayh-Dole Act: “Shooting Ourselves in the Foot” by Joe Allen, posted by the University of Rochester’s Office of Technology Transfer with a head note about how terrible it would be to … Continue reading →

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The Bayh-Dole implications of “big” projects created by university policies and practices

Posted on November 13, 2017 by Gerald Barnett

In the usual depictions of the Bayh-Dole Act, the emphasis gets put on university ownership of inventions made with federal support. What is not pointed out is that Bayh-Dole not only allows (but does not require) such ownership, but makes … Continue reading →

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Let me come in again. Three ways an invention meets the definition of “subject invention.”

Posted on November 10, 2017 by Gerald Barnett

Here are the three basic ways to make an invention made with federal support meet the definition of “subject invention.” I said there were two ways when there were really three, but hey, this is the advanced course. Accept assignment … Continue reading →

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When a university and a company love America so much that they produce usable technology and dedicate it to be practiced for any government purpose, 2

Posted on November 8, 2017 by Gerald Barnett

How would one know whether a project is a big project, or a subject invention is a big subject invention, or a commercial product just another instance of that big subject invention, with a full license already granted to the … Continue reading →

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When a university and a company love America so much that they produce usable technology and dedicate it to be practiced for any government purpose, 1

Posted on November 7, 2017 by Gerald Barnett

Bayh-Dole requires federal agencies to require that owners of subject inventions grant to the government a license in those inventions. Sounds easy, and really, it is. But people are fickle and university patent administrators can be more fickler than most, … Continue reading →

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Two ways to turn an invention into a subject invention, 2

Posted on November 2, 2017 by Gerald Barnett

The complicated (f)(2) approach Now consider the complicated approach under (f)(2). The university has to somehow compel inventors to assign all inventions to the university, even though (f)(2) requires the university to require inventors to promise to establish the government’s … Continue reading →

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Two ways to turn an invention into a subject invention, 1

Posted on November 1, 2017 by Gerald Barnett

[this article refers to Bayh-Dole’s implementing regulations before NIST’s May 2018 changes–37 CFR 401.14(a) becomes 37 CFR 401.14, and NIST adds a goofball assignment clause under which contractors must require inventors to assign subject inventions–inventions that the contractors already own. … Continue reading →

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“Compliance with Bayh-Dole”

Posted on October 31, 2017 by Gerald Barnett

There are folks out there making money by offering compliance services for Bayh-Dole. At one level, it’s understandable. University administrators make a big deal about compliance. They see a complicated world. Many administrators aren’t prepared to read regulations carefully and … Continue reading →

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There Is No Bayh-Dole Compliance for Universities

Posted on October 30, 2017 by Gerald Barnett

There is no Bayh-Dole compliance for universities. I know. This goes against everything you’ve heard. But really, let’s get real. Five points. Bayh-Dole applies to federal agencies and to the scope of patent property rights, not to universities. Bayh-Dole applies … Continue reading →

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