Category Archives: Bayh-Dole

Key Concept 5: Public Covenant

Posted on July 10, 2017 by Gerald Barnett

A Limitation on a Patent Property  A patent public covenant is a restriction or obligation that runs with a patent property, creating requirements not arising otherwise from federal patent law. The expectation of such a covenant is that the restriction … Continue reading →

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The Special Case Keeps Giving

Posted on July 8, 2017 by Gerald Barnett

Here is the special case university research invention. I have expanded it to show the logic. A special case invention is one that cannot be used without “development” and the “development” involves substantial effort at private expense and the “development” … Continue reading →

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What Universities Don’t Report Under Bayh-Dole, But Ought To

Posted on July 7, 2017 by Gerald Barnett

Here’s the reporting requirement in Stevenson-Wydler for federal agencies operating technology transfer programs under Bayh-Dole (35 USC 207, 209). I’ll make some comments in between portions of the text: (A) an explanation of the agency’s technology transfer program for the … Continue reading →

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What should the federal government do with patents it issues to itself? Part 4

Posted on July 6, 2017 by Gerald Barnett

The question of who ought to control inventions made by independent investigators is at the root of Bayh-Dole. Without federal funding, such investigators would give up rights in inventions only according to their own interests. They would be free of … Continue reading →

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What should the federal government do with patents it issues to itself? Part 3

Posted on July 5, 2017 by Gerald Barnett

Here is one of the most provocative parts of Vannevar Bush’s Science the Endless Frontier: Science Is a Proper Concern of Government It has been basic United States policy that Government should foster the opening of new frontiers. It opened … Continue reading →

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The NIH’s View of Bayh-Dole Compliance

Posted on July 1, 2017 by Gerald Barnett

In 2015, Ann Hammersla gave a talk at an NIH Regional Seminar that includes a discussion of Bayh-Dole. There are numerous problems with Hammersla’s treatment of Bayh-Dole, but we’ll leave most of those for the attentive reader to pick through. … Continue reading →

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The Poetry of Aspirational IP Systems

Posted on June 30, 2017 by Gerald Barnett

In 2015, Ann Hammersla, once a senior university licensing officer and now working for the NIH, gave a talk at an NIH Regional Seminar on Program Funding and Grants Administration–“Inventions, Data Sharing, Reports to NIH, and other Intellectual Property Considerations.” … 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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