Category Archives: Bayh-Dole

Another question on RE: are exclusive license and assignment the same thing?

Posted on April 13, 2021 by Gerald Barnett

Here’s another question on RE: “is an exclusive license of technology and an assignment the same thing?” Answer: yes and no. Let’s talk exclusive license and assignment of inventions rather than technology. An assignment expressly conveys title to an invention. … Continue reading →

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Latker Here, There, and Everywhere in Bayh-Dole

Posted on April 9, 2021 by Gerald Barnett

Norman J. Latker is the architect of present federal patent policy. Let’s work through his resume. It provides a remarkable tale of persistent influence leading to the unenforced, innovation-stagnating, dismal-performance (but it’s all kept secret, by law) Bayh-Dole Act. Latker … Continue reading →

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For Latker, Bayh-Dole wins a political battle over delivery of research to the public

Posted on April 7, 2021 by Gerald Barnett

In February 1974, Norman J. Latker, patent counsel for the NIH, gave a talk in Chicago with the title “Progress Towards a Uniform U.S. Government Patent Policy for Universities and Non-Profit Organizations.” You can find most of it at IP … Continue reading →

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NIST, Bayh-Dole Policy, and Disincentives

Posted on April 5, 2021 by Gerald Barnett

I spent the past two weeks working on comments in response to NIST’s proposed new regulations for Bayh-Dole. I ended up with 73 pages of answers to questions and section-by-section comments, and about 60 pages of outtakes. NIST didn’t make … Continue reading →

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Unenforced, Bayh-Dole enables a federal offer to look the other way on price-gouging

Posted on March 29, 2021 by Gerald Barnett

The government’s failure to use its government license to practice and have practiced (=make, use, and sell) puts undue pressure on march-in to address nonuse and unreasonable use of inventions arising in work receiving federal support. NIST wants to gut … Continue reading →

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Bayh-Dole support for inventors and free competition

Posted on February 28, 2021 by Gerald Barnett

I made this a twitter thread. I’ll post it here as well and work to round it out as I have time. It’s the flip side of being blunt about what happens under Bayh-Dole if an inventor does not assign … Continue reading →

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Being blunt about Bayh-Dole operations, 2

Posted on February 26, 2021 by Gerald Barnett

Under Bayh-Dole, a federal contractor has no special right, and no obligation, to take ownership of inventions arising in federally supported research or development. There is nothing, absolutely nothing, in Bayh-Dole that suggests that Congress had any intention to make … Continue reading →

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Being blunt about Bayh-Dole operations

Posted on February 25, 2021 by Gerald Barnett

Let’s be blunt. If you are a federal contractor and you don’t take/accept ownership of an invention arising in federally supported research or development, you have no Bayh-Dole obligations with regard to that invention. You do not have to get … Continue reading →

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The IPA and Bayh-Dole on nonprofit assignment of subject inventions, 4

Posted on February 18, 2021 by Gerald Barnett

Well, now we can look at Bayh-Dole’s nonprofit assignment provision. It’s in Bayh-Dole’s specification for what must be included in a patent rights clause that runs with any funding agreement with a nonprofit or small business. Here, 35 USC 202(c)(7)(A): … Continue reading →

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The IPA and Bayh-Dole on nonprofit assignment of subject inventions, 3

Posted on February 17, 2021 by Gerald Barnett

We are working through the approaches of the IPA master and Bayh-Dole’s standard patent rights clause to the assignment of inventions by nonprofit organizations. Unlike the IPA, which was a federal master contract made with selected organizations, Bayh-Dole is a … Continue reading →

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