Category Archives: Bayh-Dole

Present Assignment Agreements, the Coming Nightmare for University IP Practice

Posted on February 19, 2012 by Gerald Barnett

This turned out to be a longish essay for a blog environment. It’s not for everyone. It puts together arguments against the idea that present assignments somehow address the Stanford v Roche situation, or situations like it, or are otherwise … Continue reading →

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Stevenson-Wydler Technology Transfer Reporting

Posted on February 19, 2012 by Gerald Barnett

I have written before about technology transfer standards (here and here, for instance), and how the AUTM licensing survey in particular fails to provide useful management information, and in some ways is quite misleading with regard to what is going … Continue reading →

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Stevenson-Wydler and Public Domain

Posted on February 18, 2012 by Gerald Barnett

In working through the agent model anticipated by Bayh-Dole, I was chasing down the citations for each of the possible outcomes.  The one that caught me up, however, was how a subject invention gets to the public domain.  I thought … Continue reading →

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Bayh-Dole Agent Options and IP Archeology

Posted on February 15, 2012 by Gerald Barnett

Here is a brief summary of the flow of control for choice of invention management agent in Bayh-Dole. First Choice: Inventors can choose university Inventors can choose another qualified agent w/university agreement Inventors can choose any agent w/university and w/federal … Continue reading →

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"Present licensing" under Bayh-Dole

Posted on February 13, 2012 by Gerald Barnett

One of the benefits of reading carefully is discovering how a well constructed text makes sense of complex situations.  The implementing regulations for Bayh-Dole are one such text.  It is really something to take the mish-mash that is 35 USC … Continue reading →

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The Agent Choice Genius of Bayh-Dole

Posted on February 11, 2012 by Gerald Barnett

In the past I’ve tried to outline how Bayh-Dole works.  What this means is how the standard patent rights clause in federal funding agreements works.  This in turn requires us to get at why the (f)(2) agreement is so essential. … Continue reading →

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The Double-Cross

Posted on February 11, 2012 by Gerald Barnett

The question has come up:  doesn’t a present assignment approach protect faculty from the conniving tricks of companies that will cheat them out of their rightful royalties to inventions? The answer is no.  It won’t–not as a condition of employment … Continue reading →

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Practical Lessons for University Counsel

Posted on February 6, 2012 by Gerald Barnett

Here’s a typical slide deck (it opens in PowerPoint–sorry non-‘Softies) [now deleted–but here is a similar slide deck, posted at the University of Tennessee at about the same time, by Lakita Cavin, a staff attorney, and displaying similar problems] talking … Continue reading →

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Where’d you go, Ohio?

Posted on January 27, 2012 by Gerald Barnett

I have written previously about the State of Ohio’s effort to frustrate federal invention policy by asserting that public universities in the state own all inventions made in research done in state facilities or by university employees in the scope … Continue reading →

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7 Points on the UC Present Assignment Requirement

Posted on January 17, 2012 by Gerald Barnett

There has been some discussion going on about the recent UC requirement that everyone sign a new patent acknowledgement, this one with a present assignment in it, with the claim that this change is needed to respond to the Stanford … Continue reading →

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