Category Archives: Bozonet

The better way is no way: background rights, royalty stacking, and double licensing arising from university IP claims

Let’s start blunt. Then extended discussion. Snark as needed. Current university IP policies create a background rights problem that drives away collaborators, makes university-based inventions irrelevant, and makes university dealings with IP default to unreliable. One of the dark problems … Continue reading

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Faculty Strategies for Getting Their IP Back

If you are a faculty member at an American university, you will get a lot of twisted advice from your university technology transfer office about intellectual property, Bayh-Dole, and patent policy. The advice (and descriptions about technology transfer) is mostly … Continue reading

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NIAID botches Bayh-Dole

This will be a bit of a long ride. Buckle up. In 2011, the US Supreme Court ruled in Stanford v Roche that the Bayh-Dole Act does not vest title to inventions made in federally supported work with the nonprofit … Continue reading

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Why the NIH fuss with Moderna over inventorship doesn’t matter, but does

The New York Times ran a story today that Moderna and the NIH are having a spat over inventorship on a patent application covering aspects of the Moderna mRNA vaccine. The N.I.H. had been in talks with Moderna for more … Continue reading

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The VPR Letters, No. 4

Dear Vice Provost for Research, It’s been a while, and I thought I would drop you another note to help you with your management of university-hosted intellectual property. I once was contacted by a vice provost of research at a … Continue reading

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Bayh-Dole Government License–4: Licensing Despite the Government License

We are working through a recent “webinar” panel discussion on Bayh-Dole’s government license. The panelists get the government license wrong in material ways and then concern themselves with scenarios in which the government license as they represent it appears to … Continue reading

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Bayh-Dole Government License–3: Sales and Have Made Paths

We are working through a recent webinar discussion of Bayh-Dole’s government license. First we reviewed the government license–it is “to practice and have practiced.” “Practice” has a long history of meaning “make, use, and sell” in the policy statements from … Continue reading

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Bayh-Dole Government License–2: Misrepresenting the Government License

We have been through the Bayh-Dole government license at 35 USC 202(c)(4) and have reviewed its sources in executive branch patent policy from 1963 to 1975. Bayh-Dole was drafted in 1978-79, so the connection to the definitions and usage in … Continue reading

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More bad Bayh-Dole advice in the wild

Here are “three important questions answered” by a company specializing in Bayh-Dole compliance. (I’m sorry, Nikki. Have your people up their game.) 1) If you report an invention after the 60-day deadline, can the Government take title? Yes, the Government … Continue reading

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How Bayh-Dole Is Intended to Work, circa 1992, Part 3

We are still working through a passage in a law article from 1992 that sets out how Bayh-Dole is intended to work and addresses questions of faculty ownership of inventions. The issue is not with the author of an article … Continue reading

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