Category Archives: Present Assignment

The NSF recommends bureaukleptic compliance

Posted on July 29, 2016 by Gerald Barnett

Here’s interesting guidance in a footnote to the current NSF statement of terms and conditions for grants to universities: Footnote 2 offers a “reminder” that universities should adopt a present assignment in “employee assignment agreements.” The idea is that somehow … Continue reading →

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When to disclose inventions? Part I. Arizona State

Posted on May 9, 2016 by Gerald Barnett

Here is a basic question: When should university-based inventors disclose their inventions to the university administration? This is a remarkably difficult question. Is it when the invention is “made”? If so, what does it mean to “make” an invention? What … Continue reading →

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NASA Turns Bayh-Dole Into a Vesting Statute

Posted on April 10, 2016 by Gerald Barnett

The US Supreme Court in Stanford v Roche ruled that Bayh-Dole was not a “vesting statute”–the law did not place ownership of patentable inventions made with federal support with the universities that hosted the research: Stanford contends that reading the … Continue reading →

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The University of Michigan’s Mess of a Copyright Policy, Part III

Posted on March 6, 2016 by Gerald Barnett

Part I of this series looked at the University of Michigan 1944 patent policy and its transmogrified afterlife as Regents Bylaw 3.10, and the strange Supplemental Appointment Information invention present assignment document that claims to derive from Bylaw 3.10. Part … Continue reading →

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The University of Michigan’s Mess of a Present Assignment, Part I

Posted on March 2, 2016 by Gerald Barnett

In reviewing university IP policies, I came upon the following Form HR36100 at the University of Michigan titled “Supplemental Appointment Information.” After a section in which the appointee provides name and social security number, we have this: It is apparent that university … Continue reading →

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Some Questions from a Future FAQ on Bayh-Dole

Posted on January 14, 2016 by Gerald Barnett

Q. Can a university violate the Bayh-Dole Act? A. No. Bayh-Dole applies to federal agencies. The law requires federal agencies to adopt uniform practices regarding patent rights to inventions in funding agreements. Bayh-Dole (now) authorizes the Department of Commerce to … Continue reading →

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Bayh-Dole was written for the research foundations. Pity for us all that it didn’t work out.

Posted on October 1, 2015 by Gerald Barnett

After I wrote the previous article, it struck me that the origins of Bayh-Dole really are with the affiliated research foundations trying to license patents to industry, not with the universities, and not even with Research Corporation (which remained neutral … Continue reading →

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How Bayh-Dole failed to protect faculty inventors (from university administrators)

Posted on September 28, 2015 by Gerald Barnett

[Now with some revisions in the second paragraph that on reflection were worth making.] There are a number of things wrong with the Bayh-Dole Act, such as the lack of accountability for the disposition of privately held patents on inventions … Continue reading →

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The Legal Context of University IP, Part 2 Revisited

Posted on September 14, 2015 by Gerald Barnett

In 2010, the National Academies and the National Research Council published a commissioned a report–The Legal Context of University Intellectual Property and Technology Transfer by Sean O’Connor, Gregory D. Graff, and David E. Winickoff. Here are comments on the findings of … Continue reading →

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The Legal Context of University IP, Part 1 Revisited

Posted on September 14, 2015 by Gerald Barnett

In 2010, the National Academies and the National Research Council published a commissioned a report–The Legal Context of University Intellectual Property and Technology Transfer by Sean O’Connor, Gregory D. Graff, and David E. Winickoff. The report lists 45 findings and expands … Continue reading →

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