Category Archives: Stanford v Roche

“Government” rights in federally supported inventions, 1

Posted on November 20, 2018 by Gerald Barnett

Bayh-Dole requires federal agencies to use a patent rights clause that includes a provision under which contractors who obtain ownership of a patentable invention made in the performance of work under a federal funding agreement and elect to retain that … Continue reading →

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Patent agreements in Federal Procurement Regulations and Bayh-Dole, 2

Posted on October 18, 2018 by Gerald Barnett

If we return for a moment to O’Connor’s article–it is a great read for what it aims to do, but for O’Connor’s theme of abstract mistaken assumptions rather than providing a specific account of Latker’s lack of drafting ability–there is … Continue reading →

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Invention, subject invention, and the clever scheme of Bayh-Dole

Posted on October 15, 2018 by Gerald Barnett

Here is the definition of invention in the Kennedy executive branch patent policy, 1963 (Section 4(b)): Invention or Invention or discovery–includes any art, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety … Continue reading →

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More Impractical Advice About NIST’s Changes to Bayh-Dole’s Regulations

Posted on September 14, 2018 by Gerald Barnett

NIST–can’t live with them, but law firms sure can. Here’s another law firm popping off about NIST’s recent revisions to Bayh-Dole’s implementing regulations and standard patent rights clause. Keep in mind that NIST’s chief counsel is already on record not … Continue reading →

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Best practices in university invention management, 1

Posted on June 4, 2018 by Gerald Barnett

Things get complicated that don’t have to be complicated when it comes to university ownership of inventions. Administrators make things complicated, then argue for lots of money to pay for the talent to navigate those complications, and then more money … Continue reading →

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Has NIST finally created a foobar standard patent rights clause?

Posted on May 15, 2018 by Gerald Barnett

Words in laws ought to mean something. According to Bayh-Dole’s standard patent rights clause, the initial contractor must require its employees to make a written agreement to establish the government’s rights in subject inventions. But, but, but . . . … Continue reading →

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NIST smokes Stanford v Roche, 2

Posted on May 14, 2018 by Gerald Barnett

Let’s get simple about the NIST rule change on assignment of subject inventions. This requires logic. I’m sorry about that. I know it’s not the Bayh-Dole way. Supreme Court: Bayh-Dole applies only to subject inventions. A subject invention is an … Continue reading →

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NIST smokes Stanford v Roche

Posted on May 9, 2018 by Gerald Barnett

I don’t know what NIST folks were thinking (fortunately). But here’s what may have happened. They may have in fact read Stanford v Roche, but that clearly has not helped them. They are still clueless. Supreme Court: Bayh-Dole applies only … Continue reading →

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University of Connecticut patent practice hash, 4

Posted on March 29, 2018 by Gerald Barnett

So now back to UConn’s patent policy claim. Look at it again: Under Connecticut state law, the University owns all inventions created by employees in the performance of employment with the University or created with University resources or funds administered … Continue reading →

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University of Connecticut patent practice hash, 1

Posted on March 26, 2018 by Gerald Barnett

Let’s work through the University of Connecticut’s intellectual property practice on disclosure and ownership of inventions. We will start in the middle, with a disclosure form–much like a university inventor might do. UConn has an “Innovation Alert” web “portal” that … Continue reading →

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