Category Archives: Stanford v Roche

There never was a promise to assign

Posted on August 25, 2016 by Gerald Barnett

When Stanford in its litigation against Roche appealed to the U.S. Supreme Court, it included in its petition for certiorari a declaration by Luis Mejia, the licensing manager responsible for filing the patents and offering an exclusive license to Roche. … Continue reading →

Posted in Bayh-Dole, Present Assignment, Stanford v Roche | Comments Off on There never was a promise to assign

Faux Bayh-Dole and Stanford v Roche

Posted on August 24, 2016 by Gerald Barnett

I have been tracing the history of two versions of Bayh-Dole. One version is based in the law as written and reflected in the implementing regulations and the standard patent rights clause. The second version shows up immediately after the … Continue reading →

Posted in Bayh-Dole, Stanford v Roche | Comments Off on Faux Bayh-Dole and Stanford v Roche

Wisconsin continues to defy the US Supreme Court, five years on

Posted on August 15, 2016 by Gerald Barnett

Here is an excerpt from the University of Wisconsin’s current patent policy regarding the Bayh-Dole Act, under the heading “Federal Agreements”: In order to expand public use of inventions and in recognition of the need for establishing government-wide policies for the … Continue reading →

Posted in Bayh-Dole, Bozonet, Policy, Stanford v Roche | Comments Off on Wisconsin continues to defy the US Supreme Court, five years on

Stanford v Roche was not about how to make Bayh-Dole into a vesting statute

Posted on August 1, 2016 by Gerald Barnett

The Stanford v Roche decision was not at all about the proper technical steps to make Bayh-Dole into a vesting statute. Even the Court’s minority opinion–what the lawyer-krakkens fixated on–was a musing on whether there should be any difference in the equitable ownership of an … Continue reading →

Posted in Bayh-Dole, Stanford v Roche | Tagged , , , , | Comments Off on Stanford v Roche was not about how to make Bayh-Dole into a vesting statute

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 →

Posted in Bayh-Dole, Policy, Present Assignment, Sponsored Research, Stanford v Roche | Tagged , , | Comments Off on The NSF recommends bureaukleptic compliance

From provider to predator: University of Texas patent policy, Part 3

Posted on June 4, 2016 by Gerald Barnett

In Part 2 of this series I compared the preambles of the 1977 and 1988 versions of the University of Texas System patent-cum-intellectual property policies. The 1946 policy was so straightforward that it did not need a preamble. It was … Continue reading →

Posted in Bayh-Dole, Bozonet, History, Policy, Stanford v Roche | 2 Comments

Was Bayh-Dole based on a misconception?

Posted on April 14, 2016 by Gerald Barnett

In an article published in 2013, Sean O’Connor argues that Bayh-Dole is the descendant of what he calls “the Biddle Report,” produced in 1947 by Assistant Attorney General John F. Sonnett (with final editing done by David Lloyd Kreeger) in … Continue reading →

Posted in Bayh-Dole, History, Policy, Sponsored Research, Stanford v Roche | Tagged , , , , | Comments Off on Was Bayh-Dole based on a misconception?

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 →

Posted in Bayh-Dole, Policy, Present Assignment, Stanford v Roche | Tagged , , , , | Comments Off on NASA Turns Bayh-Dole Into a Vesting Statute

Florida Atlantic’s patent policy misrepresents Bayh-Dole four ways in just one sentence

Posted on February 15, 2016 by Gerald Barnett

I have been working on some ideas regarding scope, but each time I go to university patent policies to illustrate the issues, I find totally crazy stuff. Here’s a bit from the “General Comments” section of Florida Atlantic University’s patent policy [the … Continue reading →

Posted in Bayh-Dole, Policy, Stanford v Roche | Comments Off on Florida Atlantic’s patent policy misrepresents Bayh-Dole four ways in just one sentence

Life in the fast lane surely make you lose your infringement case

Posted on February 11, 2016 by Gerald Barnett

Here is a simple question: Can a university sue for infringement of a patent on a subject invention? Clearly, one answer is “of course”–universities do so all the time, often playing the troll or the jilted lover. Let’s put the question another way: Does … Continue reading →

Posted in Agreements, Bayh-Dole, Litigation, Policy, Stanford v Roche | Comments Off on Life in the fast lane surely make you lose your infringement case