NIST published a Green Paper that evidences its confusion with various aspects of Bayh-Dole. One of these areas of confusion involves the government license that Bayh-Dole requires in all federal research contracts, and in particular in the standard patent rights clause for nonprofits and small business contractors. At the 2020 AUTM national conference, Fuentek hosted a session on the topic of the government license and has posted a “webinar” of their session, “Government Use of Federally Funded IP: Not as Simple as You Think.” The session is worth the listen because it gives a good insight into the level of thinking taking place in university and government settings with regard to Bayh-Dole, the use of the patent system, and the quality of licensing. The webinar is presently here. And the slides are here. The NIST Green Paper is here.
Let’s start by looking at Bayh-Dole and get clear on things. It’s not that difficult. The government license is to make, use, and sell, and have others do so as well for the government. The license operates without formalities whenever a contractor elects to retain title. The license extends to any federal agreements with other countries if the funding agreement so provides. Continue reading