Tag Archives: assignment

A little expansion on varieties of exclusive license in university tech transfer

Posted on January 3, 2023 by Gerald Barnett

[I’ve added some additional comments, and some light editing for clarity (I hope)] I expanded a discussion of the odd wording of Bayh-Dole’s 35 USC 204, which restricts the US manufacturing requirement to exclusive licenses “to use or to sell” … Continue reading →

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Bayh-Dole’s anti invention-flipping provision for nonprofits, or where’s that $250B?

Posted on October 1, 2021 by Gerald Barnett

Let’s look at Bayh-Dole’s anti-invention flipping protection of the public, aimed at nonprofits. Here’s the text, at 35 USC 202(c)(7)(A): In the case of a nonprofit organization, (A) a prohibition upon the assignment of rights to a subject invention in … Continue reading →

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Another question on RE: are exclusive license and assignment the same thing?

Posted on April 13, 2021 by Gerald Barnett

Here’s another question on RE: “is an exclusive license of technology and an assignment the same thing?” Answer: yes and no. Let’s talk exclusive license and assignment of inventions rather than technology. An assignment expressly conveys title to an invention. … Continue reading →

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The IPA and Bayh-Dole on nonprofit assignment of subject inventions, 4

Posted on February 18, 2021 by Gerald Barnett

Well, now we can look at Bayh-Dole’s nonprofit assignment provision. It’s in Bayh-Dole’s specification for what must be included in a patent rights clause that runs with any funding agreement with a nonprofit or small business. Here, 35 USC 202(c)(7)(A): … Continue reading →

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The IPA and Bayh-Dole on nonprofit assignment of subject inventions, 1

Posted on February 15, 2021 by Gerald Barnett

Norman Latker, patent counsel at the NIH, drafted Bayh-Dole on the sly, working against HEW policy on inventions to create an easier pathway by which nonprofits could pass exclusive control of inventions made in work receiving NIH funding to the … Continue reading →

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Bayh-Dole march-in won’t change drug prices but other things might–2

Posted on February 12, 2020 by Gerald Barnett

Now let’s look at alternatives to Bayh-Dole’s march-in procedures to address competition, public access, and prevention of unreasonable use, including price gouging. We will consider two within Bayh-Dole and two outside Bayh-Dole. The Bayh-Dole alternatives are: use the government license … Continue reading →

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Bayh-Dole march-in won’t change drug prices but other things might–1

Posted on February 11, 2020 by Gerald Barnett

Folks think that somehow Bayh-Dole permits government take over of pharma patents and by doing this, somehow, the price of drugs will necessarily–magically–go down. Let’s work through this idea. Set aside for a moment that many drugs don’t do much … Continue reading →

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The consequences of Bayh-Dole non-disclosure of inventions, 3

Posted on October 23, 2019 by Gerald Barnett

Finally, we reach a non-empty consequence of an invention becoming a subject invention, even if not disclosed to the federal agency. This consequence has to do specifically with subject inventions made under the nonprofit patent rights clause. Bayh-Dole stipulates that … Continue reading →

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The consequences of Bayh-Dole non-disclosure of inventions, 2

Posted on October 22, 2019 by Gerald Barnett

We are looking at the consequences of a contractor not disclosing a subject invention to the federal agency that funded work in which the invention was made. One consequence is that the federal agency “may receive title” to such an … Continue reading →

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Would you believe still more on Can universities assign patent rights under Bayh-Dole?

Posted on September 25, 2019 by Gerald Barnett

The distinction between exclusive license and assignment also matters in Bayh-Dole practice. Bayh-Dole’s definition of funding agreement at 35 USC 201(b) makes clear that any assignment by a contractor extends the funding agreement–and necessarily the patent rights clause–to the assignee. … Continue reading →

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