Tag Archives: assignment

More on Can universities assign patents rights under Bayh-Dole?

Posted on September 24, 2019 by Gerald Barnett

35 USC 201(b) makes clear that any assignee of a subject invention becomes a party to the funding agreement–a “contractor” in Bayh-Dole’s definitional usage: The term “funding agreement” means any contract, grant, or cooperative agreement entered into between any Federal agency, other … Continue reading →

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Can universities assign patent rights under Bayh-Dole?

Posted on September 23, 2019 by Gerald Barnett

Another RE search question: “can universities assign patent rights under bayh dole?” Answer. Yes. See 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 the United States without the approval of … Continue reading →

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Oh wow. Implications of Bayh-Dole’s broad scope

Posted on February 15, 2019 by Gerald Barnett

For Bayh-Dole’s preemption to operate “uniformly,” Bayh-Dole’s scope has to be as broad as any federal statutes and executive branch patent policy that claim any federal interest in inventions arising from federally supported research or development. Since those statutes and … Continue reading →

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Federal law on inventions made with federal support, 4

Posted on February 6, 2019 by Gerald Barnett

One cannot read “contractor” in Bayh-Dole and assume that “contractor” only refers to the initial or prime contractor. One must always look to the circumstances of a given contract to determine whether others have been made parties to the funding … Continue reading →

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Federal law on inventions made with federal support, 3

Posted on February 5, 2019 by Gerald Barnett

Now, let’s emphasize a few points. There are at least three ways that a contractor may come to own an invention made with federal support: inventors assign their inventions state law (in some cases, such as Ohio Rev Code 3345.14) … Continue reading →

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Federal law on inventions made with federal support, 2

Posted on February 4, 2019 by Gerald Barnett

Next, we add citations and qualifications to ground this framework. Specialty statutes for specific federal purposes control federal claims of ownership of inventions made under federal contract. See the list of such statutes at 35 USC 210. If a specialty statute … Continue reading →

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Federal law on inventions made with federal support

Posted on February 4, 2019 by Gerald Barnett

First, the brief version: Specialty statutes for specific federal purposes control federal claims of ownership of inventions made under federal contract. The Nixon patent policy as amended by Reagan’s executive order otherwise controls federal claims of ownership of inventions made under … Continue reading →

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The VA gets a bit of Bayh-Dole

Posted on January 20, 2019 by Gerald Barnett

The Department of Veteran’s Affairs produced a template Cooperative Technology (Inventions) Administration Agreement available at a web site called Agreement Sample.  The template is modeled on a CRADA agreement, but instead of research, the agreement concerns the administration of inventions made … Continue reading →

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These are not the investors Congress was looking for

Posted on January 18, 2019 by Gerald Barnett

Universities routinely assign federally funded inventions to companies. They do so under the cover of an exclusive patent license, expecting that they won’t get caught. There are two kinds of exclusive license. In one, a true exclusive license, the licensee … Continue reading →

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Bayh-Dole inventor disclosure summary

Posted on January 16, 2019 by Gerald Barnett

Let’s summarize. Bayh-Dole does not require inventors to disclose inventions arising in federally supported research or development. It’s just not there. Go look. I’ll wait. Bayh-Dole does not require inventors to give up rights to their inventions.  It’s not there. … Continue reading →

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