Search the RE article base
Contact Information
Twitter
My TweetsUseful Web Sites
Tag Archives: assignment
NIST’s Explanation of the Addition of an Assignment Requirement
NIST added an assignment requirement to the standard patent rights clause authorized by Bayh-Dole. There’s no authority in Bayh-Dole, however, for an assignment requirement. The Supreme Court in Stanford v Roche made clear that Bayh-Dole does not vest ownership, does … Continue reading
Posted in Bayh-Dole
Tagged assignment, Bayh-Dole, NIST, subject invention
Comments Off on NIST’s Explanation of the Addition of an Assignment Requirement
Does Bayh-Dole Require a Written Assignment?
Does Bayh-Dole require a written assignment? No. But Bayh-Dole is screwy. I’ll elaborate. Look all you want, there’s no assignment requirement in Bayh-Dole. Heck, the Supreme Court looked for an assignment requirement and couldn’t find it. Here’s how the majority … Continue reading
Posted in Bayh-Dole
Tagged 35 USC 202(a), 37 CFR 401.9, assignment, Bayh-Dole
Comments Off on Does Bayh-Dole Require a Written Assignment?
Bayh-Dole’s “subject invention” botch of the Federal Procurement Regulations, 1
Bayh-Dole botches its management of invention ownership. To see how, we need to look at how Bayh-Dole in 1980 changed the Federal Procurement Regulation put in place in 1975. In particular, let’s look at how the definition of subject invention … Continue reading
Posted in Bayh-Dole, Bozonet
Tagged 41 CFR 9-1, assignment, Bayh-Dole, botch, equitable title, Federal Procurement Regulations, of the contractor, subject invention
Comments Off on Bayh-Dole’s “subject invention” botch of the Federal Procurement Regulations, 1
Five easy ways to circumvent Bayh-Dole’s “manufactured substantially” requirement
Bayh-Dole makes American manufacture of product based on subject inventions the centerpiece of the law. Bayh-Dole’s statement of policy and objective calls out promotion of inventions “made in the United States by United States industry and labor” (35 USC 200). … Continue reading
Posted in Bayh-Dole
Tagged 204, assignment, Bayh-Dole, exclusive license, manufactured substantially, sole license
Comments Off on Five easy ways to circumvent Bayh-Dole’s “manufactured substantially” requirement
Patent agreements in Federal Procurement Regulations and Bayh-Dole, 2
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
Posted in Bayh-Dole, History, Policy, Sponsored Research, Stanford v Roche
Tagged assignment, Bayh-Dole, Federal Procurement Regulations, Latker, O'Connor, patent agreement, sly, written agreement
Comments Off on Patent agreements in Federal Procurement Regulations and Bayh-Dole, 2
Bayh-Dole Basics, 7: Disclosure comments, 1
This will be longish. For the brief of heart, here’s a synopsis. Invention disclosure is the heart of Bayh-Dole standard patent rights compliance. Disclosure is not reporting that an invention exists. Disclosure means providing, for an invention owned by a … Continue reading
Posted in Bayh-Dole
Tagged assignment, Bayh-Dole, development, disclosure, practical application, research
Comments Off on Bayh-Dole Basics, 7: Disclosure comments, 1
Best practices in university invention management, 7
Let’s have a look, then, at the invention assignment agreement that ipHandbook recommends that universities should use with their faculty. We start with the “consideration”: In consideration of the sum of One Dollar ($1.00) and: my past, present, and/or future … Continue reading
Posted in Agreements, Policy, Present Assignment
Tagged agreement, assignment, IAA, invention, model agreement
Comments Off on Best practices in university invention management, 7
Has NIST finally created a foobar standard patent rights clause?
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
Posted in Bayh-Dole, Stanford v Roche
Tagged assignment, Bayh-Dole, new rule, NIST
Comments Off on Has NIST finally created a foobar standard patent rights clause?
What has NIST done, actually?-3
The start of this article is here. We have been working through what NIST’s introduction of an assignment requirement for subject inventions actually does. In one view, nothing. In another, a technical if not prissy requirement that inventions a contractor … Continue reading
Posted in Bayh-Dole
Tagged antipattern, assignment, equitable ownership, Moloch, NIST
Comments Off on What has NIST done, actually?-3
What has NIST done, actually?-2
Let’s work through what NIST has done with its new rule on assignment of subject inventions by written agreement. The Supreme Court in Stanford v Roche (2011) ruled that Bayh-Dole’s contracting provisions apply only to subject inventions, and that subject inventions … Continue reading
Posted in Bayh-Dole
Tagged (f)(2), assignment, Bayh-Dole, equitable claim, NIST, service invention, Stanford v Roche
Comments Off on What has NIST done, actually?-2