Tag Archives: assignment

What has NIST done, actually?-1

Posted on May 2, 2018 by Gerald Barnett

NIST has made an attempt to turn Bayh-Dole into a vesting statute. From all appearances, that is what a casual reader would think has happened with NIST’s new subject invention assignment language. With help from inept (if not complicit) university … Continue reading →

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Guide to Bayh-Dole by the Layers, 4

Posted on April 19, 2018 by Gerald Barnett

Fourth layer: Funding agreements We have looked at Bayh-Dole the statute, the implementing regulations, and the standard patent rights clauses. These are all apparatus that are disconnected from contractors and inventors–just laws and regulations and templates. The apparatus gets connected … Continue reading →

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NIST makes Bayh-Dole a vesting statute

Posted on April 12, 2018 by Gerald Barnett

NIST has issued its final rule on Bayh-Dole and disregards the Supreme Court on the ownership of subject inventions. The Supreme Court was clear that Bayh-Dole’s definition of subject invention means that an invention must be “owned by the contractor” to … Continue reading →

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Nonprofit assignment of subject inventions in the standard patent rights clause 37 CFR 401.14(a)(k)(1)

Posted on March 20, 2018 by Gerald Barnett

[As of May 14, 2018, NIST has relettered things so the reference is now 37 CFR 401.14(k)(1)–there cannot be multiple standard patent rights clauses anymore–just one big honking one with a maze of conditionals.] Universities ubiquitously claim as a matter … Continue reading →

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Xtandi demonstrates how Bayh-Dole is a do WTF you want law, 1

Posted on March 14, 2018 by Gerald Barnett

There is a big divide regarding what Bayh-Dole was supposed to accomplish with regard to the use of patents on publicly funded research. On one side is the view that publicly supported research should be freely or otherwise reasonably available … Continue reading →

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Bayh-Dole Basics, 5: invention assignment comments

Posted on March 9, 2018 by Gerald Barnett

Here is a basic distinction. Bayh-Dole prohibits nonprofits from assigning subject inventions except to an invention management organization or with the approval of the federal agency–and then only if the assignee accepts the nonprofit patent rights clause. Bayh-Dole says nothing … Continue reading →

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Bayh-Dole Basics 5: invention assignment

Posted on March 8, 2018 by Gerald Barnett

Assignment of an invention involves conveying all substantial rights in the invention–the exclusive rights to make, to use, and to sell. These substantial rights can be conveyed expressly by transferring title (that is, the right of ownership) or implicitly by … Continue reading →

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Bayh-Dole basics, 2: subject invention comments

Posted on March 1, 2018 by Gerald Barnett

There are three categories of invention in Bayh-Dole–inventions arising in federally supported research or development, subject inventions, and inventions owned by the federal government. The general scope of Bayh-Dole given in 35 USC 200 is that of “inventions arising in … Continue reading →

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You should want to see Bayh-Dole operate as written. Here’s why.

Posted on February 16, 2018 by Gerald Barnett

Let’s start with some Bayh-Dole basics. Bayh-Dole preempts all other statutes but Stevenson-Wydler on matters of federal policy on inventions made in research contracts (35 USC 210). Bayh-Dole is the only authority on the matter. Bayh-Dole requires federal agencies to … Continue reading →

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University of Utah’s Mount Stupid Disclosure Claim, 3

Posted on February 8, 2018 by Gerald Barnett

Now let’s look at what the University of Utah requires by way of assignment. My snark controls have apparently failed. I will try to line out at least some of the snark. Here is a link to the template Assignment … Continue reading →

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