Tag Archives: assignment

The Biddle Report’s Perfectly Fine Assumptions

Posted on January 5, 2018 by Gerald Barnett

From time to time, I revisit territory. I wrote about this issue almost two years ago, now. I provide here a different angle that gets at the same point. Here’s Sean O’Connor proposing that a flawed assumption in the U.S. … Continue reading →

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Assignment of subject inventions, not assignment of patents

Posted on November 22, 2017 by Gerald Barnett

Let’s make something really clear about inventions and patents. Courts have repeatedly held that an assignment of an invention is made when all substantial rights in an invention are conveyed, whether by assignment or exclusive license. The rights to make, … Continue reading →

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Two ways to turn an invention into a subject invention, 1

Posted on November 1, 2017 by Gerald Barnett

[this article refers to Bayh-Dole’s implementing regulations before NIST’s May 2018 changes–37 CFR 401.14(a) becomes 37 CFR 401.14, and NIST adds a goofball assignment clause under which contractors must require inventors to assign subject inventions–inventions that the contractors already own. … Continue reading →

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The sound and fury of nonprofit assignments of subject inventions

Posted on May 7, 2017 by Gerald Barnett

Over the past few months I have returned the issue of exclusive licenses and assignments in Bayh-Dole. Here’s the operative requirement for nonprofits (35 USC 202(c)(7)(A)): (7) In the case of a nonprofit organization, (A) a prohibition upon the assignment of … Continue reading →

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Exclusive License and Assignment

Posted on March 20, 2017 by Gerald Barnett

I have discussed in a number of articles the issue of exclusive license and assignment for inventions. The distinction matters under Bayh-Dole because Bayh-Dole’s standard patent rights clause (37 CFR 401.14(a)(k)(1)) forbids nonprofit contractors from assigning subject inventions other than to … Continue reading →

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Negotiating a share of royalties under Bayh-Dole

Posted on February 8, 2017 by Gerald Barnett

[See the afterthought for something shorter and blunt and just as useless.] In his amicus brief to the Supreme Court in the Stanford v Roche case, former Senator Birch Bayh made an odd claim–that inventors had the right to negotiate … Continue reading →

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Exclusive licenses, assignments, and ticks, Part 1

Posted on January 30, 2017 by Gerald Barnett

Washington University (in St. Louis) uses a template exclusive license agreement that makes the typical extension to assignment–it grants exclusive rights in making, using, and selling, adds the right to sublicense, and gives the licensee first crack at enforcing the … Continue reading →

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Five Audit Issues for University Compliance with Bayh-Dole

Posted on October 10, 2016 by Gerald Barnett

While most discussions about Bayh-Dole compliance focus on the time periods for reporting inventions, filing patent applications, and giving notice of election to retain title, the compliance issues that matter are often overlooked. The top five involve ownership, money, and … Continue reading →

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The First Principle of Bayh-Dole

Posted on February 17, 2016 by Gerald Barnett

Here is the First Principle of Bayh-Dole: A federal agency may not require the assignment to the federal government of an invention made with federal support at a nonprofit or small business if an inventor or the inventor’s assignee reports … Continue reading →

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Finding the True Intent

Posted on January 25, 2013 by Gerald Barnett

I have been mulling over this sequence of statements from the court in the case of Shaw v. The Regents of the University of California: The true intent of a contracting party is irrelevant if it remains unexpressed. When a … Continue reading →

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