Tag Archives: Bayh-Dole

An invention is not a thing, 8

Posted on October 11, 2019 by Gerald Barnett

The question to ask is not what was intended by Bayh-Dole but rather what ought to be federal policy regarding inventions made in work for which those involved have gone out of their way to apply for federal funding. As … Continue reading →

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An invention is not a thing, 7

Posted on October 11, 2019 by Gerald Barnett

Here we start to get at this problem of an invention not being a thing. The instance of an invention that might get one a patent is not necessarily the instance that one would build as a prototype. Furthermore, the … Continue reading →

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Another question on RE: what to do if a subcontractor has a subject invention?–2

Posted on October 8, 2019 by Gerald Barnett

We are working through what to do if a subcontractor under a federal funding agreement for research or development has a subject invention–that is, an invention within the definition set out by Bayh-Dole that the subcontractor has acquired and was … Continue reading →

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Another question on RE: what to do if a subcontractor has a subject invention?–1

Posted on October 7, 2019 by Gerald Barnett

Bother. For the TL;DR crowd, I’ll copy the end to the beginning: What to do if a subcontractor has a subject invention? It’s not yours. It’s theirs. If the subcontractor is a company, then if you have previously negotiated a … Continue reading →

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Another question on RE: Can Bayh-Dole void an exclusive license?

Posted on October 4, 2019 by Gerald Barnett

Can Bayh-Dole void an exclusive license? Let’s unravel this one. A rewrite– Question: Can a federal agency void an exclusive license under Bayh-Dole’s standard patent rights clause? Answer: Yes. Now some text. The exclusive license voiding has more to it … Continue reading →

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An invention is not a thing, 3: Some university policy definitions of invention

Posted on September 30, 2019 by Gerald Barnett

An invention is not a thing. An invention is a set of practices and objects. Invention is broader than just what’s patentable, as is the case with Bayh-Dole’s definition of invention, which includes stuff that’s not patentable and stuff that … Continue reading →

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An invention is not a thing, 2: The fringe cases and federal policy

Posted on September 28, 2019 by Gerald Barnett

We are working through the logic of Bayh-Dole’s requirements on ownership of inventions made in work receiving federal support. We have made the point that an invention is not a thing–it is a category, a set, a collection of ways … Continue reading →

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An invention is not a thing, 1: the “may be patentable” category

Posted on September 27, 2019 by Gerald Barnett

An invention is not a thing. An invention not a “cotton gin” or a “light bulb,” even though a cotton gin and a light bulb were once inventive. It doesn’t help to use things as proxies for inventions. An invention … 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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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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