Tag Archives: Bayh-Dole

NIST’s Chief Counsel on Bayh-Dole, 4

Posted on April 30, 2018 by Gerald Barnett

One last slide from NIST’s chief counsel’s talk from 2013. Much to discuss. How to unwind this assertion? The Bayh-Dole Act requires federal agencies to use an arbitrary default patent rights clause. In the absence of Bayh-Dole, executive branch patent … Continue reading →

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NIST’s Chief Counsel on Bayh-Dole, 3

Posted on April 27, 2018 by Gerald Barnett

NIST’s chief counsel gives, let us say, a unhelpful representation of the law. Let’s continue with his second slide titled “Bayh-Dole Highlights.” The government does not “retain” a license. The government is entitled to receive that license. The law uses … Continue reading →

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NIST’s Chief Counsel on Bayh-Dole, 2

Posted on April 26, 2018 by Gerald Barnett

As further evidence that NIST’s chief counsel does not properly describe Bayh-Dole, consider this point in his first slide of Bayh-Dole “highlights”: This point is accurate only in an obscure technical sense. Bayh-Dole does not preclude a contractor, having obtained … Continue reading →

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NIST’s Chief Counsel on Bayh-Dole, 1

Posted on April 25, 2018 by Gerald Barnett

In 2011, the Supreme Court provided a clear interpretation of the Bayh-Dole Act in Stanford v Roche. Bayh-Dole applies only to subject inventions. A subject invention is a patentable invention made in work funded by the federal government and owned … Continue reading →

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Guide to Bayh-Dole by the Layers, 7

Posted on April 24, 2018 by Gerald Barnett

Eighth layer: Outcomes We reach the eighth and final layer of Bayh-Dole: outcomes. We can consider four elements of outcomes: activity, cost, practical application, and the effects of patent monopoly exclusion on such things as research, rapid industry and professional … Continue reading →

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Guide to Bayh-Dole by the Layers, 6

Posted on April 23, 2018 by Gerald Barnett

Sixth layer: Government rights Seventh layer: Enforcement of patent rights clauses We must also consider the flip side of contractor non-compliance with Bayh-Dole’s standard patent rights clause–federal agency enforcement of the patent rights clauses, waiver of these clauses, and federal … Continue reading →

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Guide to Bayh-Dole by the Layers, 5

Posted on April 20, 2018 by Gerald Barnett

Fifth Layer: practice On to the next layer of Bayh-Dole, actual practice. We will restrict our discussion here to university practice, but things are much the same for other nonprofits. Small business practice has its own peculiarities, including the oddness … 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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Guide to Bayh-Dole by the Layers, 3

Posted on April 18, 2018 by Gerald Barnett

[The default patent rights clause authorized by Bayh-Dole is the inventor patent rights clause at 37 CFR 401.9, a subset of 37 CFR 401.14. The default is enabled when contractors comply with 37 CFR 401.14(f)(2)–except they never do. Under the … Continue reading →

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Guide to Bayh-Dole by the Layers, 2

Posted on April 17, 2018 by Gerald Barnett

Second Layer: Regulations Third Layer: Patent rights clauses The second layer of Bayh-Dole involves the implementing regulations. We will consider only those that have to do with the contracting section, 202-204. These regulations are found at 37 CFR part 401. … Continue reading →

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