Tag Archives: disclosure

“Promote” in Bayh-Dole, 4

In arguing in Public Citizen v NIH that secret exclusive deals were the only way the NIH could fulfill its public mission–or at least the mission of its patent licensing office–the NIH produced some interesting metrics. In 2000, the NIH … Continue reading

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Bayh-Dole Basics, 7: Disclosure comments, 4

Though it’s rather useless to do so, let’s consider then the steps required by a Bayh-Dole compliant disclosure. I say it’s useless because no one complies with Bayh-Dole and federal agencies don’t care. The law doesn’t operate but enables something … Continue reading

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Bayh-Dole Basics, 7: Disclosure comments, 3

We are considering disclosure under Bayh-Dole. You may have thought that every invention made with anything like federal support must be disclosed. That you now know is not true. Under Bayh-Dole, inventors have no obligation to disclose anything, though they … Continue reading

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Bayh-Dole Basics, 7: Disclosure comments, 2

We are working through the details of Bayh-Dole’s requirement that all subject inventions must be disclosed. What are subject inventions? What is the scope of a funding agreement? Who must disclose? What is the nature of the disclosure? Good questions, … Continue reading

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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

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Bayh-Dole Basics, 7: Disclosure

The Bayh-Dole Act requires contractors who acquire title to an invention made in the performance of work under a federal funding agreement to disclose that invention to the federal government. Here’s 35 USC 202(c)(1), specifying one condition among others that … Continue reading

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University of Connecticut patent practice hash, 2

The definition of subject invention in federal funding agreements is not a matter of university administrator preference. Either an invention meets the definition of subject invention or it doesn’t. The administrator’s job is to gather the documentation that provides the … Continue reading

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Penn State’s Protection Racket, 14: Assignment and Present Assignment

Here’s Penn State’s current IP Agreement’s sort-of assignment clause: In so agreeing, I especially acknowledge my responsibilities: (1) to assign and do hereby assign to the University (or its designee) all rights which I have or may acquire in inventions, … Continue reading

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The IPA and Wisconsin’s 1969 Patent Policy, 2

This article starts here: The IPA and Wisconsin’s 1969 Patent Policy, 1 In the new 1969 Wisconsin patent policy, we encounter a corporate agent and the passive voice: “it has become necessary for the University to scrutinize with care the … Continue reading

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University of California’s Office of the President self-servingly misrepresents Bayh-Dole

[TL;DR UC gets Bayh-Dole wrong, ignores the Stanford v Roche decision, makes it appear that UC has a right to take title to inventions, when it doesn’t. UC denies inventors their rights to invention under the color of law, a … Continue reading

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