Tag Archives: (f)(2)

Going to Eleven on NIST and (f)(2)

Posted on May 6, 2017 by Gerald Barnett

NIST is drafting new rules for the standard patent rights clause authorized by Bayh-Dole. Included in the proposed new provisions is a requirement that contractors require the assignment of inventions to the contractor. This is a bad idea. Besides, it’s … Continue reading →

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Not fixing a hole in Bayh-Dole

Posted on March 14, 2017 by Gerald Barnett

Bayh-Dole does not disturb federal common law with regard to inventions. Inventors supported by federal research funds own their inventions. The Supreme Court made this clear in Stanford v Roche. Bayh-Dole applies to subject inventions only. Subject inventions are patentable inventions … 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 NSF recommends bureaukleptic compliance

Posted on July 29, 2016 by Gerald Barnett

Here’s interesting guidance in a footnote to the current NSF statement of terms and conditions for grants to universities: Footnote 2 offers a “reminder” that universities should adopt a present assignment in “employee assignment agreements.” The idea is that somehow … Continue reading →

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New Mis-Guidance on Bayh-Dole for Universities

Posted on July 28, 2016 by Gerald Barnett

There’s a very nice guide on the internet to managing federal grants, “A Guide to Managing Federal Grants for Colleges and Universities [now behind a paywall, apparently].” The Guide is published by Atlantic Information Services and looks like it was published … Continue reading →

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Subject Patent Exhaustion

Posted on June 6, 2016 by Gerald Barnett

Caltech has just sued Apple for infringement of a patent. The patent in question, “Serial concatenation of interleaved convolutional codes forming turbo-like codes” (US Patent No. 7,116,710) includes this statement of government interest: GOVERNMENT LICENSE RIGHTS The U.S. Government has … Continue reading →

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The path from Bayh-Dole to inventors

Posted on April 10, 2016 by Gerald Barnett

Bayh-Dole is a law of federal contracting for inventions. Let’s work through it, again. 1) Bayh-Dole applies to federal agencies, not to universities. When university administrators say that “Bayh-Dole requires universities to commercialize inventions made with federal funding,” they are twice wrong. First, … Continue reading →

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Do what you have promised to do: Further consequences of (f)(2)

Posted on February 18, 2016 by Gerald Barnett

[Updated with a discussion of NIST’s May 2018 rule change] The (f)(2) requirement in the standard patent rights clause authorized by the Bayh-Dole Act is a requirement for the host university to delegate, to flow down, to subcontract a portion … Continue reading →

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Some Questions from a Future FAQ on Bayh-Dole

Posted on January 14, 2016 by Gerald Barnett

Q. Can a university violate the Bayh-Dole Act? A. No. Bayh-Dole applies to federal agencies. The law requires federal agencies to adopt uniform practices regarding patent rights to inventions in funding agreements. Bayh-Dole (now) authorizes the Department of Commerce to … Continue reading →

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How Bayh-Dole failed to protect faculty inventors (from university administrators)

Posted on September 28, 2015 by Gerald Barnett

[Now with some revisions in the second paragraph that on reflection were worth making.] There are a number of things wrong with the Bayh-Dole Act, such as the lack of accountability for the disposition of privately held patents on inventions … Continue reading →

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