Tag Archives: nonprofit

Inventors would own more, were it not for noncompliant Bayh-Dole practice

Posted on March 10, 2023 by Gerald Barnett

I saw this tweet this morning: I agree Inventors should own more, but institutions were/are the heart of Bayh-Dole that (arguably) enables IP-driven startups… this is bc many/most PI inventions would go into a black hole without tech transfer officer … Continue reading →

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The consequences of Bayh-Dole non-disclosure of inventions, 3

Posted on October 23, 2019 by Gerald Barnett

Finally, we reach a non-empty consequence of an invention becoming a subject invention, even if not disclosed to the federal agency. This consequence has to do specifically with subject inventions made under the nonprofit patent rights clause. Bayh-Dole stipulates that … Continue reading →

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The consequences of Bayh-Dole non-disclosure of inventions, 1

Posted on October 21, 2019 by Gerald Barnett

If the federal government had the courage to enforce any one thing in Bayh-Dole, it would be the nonprofit assignment and accounting requirements at 35 USC 202(c)(7). The federal government taking title to non-disclosed subject inventions is mostly useless. Let … 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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Oh wow. Implications of Bayh-Dole’s broad scope

Posted on February 15, 2019 by Gerald Barnett

For Bayh-Dole’s preemption to operate “uniformly,” Bayh-Dole’s scope has to be as broad as any federal statutes and executive branch patent policy that claim any federal interest in inventions arising from federally supported research or development. Since those statutes and … Continue reading →

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Subject invention reporting and federal funding agreements

Posted on March 23, 2018 by Gerald Barnett

It would be interesting to see an audit of university invention reporting practices, especially in light of the definition of “funding agreement” and what it means for an invention to be made “in the performance of work under a funding … 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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