Tag Archives: standard patent rights clause

Bayh-Dole Adds Bureaucracy, 1: Conditional Preemption

Bayh-Dole conditionally preempts federal statutes pertaining to the ownership of inventions made with federal support (35 USC 210(a)). If a party to a federal funding agreement acquires ownership of such an invention–a subject invention–then Bayh-Dole conditions, as conveyed through that … Continue reading

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Bayh-Dole for university faculty

Let’s put Bayh-Dole plainly for university faculty. Under federal patent law, inventors own their inventions. Federal patent law does not require inventors to use the patent system. Federal patent law does not require inventors to assign their inventions. Bayh-Dole is … Continue reading

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Bayh-Dole applies only to subject inventions

Bayh-Dole has three parts–a contracting part, a federal licensing part, and a general part. The general part includes 35 USC 200 (statement of policy and objectives), 35 USC 210 (precedence and general requirements), and 35 USC 211 (antitrust). When people … Continue reading

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Two ways to turn an invention into a subject invention, 2

The complicated (f)(2) approach Now consider the complicated approach under (f)(2). The university has to somehow compel inventors to assign all inventions to the university, even though (f)(2) requires the university to require inventors to promise to establish the government’s … Continue reading

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The path from Bayh-Dole to inventors

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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