Tag Archives: subcontract

University breach of Bayh-Dole’s standard patent rights clause

Posted on January 13, 2020 by Gerald Barnett

Let’s get at the consequence of two non-Bayh-Dole provisions injected into the standard patent rights clause stipulated by Bayh-Dole: the (f)(2) written agreement requirement and the (g)(1) requirements on subcontracts. In particular, let’s look at what happens when a university … Continue reading →

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Another question on RE: what to do if a subcontractor has a subject invention?–3

Posted on October 9, 2019 by Gerald Barnett

Now for the mess. The standard patent rights clause inserts a provision that’s not authorized by Bayh-Dole and is a screwed up version of an FPR provision. This is the provision for a written agreement in 37 CFR 401.14(f)(2). The contractor agrees … Continue reading →

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Another question on RE: what to do if a subcontractor has a subject invention?–2

Posted on October 8, 2019 by Gerald Barnett

We are working through what to do if a subcontractor under a federal funding agreement for research or development has a subject invention–that is, an invention within the definition set out by Bayh-Dole that the subcontractor has acquired and was … Continue reading →

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Another question on RE: what to do if a subcontractor has a subject invention?–1

Posted on October 7, 2019 by Gerald Barnett

Bother. For the TL;DR crowd, I’ll copy the end to the beginning: What to do if a subcontractor has a subject invention? It’s not yours. It’s theirs. If the subcontractor is a company, then if you have previously negotiated a … 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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Bayh-Dole Basics, 4: contractor comments

Posted on March 7, 2018 by Gerald Barnett

Bayh-Dole defines anyone on the other side of a funding agreement from a federal agency as a contractor.  The term is arbitrary and misleading. Let’s look at both aspects. The standard patent rights clause requires the contractors that host federally … Continue reading →

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