Tag Archives: subject invention

Bayh-Dole Basics 5: invention assignment

Posted on March 8, 2018 by Gerald Barnett

Assignment of an invention involves conveying all substantial rights in the invention–the exclusive rights to make, to use, and to sell. These substantial rights can be conveyed expressly by transferring title (that is, the right of ownership) or implicitly by … Continue reading →

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Bayh-Dole basics, 2: subject invention comments

Posted on March 1, 2018 by Gerald Barnett

There are three categories of invention in Bayh-Dole–inventions arising in federally supported research or development, subject inventions, and inventions owned by the federal government. The general scope of Bayh-Dole given in 35 USC 200 is that of “inventions arising in … Continue reading →

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Bayh-Dole Basics, 2: subject invention

Posted on February 28, 2018 by Gerald Barnett

For federal research and development contracts, Bayh-Dole defines a new category of invention in federal patent law, the “subject invention.” A subject invention is an invention that is or may be patentable is owned by a party to a funding … Continue reading →

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You should want to see Bayh-Dole operate as written. Here’s why.

Posted on February 16, 2018 by Gerald Barnett

Let’s start with some Bayh-Dole basics. Bayh-Dole preempts all other statutes but Stevenson-Wydler on matters of federal policy on inventions made in research contracts (35 USC 210). Bayh-Dole is the only authority on the matter. Bayh-Dole requires federal agencies to … Continue reading →

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How Bayh-Dole complicates the definitions in Stevenson-Wydler

Posted on February 15, 2018 by Gerald Barnett

The only law that Bayh-Dole does not expressly supersede is the Stevenson-Wydler Act. It’s worth comparing language in the two laws, as Bayh-Dole draws from Stevenson-Wydler, but then works its own magic. Consider the definition cascade on inventions. Here’s Stevenson-Wydler: … Continue reading →

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Bayh-Dole’s Public Covenant, 5

Posted on January 30, 2018 by Gerald Barnett

The Necessity of Government Action Under Its Non-exclusive Licenses Let’s look at two arguments why the government must act on its licensed rights in subject inventions. The first argument has to do with the rhetoric of Bayh-Dole. If the government … Continue reading →

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Bayh-Dole and Clauses for domestic contracts, 1-9.107-6

Posted on December 26, 2017 by Gerald Barnett

Here’s Bayh-Dole’s definition of “subject invention”: The term “subject invention” means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement: Provided, That in the case of a variety of plant, … Continue reading →

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Assignment of subject inventions, not assignment of patents

Posted on November 22, 2017 by Gerald Barnett

Let’s make something really clear about inventions and patents. Courts have repeatedly held that an assignment of an invention is made when all substantial rights in an invention are conveyed, whether by assignment or exclusive license. The rights to make, … Continue reading →

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Two ways to turn an invention into a subject invention, 1

Posted on November 1, 2017 by Gerald Barnett

[this article refers to Bayh-Dole’s implementing regulations before NIST’s May 2018 changes–37 CFR 401.14(a) becomes 37 CFR 401.14, and NIST adds a goofball assignment clause under which contractors must require inventors to assign subject inventions–inventions that the contractors already own. … Continue reading →

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University of Misery’s IP Policy Scam, 15

Posted on October 25, 2017 by Gerald Barnett

In Bayh-Dole, the definition of “subject invention” is not a matter of defining a term in a federal contract. Bayh-Dole is part of federal patent law, so “subject invention” is a definition of patent law. A subject invention is a … Continue reading →

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