Tag Archives: subject invention

The IPA and Wisconsin’s 1969 Patent Policy, 5

Posted on May 19, 2017 by Gerald Barnett

Start here: The IPA and Wisconsin’s 1969 Patent Policy, 1 The new 1969 Wisconsin patent policy broadens the scope of the university’s interest in patents yet further: Here is the Wisconsin IPA definition of “subject invention”: Both elements are essential … 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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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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Bayh-Dole Secrecy, Part 1

Posted on March 10, 2017 by Gerald Barnett

Bayh-Dole makes information about the use of subject inventions a federal secret. Or, more accurately, Bayh-Dole excludes subject invention use information from disclosure under the Federal Freedom of Information Act (FOIA). Or, yet more accurately, Bayh-Dole requires federal agencies to … Continue reading →

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Government Interest Patent Activity 1976 to 2016, Part 3

Posted on February 24, 2017 by Gerald Barnett

With this context, let’s return to our patent activity graphs. University and nonprofit patents with a government interest have grown from 10% of all patents citing a government interest to over 50%. This level of activity leveled off around 1998 … 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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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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NASA Turns Bayh-Dole Into a Vesting Statute

Posted on April 10, 2016 by Gerald Barnett

The US Supreme Court in Stanford v Roche ruled that Bayh-Dole was not a “vesting statute”–the law did not place ownership of patentable inventions made with federal support with the universities that hosted the research: Stanford contends that reading the … Continue reading →

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Bayh-Dole Flow Down

Posted on February 17, 2016 by Gerald Barnett

Every so often I make an effort to show graphically how Bayh-Dole operates. The Bayh-Dole Act authorizes (arrow 1) the Department of Commerce to create regulations governing the disposition of patentable inventions made in the performance of work supported by … Continue reading →

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