Tag Archives: written agreement

Being blunt about Bayh-Dole operations, 2

Under Bayh-Dole, a federal contractor has no special right, and no obligation, to take ownership of inventions arising in federally supported research or development. There is nothing, absolutely nothing, in Bayh-Dole that suggests that Congress had any intention to make … Continue reading

Posted in Bayh-Dole, History | Tagged , , , , , | Comments Off on Being blunt about Bayh-Dole operations, 2

Being blunt about Bayh-Dole operations

Let’s be blunt. If you are a federal contractor and you don’t take/accept ownership of an invention arising in federally supported research or development, you have no Bayh-Dole obligations with regard to that invention. You do not have to get … Continue reading

Posted in Bayh-Dole, high priced medicines, Policy | Tagged , , , | Comments Off on Being blunt about Bayh-Dole operations

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

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

Posted in Bayh-Dole | Tagged , , , | Comments Off on University breach of Bayh-Dole’s standard patent rights clause

A non-compliant Bayh-Dole written agreement at Yale-1

Bayh-Dole’s standard patent rights clause introduces a requirement not in Bayh-Dole. 37 CFR 401.14(f)(2) requires contractors to require their employees, other than clerical and non-technical employees, to make a written agreement to protect the government’s interest in subject inventions: The … Continue reading

Posted in Agreements, Bayh-Dole, Policy, Present Assignment | Tagged , , | Comments Off on A non-compliant Bayh-Dole written agreement at Yale-1

9 things Bayh-Dole does not require universities to do, part 3

We have worked through nine things Bayh-Dole does not require. Let’s come back around and work through in detail the disclosure requirement that Bayh-Dole does not require. Bayh-Dole has a disclosure requirement that is to be placed in the default … Continue reading

Posted in Bayh-Dole | Tagged , , | Comments Off on 9 things Bayh-Dole does not require universities to do, part 3

Patent agreements in Federal Procurement Regulations and Bayh-Dole, 2

If we return for a moment to O’Connor’s article–it is a great read for what it aims to do, but for O’Connor’s theme of abstract mistaken assumptions rather than providing a specific account of Latker’s lack of drafting ability–there is … Continue reading

Posted in Bayh-Dole, History, Policy, Sponsored Research, Stanford v Roche | Tagged , , , , , , , | Comments Off on Patent agreements in Federal Procurement Regulations and Bayh-Dole, 2

Patent agreements in Federal Procurement Regulations and Bayh-Dole, 1

Sean O’Connor starts an excellent article that gives a detailed account of history behind the Bayh-Dole Act (“Mistaken Assumptions: the Roots of Stanford v. Roche in Post-War Government Patent Policy“) this way: The Bayh-Dole Act of 1980 was built on a … Continue reading

Posted in Bayh-Dole, History | Tagged , , , , , | Comments Off on Patent agreements in Federal Procurement Regulations and Bayh-Dole, 1

The NIH’s View of Bayh-Dole Compliance, 5

We are working NIH’s not so tasty guidance to participants in its SBIR and STTR programs directed at small businesses. We reach the NIH’s account of the “principal features” of Bayh-Dole, at least with regard to “intellectual property” requirements: Principal … Continue reading

Posted in Bayh-Dole | Tagged , , , , , | Comments Off on The NIH’s View of Bayh-Dole Compliance, 5

NIST smokes Stanford v Roche, 2

Let’s get simple about the NIST rule change on assignment of subject inventions. This requires logic. I’m sorry about that. I know it’s not the Bayh-Dole way. Supreme Court: Bayh-Dole applies only to subject inventions. A subject invention is an … Continue reading

Posted in Bayh-Dole, Stanford v Roche | Tagged , , , , , | Comments Off on NIST smokes Stanford v Roche, 2

Do what you have promised to do: Further consequences of (f)(2)

[Updated with a discussion of NIST’s May 2018 rule change] The (f)(2) requirement in the standard patent rights clause authorized by the Bayh-Dole Act is a requirement for the host university to delegate, to flow down, to subcontract a portion … Continue reading

Posted in Bayh-Dole, Innovation, Policy | Tagged , , , , | Comments Off on Do what you have promised to do: Further consequences of (f)(2)