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Posts Tagged ‘Bayh Dole Act’

Stanford University v. Roche Molecular Systems, Inc.’s Impact on Government Contracts

by Jesse Erlich

A decision by the Supreme Court of the United States on June 6, 2011 has a great impact on the interpretation of the Bayh Dole Act as well as assignment of contracts relating not just to the Bayh Dole Act but to assignments in general. The case, Board of Trustees of the Leland Stanford Junior University v. roche Molecular Systems, Inc., et al., is of particular interest because the assignment of inventions has an impact on contractor relations with the government. Without an assignment of rights by the inventor to the contractor or subcontractor, the contractor or subcontractor cannot grant to the government rights that the government may have in an invention funded by the government, more specifically the confirmatory license discussed in Protecting Your IP Under Government Contracts, Part 1.

This decision points out that the Bayh Dole Act does not automatically vest title to the contractor in federally funded inventions. Title or ownership belongs to the inventor unless the inventor assigns his or her title by contract to another individual or company. The Bayh Dole Act specifically recites that the contractor in federally funded inventions may elect to retain title to any subject invention; that is an invention that has either been conceived or actually reduced to practice under the federal contract. Read the rest of this entry »

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Obtaining Rights to Inventions Under a Government Contract

by Jesse Erlich

If the contractor or subcontractor of a government contract elects to retain title to a subject invention, there are requirements that the contractor must meet. A few of the more important requirements for obtaining rights to inventions under government contracts are as follows:

  1. Identify publications, offers for sale and public use of the subject invention.
  2. Require employees (other than clerical or non-technical) by written agreement to disclose promptly in writing to personnel identified as responsible for the administration of patent matters each subject invention made under the contract in order that the contractor can comply with the appropriate disclosure provisions. The contractor must also execute all papers necessary to file provisional or patent applications on subject inventions and to establish the government’s rights in the subject inventions.
  3. Notify the contracting officer of a decision not to file a provisional or non-provisional patent application on the subject invention, not to continue prosecution of a patent application, not to pay a maintenance fee on an issued patent, or defend re-examination or an opposition proceeding on a patent in any country, not less than 30 days before expiration of such a response or filing period.
  4. Execute and promptly deliver to the contracting federal agency all instruments necessary to establish or confirm the rights the government has throughout the world in those subject inventions to which the contractor elects to retain title.
  5. Convey title to the contracting agency (U.S. Government) if the contractor or subcontractor does not elect to take title or does not fulfill the relevant requirements above when requested by the government, to enable the government to obtain patent protection throughout the world in that subject invention.
  6. Include in the specification of a provisional or non-provisional application the statement: “This invention was made with Government support under (identify the contract) awarded by (identify the agency). The Government has certain rights in the invention.”

In addition, when dealing with a government contract the contractor agrees that neither it nor any assignee will grant any person exclusive right to use or sell the subject invention unless such person agrees to manufacture substantially in the United States. Since many components cannot be manufactured within the United States, it is possible for the contractor to obtain a waiver from the government to such a manufacturing provision.

In my next post I will review Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., et al., a case that was particularly impactful on the interpretation of the Bayh Dole Act and assignment of contracts in general.

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