Category Archives: Bayh-Dole

Practical Lessons for University Counsel

Posted on February 6, 2012 by Gerald Barnett

Here’s a typical slide deck (it opens in PowerPoint–sorry non-’Softies) talking about Stanford v Roche and offering lessons learned.  It looks like it was prepared by the University of Rochester’s Office of General Counsel. It does a nice job on … Continue reading →

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Where’d you go, Ohio?

Posted on January 27, 2012 by Gerry Barnett

I have written previously about the State of Ohio’s effort to frustrate federal invention policy by asserting that public universities in the state own all inventions made in research done in state facilities or by university employees in the scope … Continue reading →

Posted in Bayh-Dole, Bozonet, Policy, Present Assignment, Stanford v Roche, Technology Transfer | Comments Off

7 Points on the UC Present Assignment Requirement

Posted on January 17, 2012 by Gerry Barnett

There has been some discussion going on about the recent UC requirement that everyone sign a new patent acknowledgement, this one with a present assignment in it, with the claim that this change is needed to respond to the Stanford … Continue reading →

Posted in Bayh-Dole, Innovation, Present Assignment, Technology Transfer | Comments Off

Oh, to be the happy dog again

Posted on January 15, 2012 by Gerry Barnett

There has been a lot of bad advice for universities out there in the wake of Stanford v Roche.   It almost appears to be orchestrated talking points on the need for universities to implement present assignments to prevent another outcome … Continue reading →

Posted in Bayh-Dole, Policy, Present Assignment, Sponsored Research, Stanford v Roche, Technology Transfer | 1 Comment

What “of the contractor” teaches us about “subject inventions”

Posted on January 10, 2012 by Gerry Barnett

[In a previous essay, I worked through problems with "of the contractor" and argued that the interpretation had to include employees who invent even if they had not assigned to the contractor.  Here, I explain in more detail how this … Continue reading →

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What SvR Means: Five Key Points

Posted on December 21, 2011 by Gerry Barnett

What does Stanford v Roche mean for research enterprise? 1.  Federal university research innovation policy favors freedom over compulsory practices. Bayh-Dole rolled back agency compulsory invention ownership policies to create a powerful group of expert, university-based, independent investigators with access … Continue reading →

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Rev Proc 2007-47′s Nonsensical Attack on Bayh-Dole

Posted on December 15, 2011 by Gerry Barnett

Many public universities use tax-free bonds to construct their research buildings, and when they do, they run afoul of the Tax Reform Act of 1986.  That law places a strange set of restrictions on research conducted in these buildings and … Continue reading →

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Putting the Groove Back

Posted on December 4, 2011 by Gerry Barnett

University tech transfer folks got Bayh-Dole wrong, repeated it so often that it started to sound right, were told by the Supreme Court they were wrong, and now are trying to implement privately what sounded good to them–compulsory university ownership … Continue reading →

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Undoing the Work of the Grifters

Posted on December 4, 2011 by Gerry Barnett

When you clear away the BS, you may as easily get mystery as clarity.  For innovation management, mystery is acceptable. I’ve been trying to get at what is going on with the present assignment push in universities.  It appears to … Continue reading →

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The UC Present Assignment Demand: Links

Posted on December 3, 2011 by Gerry Barnett

For UC faculty unsure of what to do with the UC administration “this is not a change in policy, just sign here to confirm you agree”, here is a set of links to my discussion of the matter, if it … Continue reading →

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