Bayh-Dole for university faculty

Posted on  by Gerald Barnett

  • Under federal patent law, inventors own their inventions.
  • Federal patent law does not require inventors to use the patent system.
  • Federal patent law does not require inventors to assign their inventions.
  • Bayh-Dole is part of federal patent law and does not change these aspects of federal patent law

Bayh-Dole (35 USC 202(a)):

Each nonprofit organization or small business firm may, within a reasonable time after disclosure as required by paragraph (c)(1) of this section, elect to retain title to any subject invention . . .

Faculty inventors have no obligation under Bayh-Dole to use the patent system.

Faculty inventors have no obligation to assign their subject inventions, other than if they have promised to assign those inventions entirely outside anything to do with federal funding.

Universities under Bayh-Dole and the nonprofit version of the standard patent right have no right, obligation, mandate,  or special privilege to take ownership of faculty subject inventions. Anything to the contrary is a misrepresentation of the law and the standard patent rights clause.”

 

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