CAFC Continues to Struggle with How Title to Subject Inventions Works under Bayh-Dole

By Eric Guttag
October 27, 2009

Federal funding, typically in the form of research grants, is often used to support university research.  The Bayh-Dole Act also allows universities to retain title to invention rights in such research (referred to as “subject inventions”).  See 35 U.S.C. § 202(c)(2).  What the Federal Circuit has struggled with recently is what does “retain title” mean under Bayh-Dole, and especially where does the title to the “subject invention” initially reside.  The case of Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. suggests the Federal Circuit “still doesn’t get it” on how title to “subject inventions” works under Bayh-Dole.

In Stanford University, the key facts relating to the Bayh-Dole issue are as follows.  The patented technology involved methods for quantifying the Human Immunodeficiency Virus (“HIV”) by using polymerase chain reaction (“PCR”) to measure ribonucleic acid (“RNA”) from HIV in the blood plasma of infected humans who are taking drugs such as zidovudine (AZT), which is hereafter referred to as the “HIV RNA assay invention.”  One of the inventors listed on the patents for this HIV RNA assay invention was Mark Holodniy.  The HIV RNA assay invention was developed in the late 1980s and early 1990s by researchers at Stanford and Cetus, a company having significant expertise in PCR techniques.  In 1988, Holodniy joined Merigan’s laboratory at Stanford as a Research Fellow in the Department of Infectious Disease, and signed a “Copyright and Patent Agreement” (“CPA”) that obligated Holodniy to assign his inventions to Stanford.

Holodniy had no prior experience with PCR techniques.  In February 1989, Holodniy began regular visits to Cetus over several months to learn PCR and to develop a PCR-based assay for HIV.  Holodniy signed a “Visitor’s Confidentiality Agreement” (“VCA”) with Cetus.  The VCA stated that Holodniy “will assign and do[es] hereby assign to CETUS, my right, title, and interest in each of the ideas, inventions and improvements” that Holodniy may devise “as a consequence of” his work at Cetus.

In December 1991, Roche Medical Systems (Roche) purchased Cetus’ “PCR business,” including Cetus’ agreements with Stanford and its researchers, through an “Asset Purchase Agreement.”  After this purchase, Roche began manufacturing HIV detection kits employing RNA assays.  In May 1992, Stanford filed the patent application for the HIV RNA assay invention which resulted in the patents on which Holodniy was listed as an inventor.

Stanford also received government funding for its HIV research through the National Institutes of Health (“NIH”).  On June 24, 1992, Stanford filed an invention disclosure for the HIV RNA assay with the NIH.  On April 6, 1995, Stanford formally notified the Government that it elected to retain title under the Bayh-Dole Act to the HIV RNA assay invention described in the invention disclosure.  All the patents listing Holodniy as an inventor for the HIV RNA assay invention also contained the following notation:  “This invention was made with Government support under contracts AI27762- 04 and AI27766-07 awarded by the National Institutes of Health. The Government has certain rights in this invention.”

On April 6, 2000, a Senior Licensing Associate (Luis Mejia) at Stanford offered a slide presentation at Roche that asserted Stanford’s ownership of the HIV RNA assay invention and offered Roche an exclusive license to all patents descending from the May 1992 application.  After licensing negotiations between Stanford and Roche broke down, Stanford sued Roche for patent infringement in October 14, 2005 in the Northern District of California.  In response, Roche alleged in its answer that Stanford lacked standing to sue for patent infringement because Roche either:  (1) owned, was licensed under, and/or had shop rights in these patents through Roche’s acquisition of Cetus’ PCR assets (the “ownership claim”); or (2) Stanford’s title to these patents was defective (the “defective title defense”).  The Northern District of California ruled against Roche on the “ownership claim,” as well as the “defective title defense,” as being barred by the California statute of limitations, laches, and the Bayh-Dole Act.

Judge Linn, writing for the Federal Circuit panel, ruled that Roche’s “ownership claim” was barred by the statute of limitations, but not Roche’s “defective title defense.”  Judge Linn’s opinion also ruled that Holodniy’s signing of Stanford’s CPA reflected “merely a promise to assign rights in the future, not an immediate transfer of expectant interests.”  By contrast, Holodniy signing of Cetus’ VCA “effected a present assignment of Holodniy’s future inventions to Cetus” and thus Cetus “immediately gained equitable title to Holodniy’s inventions.”  As a result, Judge Linn’s opinion held that “the chain of title to Holodniy’s rights leads to Roche, leaving Stanford with defective title to the rights of all the inventors.”  Accordingly, Stanford had no standing to bring the patent infringement action.

Stanford’s argument that this “defective chain of title” was overcome by the “bona fide purchaser” provision under 35 U.S.C. § 261 failed to convince Judge Linn.  But then Stanford argued, what about the impact of Bayh-Dole on Holodniy’s assignment under Cetus’ VCA?  Judge Linn’s opinion ruled that Bayh-Dole “did not automatically void Holodniy’s assignment to Cetus, and provided the Government with, at most, a discretionary option to his rights,” citing the Federal Circuit’s 2007 decision in Central Admixture Pharmacy Services, Inc. v. Advanced Cardiac Solutions, P.C.that when the provisions of the Bayh-Dole act are violated, title is not “void” but instead “voidable” at the election of the appropriate federal agency.  In response to Stanford’s argument that Holodniy’s rights were “contingent” upon his CPA obligations to assign them to Stanford, and that Stanford’s election of title in 1995 gave it all patent rights, Judge Linn’s opinion stated that “[w]e are unconvinced of Stanford’s interpretation of the Bayh-Dole Act in this case.”

Instead, Judge Linn’s opinion referred to the 2007 decision of University of Pittsburgh v. Townsendfrom the Eastern District of Tennessee where the University of Pittsburgh sought patent rights from the inventor, Townsend, who maintained simultaneous ties with a private company (CTI).  After inventing a medical scanner, Townsend assigned his rights exclusively to CTI, after which the University of Pittsburgh formally elected to retain title under the Bayh-Dole.  The University of Pittsburgh argued that this election voided Townsend’s earlier assignment, citing the Northern District of California’s opinion in Stanford University.  The Eastern District of Tennessee rejected this argument, noting that “the University [of Pittsburgh]’s ostensible exercise of its right to title . . . occurred after Dr. Townsend’s assignment to CTI.”  Judge Linn’s opinion then held that this outcome in Townsend“is consistent with our understanding that claiming title under Bayh-Dole does not override prior assignments.

With all due respect to Judge Linn, his ruling in Stanford Universityregarding the impact of Bayh-Dole on Holodniy’s assignment under Cetus’ VCA is problematical in several respects.  First, this ruling misinterprets how title to “subject inventions” works under Bayh-Dole, and especially where title to the “subject invention” initially resides.  Under Bayh-Dole, title to the “subject inventions” (i.e., those resulting from federally sponsored research which Stanford University appears to involve) initially resides with the organization (e.g., Stanford) which carries out the sponsored research.  It’s only when the organization elects not to retain title that such title may then pass to the U.S., and only if the appropriate federal agency specifically requests that title pass to it.  As the Federal Circuit correctly held in Central Admixture, title is potentially “voidable,” not void, if the organization doesn’t choose to retain title, and the appropriate federal agency also fails to request title back.

Second, this ruling in Stanford University is inconsistent with 35 USC § 202(d).  35 USC § 202(d) says that if the university elects not to retain title, the university may request that the appropriate federal agency allow the inventor to retain rights in the “subject invention.”  If 35 USC § 202(d) is to make sense, initial title to the “subject invention” must reside with the university under Bayh-Dole.

Third, this ruling in Stanford University appears to frustrate what is intended by 35 USC § 202(c)(7).  35 USC §202(c)(7) expressly prohibits a nonprofit organization, like Stanford, from assigning rights in federally sponsored research to third parties (like Cetus or Roche) without approval of the respective federal agency.  That a university researcher (like Holodniy) can so easily defeat the prohibition of 35 USC § 202(c)(7) by signing a VCA that incidentally assign rights to “subject inventions” to third parties seems bizarre.

Fourth, this ruling in Stanford University cannot be so easily reconciled with the holding in Central Admixture.  In essence, this ruling in Stanford University allows a “third party” (e.g., Roche) to challenge and “void” title to a “subject invention.”  That is exactly what the Federal Circuit said in Central Admixture cannot be done.  Instead, as was held Central Admixture, only the appropriate federal agency may “void” such title in appropriate circumstances under Bayh-Dole.  (In footnote 1, while expressing “no opinion,” Judge Linn does appear to suggest that Bayh-Dole might allow Stanford to recover these rights if the Holodniy’s execution of the Cetus VCA violated Bayh-Dole, so this may not be the end of the story.)

Fifth, Judge Linn’s opinion views Stanford’s argument based on Bayh-Dole as requiring the “voiding” of the VCA assignment by Holodniy of the “subject invention” to Cetus.  While Stanford could have phrased its Bayh-Dole argument more artfully in this regard, “voiding” of Holodniy’s assignment to Cetus under the VCA is not what is required by Bayh-Dole.  Instead, Holodniy had no title to assign because, by operation of Bayh-Dole, title to the “subject invention” started and remained with Stanford.  In fact, Judge Linn’s reliance upon the Townsend case is misplaced because the Eastern District of Tennessee in Townsend also got the issue of “where the title resides” wrong (i.e., in electing to retain title, the University of Pittsburgh was not “exercising its right to title” because it already had titleby operation of Bayh-Dole).

Admittedly, Stanford might have avoided this result by phrasing the assignment in its Holodniy CPA as a “present transfer of,” not a “promise to,” assign rights in future inventions to Stanford.  But allowing such subtle phrasing in an assignment to determine whether or not a university retains title to “subject inventions” from federally-sponsored research, as Judge Linn’s opinion in Stanford Universitydoes, appears to frustrate how title to “subject inventions” was intended to work under Bayh-Dole, and especially who has title to those “subject inventions” in the first place.  And universities are certain to “howl” about the potential implications of the Stanford University case on their respective sponsored research programs.

 *© 2009 Eric W. Guttag.

The Author

Eric Guttag

Eric Guttag  
Mr. Guttag has over 38 years of corporate and private intellectual property law experience on patent, trademark, copyright, trade secret and unfair competition matters, computer and Internet law, including patent application drafting, prosecution, and patentability studies; infringement and validity studies; international patent prosecution; patent and know-how licensing; consulting, confidentiality, clinical study and research agreements; trademark searches and opinions; trademark registration and prosecution; trademark freedom-to-use studies and trademark litigation and dispute resolution.

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Discuss this

There are currently 14 Comments comments.

  1. Michael F. Martin October 27, 2009 6:26 pm

    For hundreds of years priority disputes have been decided using the same legal principles that were followed by the Federal Circuit in this case. These principles include that origin of title to inventions is in inventors, that disputes over chain of title are decided by priority in time except when a recording act otherwise applies, and that a present assignment of inchoate patent rights is an effective legal transfer of any future rights. With respect to your first point, you have not explained how or why the Bayh-Dole Act supersedes these legal principles.

    The Bayh-Dole Act governs the relationship between organizations that receive federal funding and the funding agencies. A first set of contracts govern the relationship between organizations that receive funding and inventors. A second set of contracts govern the relationship between inventors and third-parties, such as startup companies. Your reasoning above suggests that the funding agencies might have a claim against the recipient organizations if the first set of contracts were not compliant with Bayh-Dole. But none of your reasoning or evidence supports the proposition that the Bayh-Dole Act applies to the second set of contracts.

    At some point, it’s not the courts that are getting the law wrong if they’re consistent on an interpretation of the statute.

  2. M. Slonecker October 28, 2009 12:24 am

    Merely an observation. FAR 52.227-11 (applicable to small businesses and universities) allocates rights as between the USG and the contractor. It does not, however, change the basic rule under US law that in the first instance title resides with the inventor(s). Of course an interesting situation arises whenever a contractor has failed to enter into a contractual relationship with its employees binding such employees to assign all present and future inventions to the contractor. Hence, the need for contractors to already have such relationships in place prior to accepting the obligations imposed by the FAR clause.

  3. EG October 28, 2009 9:57 am

    Michael Martin,

    Thank you for your comments. You’re not the first to question my reasoning here. I also understand the “traditional path” for determining title to inventions and that such title such inventions normally belongs to the inventor(s) initially until changed by contract.

    But in the context of Bayh-Dole, and federally-funded research, that “traditional path” has been legislatively altered for “subject inventions.” I’m not alone in this view. For example, Howard Bremer of WARF who was one of the principal architects in the university sector pushing for enactment of Bayh-Dole also takes the view Bayh-Dole mandates that title to “subject inventions” initially resides with the contractor. So let me explain further why:

    First, prior to Bayh-Dole, there was a hodge-podge of policies and regulations in the various federal agencies for who got title inventions created in whole or in part as a result of federally-funded research. In fact, many of those policies and regulations mandated that the agency/US got title to those inventions. Accordingly, in the context of federally-sponsored research, the “traditional path” was altered even before Bayh-Dole.

    Second, Bayh-Dole was enacted to render uniformity to the policies and regulations around who got title to inventions resulting from federally-sponsored research. And most significantly, the intent of Bayh-Dole was that the “contractor” who received the federal funding for the research was to be given the opportunity to “retain” title to “subject inventions” (i.e., those resulting from the federally-funderd) unless: (1) the contractorfailed to comply with certain obligations, such as failture to tell the federal agency about the “subject inventions” with a certain period of time; (2) the contractor decided not to “retain” title; or (3) the federal agency asserted its “march in rights” to take tile. Also significantly, in situation (1), the federal agency had to specifically request that it get title; as the Federal Circuit held in Central Admixture, title to the “subject inventions” is “voidable,” not “void,” at the instance of the appropriate federal agency, and cannot be challenged by a prirvate “third party.”

    Third, as Howard Bremer has correctly noted, the key operative word used consistently throughout Bayh-Dole, and particularly in the Disposition of Rights section of 35 USC § 202(a), is “retain” (not “obtain,” “transfer” or some other such word) with respect to title to “subject inventions.” The word “retain” implies that title already resides in the entity, and in the case of federally funded research under Bayh-Dole, that “entity” is the contractor. In fact, as noted above, USC § 202(d) says that if the contractor elects not to retain title, the contractor may request that the appropriate federal agency allow the inventor to retain rights in the “subject invention.” If 35 USC § 202(d) is to make sense, initial title to the “subject invention” must reside with the contractor.

    Fourth, as also noted above, 35 USC §202(c)(7) expressly prohibits a nonprofit organization, such as a univery like Stanford, from assigning rights in federally sponsored research to third parties (like Cetus or Roche) without approval of the respective federal agency. It’s hard to believe that the prohibition of 35 USC § 202(c)(7) could be so easily skirted by a university researcher signing a confdentiality agreement that incidentally assign rights to “subject inventions” to third parties.

    Fifth, and as you may surmise from my comments in the fourth point just above, Linn’s opinion gives the incidental assignment clause in Cetus’ VCA (versus the assignment in Stanford’s CPA) an effect that is hard to justify from the context in which the VCA was signed. As one who once worked in the corporate world for many years, I’ve seen similar assignment clauses to those in the Cetus VCA, and they’re all “boilerplate” much like what law governs the agreement. More importantly, I suspect that the university researcher didn’t read this incidental assignment clause and certainly didn’t understand what it meant. As one who also has worked in the corporate world, I question the authority of the university researcher to even sign something like the Cetus VCA without the permission and consent of the unversity that the researcher is employed by. That Linn’s opinion completely discounts Stanford’s legitimate “lack of authority” argument would shock many in the corporate world.

    Sixth and final, you have to view Bayh-Dole in its entirety, including the integrated statutory scheme for how title to “subject inventions” works. That means, for example, considering the impact of an incidental assignment clause on prohibtions against assignment set forth in 35 USC §202(c)(7) . Linn’s opinion simply gives short shrift to this integrated statutory scheme. And allowing that integrated statutory scheme to be undermined by a “boilerplate” incidental assignment clause in a confidentiality agreement just doesn’t sit well with me.

    I hope this further explanation is helpful to you understanding my view on this case as it relates to how title to “subject inventions” works under Bayh-Dole. I realize that “reasonable minds can differ,” and your view is one that others have expressed to me as well.

  4. M. Slonecker October 28, 2009 11:49 am

    Eric,

    If, as you appear to suggest, 35 USC 202 supplants the general rule of rights to inventions vesting initially in the inventor(s), then in my view there would be a most definite conflict with the provisions of Article 1, Section 8, Clause 8 that speaks to inventors (I am placing the “work for hire” doctrine to the side because it is, quite frankly, a red herring.).

    Just like 28 USC 1498, Title 35 provisions pertaining to inventions associated with federal assistance (be it in the form of grants, cooperative agreements, or contracts) serve as a reminder that the crafting of statutory language by persons other than practitiones steeped in the contents and structure of Title 35 is largely a fool’s errand likely to raise more questions than provide answers. Such is the unfortunate nature of our legislative process.

    Rather than stop at the pertinent chapter to Title 35, which does present in my view a significant ambiguity that on its face is susceptible to an interpretation that may very well do violence to Article1, Section 8, Clause 8, I next proceed to how the federal agencies have interpreted the statute and embodied same in the Federal Acquition Regulation (the so-salled “FAR”).

    This interpretation is set forth in Chapter 52, and specifically at Sections 52.227-11 (contractor retains title) and 52.227-13 (USG retains title). As you peruse these two sections you will note that one of the obligations imosed upon contractors (and subcontractors) is to have in place appropriate contractual arrangements with certain classes of its employees sufficient to permit the contractor/subcontractor to be able to meet its obligations under the aforemention clauses.

    I submit that these regulatory provisions are substantive in nature, were promulgated with explicit statutory authority granted by Congress, and are thusly entitled to the full force and effect of law. Consequently, I have a most difficult time veiwing the general language of Title 35 as supplanting the rule vesting title in the first instance with inventor(s) because to suggest otherwise raises a question of constitutional dimension, a question that only is presented if Title 35 is interpreted to read “inventors” more broadly such that it embraces government contractors, government subcontractors, and the government itself.

    By the way, and perhaps more importantly on a practical level, the far more challenging aspect of dealing with federal agencies in matters such as these involves the treatment of technical data and computer software. While I have always found patent law to be helpful in dealing with such agencies, and particularly when such agencies embark on second sourcing and/or international arrangements, the vast majority of legal “battles” are fought in this latter arena. It is to the “credit” of the agency rulemakers, and to the distinct “benefit” of government contractors and subcontractors, that such rulemakers are woefully ignorant of the applicable statutory law. For example, it is not at all uncommon for rulemakers to review a statute, form a belief that the statute does not go far enough, and to then extend the statutory boundaries unilaterally.

    Mike

  5. Paul F. Morgan October 28, 2009 12:20 pm

    Thanks for posting this article on a decision I also found troubling. I have passed it on.

  6. EG October 28, 2009 1:01 pm

    “If, as you appear to suggest, 35 USC 202 supplants the general rule of rights to inventions vesting initially in the inventor(s), then in my view there would be a most definite conflict with the provisions of Article 1, Section 8, Clause 8.”

    Mike,

    Thanks for your comment. I’ve also seen before your argument about the potential conflict with the Patent Clause if Bayh-Dole is interpreted to put title to “subject inventions” initially in the contractor. My response to that argument is that federally sponsored research comes with “strings attached” and one of those “strings” is that title to “subject inventions” must initially reside in the contractor. Put differently, if you don’t want the “strings,” don’t accept the federal funding.

    My other argument to the Patent Clause conflict is that it reads more into the Clause than is really there. This is similar to the statement by SCOTUS in Graham that the Patent Clause creates some sort of constitutional “standard” for patentability beyond novelty. I could also argue that an obligation of an inventor to assign by virtue of an employment agreement would create a similar conflict with the Patent Clause. The Patent Clause simply provides Congress with the ability to allow inventors to secure the exclusive rights in their inventions, but does not address how ownership or title to such inventions might be altered by contract or by statute (such as Bayh-Dole). Also, how to do you respond to what was true prior to Bayh-Dole, that the policies/agreements of many federal agenices mandated that title to “subject inventions” resulting from federally sponsored research belonged to the agency/US?

    I would also be careful in relying upon what is set forth in the FARs as necessarily evidencing how title to “subject inventions” works under Bayh-Dole. The FARs existed prior to Bayh-Dole and if I recall correctly, didn’t discriminate as to the size or non-profit status of the contractor. By contrast, Bayh-Dole originally applied only to those contractors who were small businesses, non-profits and individuals. It was only by Executive Order under Reagan that the provisions of Bayh-Dole were applied to larger, for profit, entities, including those subject to the FARs. Accordingly, what the FARs say about imposing obligations on contractors relative to their employees may reflect a “historical artifiact” of where the FARs came from, rather than what Bayh-Dole says about how title to “subject inventions” works.

    Anyway, unless the Federal Circuit grants a request for rehearing in the Stanford University case (or changes it’s mind later), we’re all stuck with the result. That means phrase your assignment clause to be a present transfer of future invention rights if you want to avoid what happened to Stanford University. And thanks for the debate

  7. EG October 28, 2009 1:36 pm

    “Thanks for posting this article on a decision I also found troubling. I have passed it on.”

    Paul,

    Thanks for your supportive comment. I don’t know what you find “troubling” in this decision, but here are three that perplex me:

    1. Not considering the entire statutory scheme of how title to “subject inventions” works under Bayh-Dole and especially how this decision can be squared with the provisions of 35 USC 202(a), 202(d)(7) and 202(d), as well as the decision in Central Admixutre.

    2. Allowing an incidental “boilerplate” assignment clause in what, in essence, is primarily a confidentiality agreement to have the overrding effect it did.

    3. Giving such short shrift to the very valid argument by Stanford Uinversity about the “lack of authority” of the researcher to even sign Cetus’ VCA.

    If there are other aspects of this decision that you find “troubling” I would be interested to hear what they are.

  8. Michael F. Martin October 28, 2009 1:44 pm

    Eric,

    I appreciate your point that there are reasonable people who agree with you. But arguments from authority (even an authority as venerable as Howard Bremer) don’t carry much weight with me.

    As to the more substantive points you make, I have the following responses. First, I understand the Bayh-Dole sought to simplify the rules of ownership for inventions that arise from federally funded research by permitting universities to take title rather than the agencies the provide the federal funding themselves. But is that evidence that the origin of title was in the agencies rather than the inventors before Bayh-Dole? Can you point to a case in which that was held?

    Second, the language of the act that you refer to governs the obligations and duties of the contractor (e.g., a university) to the funding agency and vice versa. Your argument, as I understand it, is that the verb “retain” implies that these obligations and duties run through the university to the inventors. My argument is that this single verb is insufficient to overcome the presumption that title cannot skip over the inventors and vest directly in the contractor that has been created by hundreds of years of priority disputes decided under property and contract law. Where is the evidence in the Bayh-Dole Act that inventors are party to these obligations and duties?

    Can an inventor skirt his obligations to the university by signing a contract with a third-party that, in effect, violates university obligations under Bayh-Dole? Apparently so. That’s what happened in Roche and in cases cited therein. Is this somehow absurd? No. Stanford has the right to change its agreement with inventors (as indeed it did in 1995) to make their obligations to assign inventions present rather than prospective. Stanford also has the right to sue inventors who violate their contracts with the university, which from time to time they do. But Roche is an important decision because it clarifies for faculty and student inventors that taking federal funding does not tie their hands — i.e., inventors still have a choice about who they work for and on what terms they will assign their inventions. Far from being absurd, this seems to me to be the most reasonable rule that could be adopted. What incentive would faculty and students have for disclosing inventions without this rule? Is a sense of moral obligation enough when the university has no way of peering into the minds of its faculty and students to see whether, indeed, they have disclosed everything they believe to be an inveniton?

    If there is a moral to the story in Roche then it is this: what faculty and student inventors sign is important. It’s too bad that neither the university nor the inventor got anything for their work here, but the inventor should have been more careful about what he signed!

  9. EG October 28, 2009 1:57 pm

    “If there is a moral to the story in Roche then it is this: what faculty and student inventors sign is important. It’s too bad that neither the university nor the inventor got anything for their work here, but the inventor should have been more careful about what he signed!”

    Michael Martin,

    Touche! (but how many faculty/students really do read the agreements they sign?) Also, as you suggest, the university can write the assignment clause in the agreement with the faculty/student to avoid the result that happened here. Again, thanks for the “lively” debate.

  10. M. Slonecker October 28, 2009 5:09 pm

    Eric,

    Above you asked:

    “Also, how to do you respond to what was true prior to Bayh-Dole, that the policies/agreements of many federal agenices mandated that title to “subject inventions” resulting from federally sponsored research belonged to the agency/US?”

    Most having even a passing familiarity with the inner workings of the FAR Council quickly come to the realization that those persons who labor under its umbrella haven’t a clue when it comes to patents, trademarks, copyrights, trade secrets, unfair competition, etc. Regulatory proposals are routinely traversed by industry association groups, and their legal arguments are routinely ignored since it well understood that few companies that rely on government contracts are willing to stick their neck out and challenge misguided and plainly illegal regulations.

    Perhaps someday if you are interested I will be able to regale you with the history underlying a former policy and former procurement clause that went by the name “Recovery of Non-Recurring Costs” (aka “Recoupment”).

    BTW, and Bayh-Dole notwithstanding, the DOE continues to labor under the belief that it somehow enjoys a position that allows it to act in a manner manifestly contrary to Bayh-Dole. Last time I looked it still hewed to the line “It’s mine unless you ask me nicely and I deign to consent!” .

    In the final analysis most discussions on the topic of government contracts and IP tend to be of passing interest given that the statutes, policies and regulations are so hosed up that even a relative newcomer to the field of IP law can run rings around the government. As a colleague used to say, and with whom I agree, dealing with the government in these matters is typically much like “shooting fish in a barrel”.

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