Property law courses generally begin with the concept of first-possession as an originator of property rights. In patent law, the first-possession principle leads to a rule that potential patent rights are owned by the inventors unless and until they are assigned to another entity. See Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 35-37 (1923). The legal basis for inventor rights is derived from constitutional principles that give Congress power to enact patent laws that grant exclusive rights "to inventors." US Constitution, Article I, § 8, cl. 8.
In Stanford v. Roche, Both Stanford and the US Government argue that that the Bayh-Dole Act of 1980 alters this original formula in the special case where an invention was either "conceived or first actually reduced to practice" with the use of US federal funding received by a university, non-profit, or small business. In that situation, the Bayh-Dole Act suggests that the funded-entity, the "contractor", automatically holds patent rights with a right to "elect to retain title to any subject invention." 35 U.S.C. § 202(a). If the contractor decides not to retain title, then, the funding federal agency "may receive title" or "may … grant requests for retention of rights by the inventor." 35 U.S.C. § 202(d). The Bayh-Dole Act includes a comparative-law clause making its provisions superior to those found in any other Act. "This chapter shall take precedence over any other Act which would require a disposition of rights in subject inventions of small business firms or nonprofit organizations contractors in a manner that is inconsistent with this chapter."
The Bayh-Dole language is somewhat confusing when examined through a first-possession framework. Namely, the statute indicates that the university might "retain title" and also that inventors can request "retention of rights." It is unclear from these provisions whether it is the university or the inventor that first holds rights. The US Constitution helps break this seeming conflict by focusing on inventors as the original recipient of rights. With this Constitutional backstop, there is no way that the university can be the original rights-holder. Rather, that designation must remain with the inventors.
This result may be important for the Stanford v. Roche case that was recently granted a writ of certiorari. Under a Constitutionally limited Bayh-Dole Act, Stanford cannot automatically claim first-possession rights to every invention & first reduction-to-practice that was materially supported by federal funding obtained by Stanford. At most, the Bayh-Dole law requires a transfer of rights from the inventor to the university. In the property framework, the question then focuses on the timing of the Bayh-Dole transfer (is it immediate or does it only occur upon the university's election of rights?) and on its impact on a prior transfer of patent rights to a third party.
“Lucky for youse guys… else you’d heard a mouthful from me”
Yes indeedy – weza be lucky we don’t hear more from you.
And your little bunny too.
Lucky for youse guys i’m in semiretirement else you’d heard a mouthful from me or my bunny on this line-o-thought
Happy Thanksgiving weekend
Tip: Lighten up and smell life to its fullest, that’s what I always say, or not
you’ll thank me in the morning
Now I know I was silenced was because I have nothing left. And after the First was stolen the Second and the Third were as much a dummy as the second Trademark, when am I going to be allowed to get a Lawyer? when are you going to stop violating me?
And blocking my faxes to get representation is not a good thing. That is my right!
And too think…. After a Bridge over the River Quai moment…. and no where to go but down a deal maybe LOL… and with all that Power If you do this for me, I’ll do that for you!
And to think the two single Pea brained whatever, Deny the First, Thirteenth and Fourteenth Amendment rights too a Two Pea Brained applicant, all over a……
And because I am awarded a Birthday wish… I wish someone would tell me how all this got through without being recorded. Or if it was recorded then how come it was ever allowed either. And maybe erased then… scatter. And because I am only allowed one wish with the third being a figment of Whos’s ever imagination then how is it there? And the others being well .. only one wish right now.
And it’s my Birthday! Happy Birthday to me.
713.04 says everything!
Love this new feature! love this page.
Slonecker and others:
For a decade-old but now public discussion of some of the difficulties, contractual subtleties, and inter-institutional relationships concerning an NIH IP clause, see this memo from the UC tech transfer office:
link to patron.ucop.edu
Among other things, it mentions assignment of rights and ownership of data, and it illustrates one example of tension between a fed gov’t agency, a university, and a third-party private entity.
This stuff has been going around for some time now. I still believe that one of 2 things will happen at the SC: either the decision will be based on the notice requirements for a taking while acknowledging that rights initially belong to the person(s)-as-inventor(s), or the case will be dismissed as improvidently granted.
Inviting Body Punches,
The original clause was replaced because someone, somewhere got it in their head that new is obviously better than old. Seriously, the USG did not like the old clause in substantial part because it limited what the USG could do with technical data and software to “USG purposes only”. They wanted it to read, in essence, “for any purpose the USG deems fit”. Why did they want the change? Because without it the USG was at a distinct disadvantage in competing with the private sector for foreign business. There were a few other reasons, but they were of relatively little importance.
Why does the new clause persist? Candidly, in my view it is because no one in the USG has ever taken the time to subject the new clause to a thoughtful legal analysis, and it is unlikely this will ever happen in the near term since there are precious few, if any, persons skilled in IP remaining in the USG’s employ outside of the USPTO and a few other agencies that deal heavily with IP issues (e.g., DOE and NIH, but certainly not DOD).
Slonecker–
2 questions: first, why was the earlier clause superseded by the new clause, and second, if the new clause so disfavors the gov’t, why does it remain in use?
Inviting Body Punches:
Be careful, Slonecker–when the incompetence is nearly complete, the system becomes irrational and the likely outcomes of your own actions are no longer reliably predictable–you are no longer able to effectively ensure that your actions will result in a net benefit to your client.
Fortunately, this has never proven to be the case, and as long as general practitioners who have never dealt with substantive IP law continue to rule the day within the USG procurement world it will almost certainly never be. To take advantage of it, however, it is incumbent upon the individual negotiating on behalf of a private sector client to actually possess a level of knowledge concerning patent, trademark, copyright, and trade secret law in order to see through the “mumbo jumbo” emmanating from the USG’s negotiators.
For example, in a prior life the DOD had a contract clause entitled “Rights in Technical Data dnd Computer Software” that was actually prepared by “old-timer” IP lawyers within the USG who understood the distinction between trade secret and copyright law. Accordingly, the clause contained two separate and distinct grant of rights to the USG, each tailored appropriately.
In the early to mid 90’s their input was cast to the side in favor of a clause that fundamentally misapprehended this important distinction. What eventually came out of the redraft of the prior clause was a new clause that conflated the two bodies of law, with the end result being a clause that ignored completely a separate copyright grant. If the representative of a private sector client is unable to use this glaring ommision for the client’s benefit, then I have to wonder if the private sector representative should even be at the negotiating table.
What most persons who touch B-D only on rare occasions do not realize is that there is a definite “pecking order” among counsel within the USG. There are “contract attorneys”, and then there are “patent lawyers”, with the former having manipulated the procurement system such they wield power far, far exceeding that of the latter. In fact, the latter are almost universally ignored, which invariably leads to the downfall of the USG’s interests during negotiations relating to IP issues. If this is not serving private sector counsel with an opportunity on a ‘silver platter”, then I do not know what is.
I am not at liberty to disclose specific instances where this has played out because this would permit others to identify the parties, the subject matter involved, the relevant contracts, etc. All I can say is that as events subsequently played out concerning domestic and international markets those associated with the USG were none too pleased to learn what they thought they had and what they really had were polar opposites.
Slonecker: “…in my experience virtually no one representing the government has the slightest clue what the law actually says…”
While I might not go quite that far, his statement is yet another acknowledgment of the pervasive and extreme nature of public-sector incompetence.
Be careful, Slonecker–when the incompetence is nearly complete, the system becomes irrational and the likely outcomes of your own actions are no longer reliably predictable–you are no longer able to effectively ensure that your actions will result in a net benefit to your client.
lulz,
another advertisement for not using the patent litigation services of patent litigation.
Have a good day, count your blessings, and remind everyone else how blessed we all are.
patent litigation | Nov 07, 2010 at 07:51 PM:
Fortunately, “work for hire” is not associated with patent law. In fact, I know of no one who seriously argues that “work for hire” is faithful to the strictures of Article 1, Section 8, Clause 8. It is a mongrel doctrine that was crafted in an era prior to the enactment of the Copyright Act of 1976, and for practical reasons associated with copyright extension. While some vestiges of copyright extension remain, perhaps now is an appropriate time to reassess the doctrine.
It’s always interesting to me when patent litigation directly involves constitutional issues, and this case seems particularly intriguing. However, I can see an argument that an innovation by a university-employed inventor constitutes a “work-for-hire” — comparable to such situations in copyright law — and that therefore the university holds the rights of first possession. I hope this blog writes progress reports on this case, because I’d like to know the result.
Mr. Lieberstein,
Not quite sure why your’s is a double post.
Obviously you have noted my comments above. I believe you will find that we are not at odds.
What raises concerns with me is that I have been around the B-D Act for about 25 years, thus facing it on a day to day basis. Above that, however, I have also been around other contractual approaches that agencies have resorted to as a means of by-passing B-D. While they often wrap these other approaches with a cloth that reads “this is to provide flexibility over what is required by B-D”, in point of fact many of them are instruments designed to “get more” for the USG and “leave less” with the private sector.
10 USC 2371 is one such approach, and has been used to not only secure “more” for the USG, but to do violence to the term “funding agreement”, but also an end around to the underlying premise in B-D that it is intended to operate as a “license” approach. Even a cursory review of 10 USC 2371(d) demonstrates what I am talking about. This little “nugget” was slipped into legislation pertaining to DARPA back in the 1991 timeframe, and has since morphed into an even broader form.
DARPA and other units of the DOD are on record as saying B-D has no applicability (for this they have adopted the rationale that “contract” in B-D is limited to “procurement contracts”), but they will graciously agree to use B-D as the baseline for the negotiation of rights with the private sector. In return for reducing some of the administrative requirements specified in B-D, they have oftentimes insisted that as a condition for funding the private sector must agree that the agency can demand the private sector pay royalties to the agency, an interesting approach given that under B-D no authority exists for any such demand.
One can only begin to imagine the surprise of a company executive who wants to exploit an invention or related know-how/show-how in domestic civilian markets being informed that even though the company may “own” a patent and have granted a “royalty free” license to the USG, the USG is entitled to the payment of royalties (royalties, btw, that the agency gets to add to its appropriations notwithstanding the legal doctrine of “non-augmentation of appropriated funds”.
Stevenson-Wydler (or at least I believe this is correct) contemplates CRADAs. Under this arrangement there is virtually no possibility that a subject invention can arise since the private sector participant(s) does not receive any federal funds whatsoever. However, this little fact seems to be overlooked (i.e., deliberately ignored) when it comes to the allocation of rights. The USG wants what it would otherwise get were this a funding agreement under B-D, but it does not want to have to provide such funding in order to get the rights it wants.
The above are just two examples, but I believe they fairly point out my concern that the federal agencies need to understand that they do not possess the inherent power to play fast and loose with B-D. It is bad enough they do this with their other new-found approaches. It is unacceptable that they also attempt to do this when there is no argument that B-D is controlling.
Of course, in this morass of misinformation there is a silver lining. Since in my experience virtually no one representing the government has the slightest clue what the law actually says, it is a fairly easy matter to turn it back on them for a client’s benefit. For example, the USG demands rights for a specific invention, with it asserting that this is because it is a subject invention due to having been first actually reduced to practice under the funding agreement. The rejoinder? “Take a look at our contract proposal, wherein you will immediately note that the invention was both conceived and first actually reduced to practice during the time leading up to the proposal’s submittal.” The USG response? “OK, but we are still entitled to Unlimited Rights in the technical data since it was created under the contract!” The contractor’s response? “No way. You are entitled to no more than “Limited Rights” (i.e., you must hold all of the technical data in the strictest of confidence) because by definition “developed” as used in the applicable Rights in Technical Data and Computer Software clause by definition reflects that “developed” is earlier in time that “reduction to practice”.”
If the DOJ wants to take a position in this case that will provoke private sector responses such as above, then so be it. But let me be the first to tell it “I told you so.”
His real bad. Life changing bad.
I sure hope the Judge that closed that great Case knows what this 600 Ram no tower intended knows what I already knew is here sucking it all up.
Wow! What a hornets nest this case seems to have stirred. Sometimes it is helpful to go back to fundamental principles developed by the common law. A classic Supreme Court opinion in a case decided almost a century ago, but still cited quite often, is STANDARD PARTS CO. V. PECK, 264 U.S. 52 (1924). Standard Parts had acquired the Hess-Pontiac Spring and Axle company and assumed that it owned the rights to an invention of William J. Peck. Mr Peck had been hired by the Hess Co. to help it develop a new “front spring”. When hired, Mr. Peck signed an agreement which was silent as to ownership rights to any invention. So Mr. Peck said that he owned his invention. The Supreme Court decided that Mr. Peck did “nothing more than he was engaged to do and paid for doing.” So Mr.Peck had transferred his right to ownership to his employer. I devoted a couple of years to the study of ownership rights to ideas and inventions in preparation for my book “Who Owns What Is In Your Head?” The Bayh-Dole Act is not necessarily inconsistent with the constitutional right of an inventor to his invention–provided that an inventor may transfer his ownership rights as a condition of employment. The transfer does not depend on a written agreement if the inventor, like Mr. Peck, did what he was hired to do and paid for. Conceivably, Bayh-Dole may be construed to apply to inventions for which the inventor had been hired, and his work had been sponsored by federal funds.Of course, Roche questions whether the work of the Stanford U. employee, while at Cetus, was sponsored with federal money. That is a fact issue. Whether the employee/inventors’ first agreement with Stanford was subordinate to his later agreement with Cetus is a legal issue. The latter is important to Universities and Businesses that require a transfer of rights to inventions made in the course of employment,as a condition of employment. Those agreements may be vulnerable if superceded by subsequent assignments by the employee. But facts and pragmatic legal issues are boring. I do not mean to take away the fun arguing a constitutional issue. Stan
They are on another blog Mikey. Ping is dumbfounded!
Ping;This is the nations largest law blog so it influences many people twords change for the better and the more people changed means better chances congressional action. If you would like to become involved let me in a progressive role let me know I have free consignment of patents With strings ready for funded candidates.Eye am always doing something real even if it is stolen like natural gas fired powerplants shutting off bp oil spill and on and on.
James Bellie: obviously bayth-dole is unconstitutional if this is true and a theft of intellectual property.It would violate the entire patent systems conception purpose.If a true inventor is unable to progress with his invention his intrests may have to be reduced to a level determened by mutual agreement generally not exceeding 50% of eventual profits after all expenses.Even this requirement should only apply for critical product advancements.If unable to find bidders at that level the % should be reduced to as low as 15% depending on profit potential.Conception is terrible thing to retard.
More yamming it up, more blaming of others…
Get off your duff already Mikey and do something about it. Geesh, ya be like Malcolm and his be otching here. All ya be is talk and blame, blame and talk.
Let’s see ya do somethin real.
Sarah;Ilove turning sarcastic critism into progress. If only I could find investors and or companies actually willing to buy products instead of stealing them the country could get out of recession and we could realize the true potential of my maximum creativity.Progressive patent reform is critical to correct influences of the greedy thiefs on the present system and due to people who wont listen and dont believe.
M. Slonecker nails it.
Kudos
“the participants on the “legal side” of the issue within Stanford were woefully ignorant of these how to properly achieve the desired result, either by appropriate agreements with its employees or appropriate reliance on other available legal doctrines.”
Perhaps the academics at Stanford should be focusing on this black letter law instead of inventing all kinds of excuses to weaken the patent system. Not naming names, but in particular, starts with Lem and ends with ley.
And I love your Pitcn Man Michael, Ping. He is awesome like you.
Westportlaw,
Standing even further back, the motivation for B-D was to bring some semblance of uniformity to a system that up until then varied widely from agency to agency. Until then agencies were split on two approaches generally referred to as “title” and “license”. Under the former agencies were insistent on ultimately being the holders of title (e.g., DOE, NASA), whereas, of course, under the latter agencies were holders of licenses (e.g., DOD).
Importantly, under either approach the key consideration was the quantum of rights that would eventually inure to the benefit of the USG. With this it mind is should be apparent that the USG was not concerning itself with who held the rights in the first instance, but only that at the end result would be either title or a license.
It quite naturally follows, and as demonstrated from many years of how these competing approaches worked, that when reference was made to “contractors”, what was in essence really happening was that “contractors” was being in used in a generic sense to signifiy inventions created by participants from the “private sector”, be they a prime contractor, a subcontractor at any tier, a grant recipient, and a cooperative agreement participant.
Nothing in B-D was intended to change the distiction drawn between the USG and the private sector.
What makes the position espoused by the DOJ and Stanford troubling is the suggestion that title in the first instance resides with either the USG or a contractor, and not initially in the inventor(s). This position is so at odds with black letter patent law that it unnecessarily butts up against Article 1, Section 8, Clause 8. This need not be the case as you aptly note, but perhaps out of ignorance the DOJ and Stanford fail to appreciate that black letter patent law and B-D can peacefully coexist by the application of other legal doctrines that can accomplish the same result.
Accomplishing this result in not rocket science, but after reading what Stanford has done it seems clear to me that the participants on the “legal side” of the issue within Stanford were woefully ignorant of these how to properly achieve the desired result, either by appropriate agreements with its employees or appropriate reliance on other available legal doctrines.
If nothing else, this case should stand for the proposition that those involved in legal matters on behalf of private sector participants need to involve themselves much more than with merely a general knowledge of the type of funding agreement involved and the federal contract clauses mandated for such an agreement. There is absolutely no reason and no excuse for anyone on the “legal side” of private sector participants not placing equal emphasis in their review of the Statement of Work, easily the most important facet of any funding agreement. The Statement of Work describes in datail what work is to be performed under an agreement, and anyone on the “legal side” what takes the time and effort to actually read it (and amend it if necessary) can very easily identify and anticipate future problems that may potentially arise, thus avoiding the very situation present in the Stanford case.
My bottom line is pretty simple. B-D does not, and should not be interpreted to, modify black letter patent law. It is no more and no less than a statute designed to ensure that the default position is based upon “licensing”. In my view Stanford’s screwup is no good reason to try and offer up a contruction of B-D that does violence to the original purposes underlying B-D, thus creating the potential for a problem where none need exist.
“and you ain’t a Basketball player either”
sarah, a b-ball fan, be still my beating heart.
Which reminds me, what should I do?
be funny:
link to youtube.com
or be poignant:
link to youtube.com
vote now.
I just have to ask, who else here has been hit by the israeli economic hit womans at the mall?
If the economy is down, it’s probably because they’re making all the money.
No Ping and you ain’t a Basketball player either. This is a Slam Dunk.
You are not a lawyer, are ya bob?
“With this Constitutional backstop, there is no way that the university can be the original rights-holder.”
Not true. Maybe article 1.8.8 is not the only constitutional provision that could authorize congress to do this. And on a related note, who’s to say that congress can’t set up a scheme where title automatically passes to the university under government research contracts (even if the inventor is still the original rights-holder), allowing the university to retain title?
Wow! What a hornets nest this case seems to have stirred.
Sometimes it is helpful to go back to fundamental principles developed at common law. A classic Supreme Court opinion in a case decided almost a century ago, but still cited quite often, is STANDARD PARTS CO. V. PECK, 264 U.S. 52 (1924).
Standard Parts had acquired the Hess-Pontiac Spring and Axle company and assumed that it owned the rights to an invention of William J. Peck. Mr Peck had been hired by the Hess Co. to help it develop a new “front spring”. When hired, Mr. Peck signed an agreement which was silent as to ownership rights to any invention. So Mr. Peck said that he owned his invention.
The Supreme Court decided that Mr. Peck did “nothing more than he was engaged to do and paid for doing.” So Mr.Peck had transferred his right to ownership to his employer.
I devoted a couple of years to the study of ownership rights to ideas and inventions in preparation for my book “Who Owns What Is In Your Head?”
The Bayh-Dole Act is not necessarily inconsistent with the constitutional right of an inventor to his invention–provided that an inventor may transfer his ownership rights as a condition of employment. The transfer does not depend on a written agreement if the inventor, like Mr. Peck, did what he was hired to do and paid for.
Conceivably, Bayh-Dole may be construed to apply to inventions for which the inventor had been hired, and his work had been sponsored by federal funds.Of course, Roche questions whether the work of the Stanford U. employee, while at Cetus, was sponsored with federal money. That is a fact issue.
Whether the employee/inventors’ first agreement with Stanford was subordinate to his later agreement with Cetus is a legal issue. The latter is important to Universities and Businesses that require a transfer of rights to inventions made in the course of employment,as a condition of employment. Those agreements may be vulnerable if superceded by subsequent assignments by the employee.
But facts and pragmatic legal issues are boring. I do not mean to take away the fun arguing a constitutional issue.
Stan
ping; no deal what eye am throwuing out is the potential of correction of injustice the largest one in history. what your throwing is sarcasm.First you dont believe the story so I have to create the defences then you critisize the amount of references to the sarcasm you have created. What part of your the problem dont your understand.
“why dont you quit making any refrence to me on this blog.”
Sure – as soon as ya stop wastin blog space on your whinin, I’ll stop throwin at ya – deal?
Now get busy ta savin your grandfather’s good name that ya be smirchen.
ping; I am just throwing back what you throwing at me why dont you quit making any refrence to me on this blog.
You be the one that needs to stop blamin Mikey.
So it comes down to ya squanderin everythin that your grandfathers did – they must be rollin in their graves at what ya let slip through your fingertips.
World’s greatest inventor – NOT. Ya can’t even invent a ways to safekeep what ya have.
Ya just want to come on these boards and whine and cry abouts how unfair everythin in life is.
Don’t bother – weza don’t want to hear it. Go and invent yourself out of your dilemma and stop botherin us.
Ping: I and my grandfathers already invented everything you got that does work. eye anm fresh outa money to even file another patent so blame the economy or lack of investors not me
Mikey – cepts I ‘ve never asked anythin directly of you for me – I aint wantin your money, or inventions for me – alza I want is for you to actually invent somethin that works and to stop whinin how so many things are against you. Overcome instead of whinin. Capish?
In many vital areas research isent recieving break through conceptions because the comanies are concerned about retaining secresey causing non involvement of consultants who could advance the project, so funds continue to be squandered. Government funds shouldent be alocated to these companies and consultnts should recieve a 15% of savings for breakthroughs cost reducing development
Ping no I am a business man who sells a valuable product. Your a thief trying every dirty trick in the book to get intellectual property for nothing and cut me out of the deal what part of your a rip dont you understand. Eye havent gotten any of that money thats why I need an 200 attorneys. I earn money by selling what i am best at producing. I encourage you to do the same within the framework of the law of course.Beggin nothing.
ping I already invented what. Sign up on my customer list as long as ya aint a mobster.
Mikey, forced work = indentured servitude.
C’mon Mikey – it seems that you are the thieve wantin other peoples money. Why don’t you earn some of that money? why you always be beggin here?
Mikey,
You already invented that – now invent somethin that works.
We are waitin.
Ping no my plan forces corperations to pay for inventors attorneys Just make it a yearly patent assesment into a fund.No its not his fault its people like you who keep pulling the system in the wrong direction. I got lotsa good inventions for sale you got money.See my website we can custom concieve and you can startup in 90 days.
IN the blythe dole act the rights of the inventor should not be able to be extinguished due to government involvment the true inventor needs to stay connected with the invention to ensure sucessful development. Government involvement shouldent occur unless private sources are unavailable. Universities shouldent profit instead of the inventor. government funds should only be allocated when efficient development can occur. Only top viable projects selected by expert comittie should be government funded .The governments repayment intrests should come first before the inventor as long as he remains project involved.Universities should profit the same as a private competing facility hired by the inventor
“so its not indentured servatude.”
But Mikey, your plan forces the people to work contingent, and that is indentured servitude.
Also, I see ya throwing your great grandfather under the bus, as if he invented the justice system, it’s his fault that that same system fails you so badly.
Ya know, maybe its time for you to stop all your whining and actually invent somethin that works. Get busy – ya got lotsa work to do.
Ping; no I dident invent indentured servatude and my coment doesent advocate it but my great grandfather invented the justice system and this present patent ststem is any thing but.To work contingent you have to believe in the merits of the case and risk your time so its not indentured servatude. Corperations are using money to tilt the justice system so let them consider it a fine for previous abuses.
lol AI – truly I lol’d.
Dear Ping:
AI,
Iza surprised that ya didn’t fit in Bilski 14
____
I think you are confusing me with Diehr Dierhrist? Besides, mentioning Bilski 14 to the anti patent crowd is like flashing a cross to a Vampire, or a profit statement to Mooney.
IANAE: I do not work for anyone. Yet I have several products on the market that I am not getting paid for.
I think you are naive, you think INVENTORS are getting compensated for their contribution.
I would say that in most cases the inventors get the short end of deal. WHEN there is a deal. Most companies tell you right to your face “Sue Me. I will keep you in court so long you will be broke” What part of that is Justice???
This needs to be fixed.
We also had the patent office give another inventor a patent when we filed first. HOW DO YOU FIGHT THE GOV. THEY PROTECT THEIR OWN
Mikey,
Try again, but this time try inventin somethin that will be legal. Or did you invent indentured servitude as well?
OK ping;I say we draft patent reform that requires 50% of patent attorneys to work for inventors. Presently 100% are corperate only or wont work contingent. Charge the corperations to level the legal playing field. Just the fear of this will get them to bargain fairly to begin with.Is there two hundred attorneys in the house.
The Bayh-Dole act is flawed. Consider the case where there is
no assignment of the invention
to the university. What right does the government, through the Bayh-Dole
act, have to give the benefits of the invention to the university and away
from the inventor. Seems like a violation of the constitution to me?
o.k. ping; I say require 50% of practicing patent attorneys to represent inventors. Presently 100% work for corperate. Its the only to level the legal playing field. Charge wealthy corperations to bring them closed in money assets to inventors.Is there 200 attorneys in the house.
C’mon Mikey, invent something to take care of this already – it’s been like a thousand MRT years since I’ve seen ya recognize the problem. What the he lls takin ya so long?
Ianie; remember I am not the inventor because I am not named on the patents so eye couldent possibly be on strike.Strikes involve employees not bankrupt businesses due to your and thousands of disbelieving potential customers and those who dont want to deal due to money already owed for previous ip.Ive been explaining to you that a conspericy exists to exclude both through intimidation and corruption within the office.Big business has also convinced these the patent office that invention occures in the r+d departments instead of out of my mouth they form interoffice inventor conception packs to steal inventions.They also pick inventions from overherd and espionoged conversations and my intrernet usage.In total about 40 different methods.I am not perfectly willing to invent without compensation they are murdering and intimidating like you in order to steal and thats not half way legal or the correct incentive to invent.The previous and present patent system now needs to compensate for the attrosities of the past is is called justice and award new limited patents.
a patent should be granted in appriciation for the conception that improves everyone who uses its life.He also doesnt understand that without it it would not exist and no one can use it.
That’s the part I don’t understand. You and your family have been inventing pretty much everything of significance for two centuries now, and I don’t see your name on a single issued patent. Why do we need patents as an incentive to innovate, if you’re perfectly willing to invent the entire world anyway?
Oh, wait, I see it now. It’s right there on your website.
“If we are successful in obtaining issued patents […], we will continue to produce intellectual materials. If not, we must close our doors and human advancement, in essence, will stop.”
Congress, if you’re listening, patent reform is more important than you think. The inventor is threatening to go on strike.
Ianae; you should realize that the founding fathers in the 1830 articles of confederation put the power in the high federal/high royal for a very good reason.When it comes to making the right decisions there is only one true wiseman thats the worlds only inventor of significance.me no conciet intended just the facts.Presently oboma doesent recognize the asset he is wasting he gets my ip coming in from othere sources. He uses the term beligerently no one ownes a monopoly on wisdom this is retartive compared to what could occur. This is why he is so anti inventor He doesent comprehend that a patent should be granted in appriciation for the conception that improves everyone who uses its life.He also doesnt understand that without it it would not exist and no one can use it. Also he doesent understand that no one is under obligation to use it so they can obstain from use in most cases and there is no cost to them.
ianae;Yes that is corrected in my new patent reform plan.Yes you may have some therserary subliminal meanings such as my own security measures.
…except the inventions that protect your other inventions.
Now there’s a puzzler.
Mikey, yous gots some esplainin to do.
First you have to protect the inventor and there is nothing in the patent system about that.
Sounds like a major design flaw.
Trying to correct the patent system is nearly impossible you have thousands of people pulling against you in other directions and thousands that dont believe you such as yourself you block head.First you have to protect the inventor and there is nothing in the patent system about that.The inventions all work and are in common use everywhere.
Mikey waited all of thirty minutes to respond to my post.
In MRT time, that’s like 300 years.
What took ya so long Mikey?
And whys no inventions on protectin your stuff? (unless O course, your inventions don’t work…)
Dear Jules; I of course also invented psychiatric wards and padded wall hospital rooms At port huron hospital in the 1970or 1980s just to show you the instant deversity of invention fields.Of course trying to prove that to everyone individually would take millions of years.Correcting inventorship determination methods in our patent system is the suruest way to prove this although I have cluster methods that prove it beyond astronomical ods.
Dear Mr. Thomas,
You really brigten up the place. We went from a boring gray to a very soothing padded white.
Respectfully.
ping; ya I invented that with sherry louis lambchop in detroit. Ego has become nessary to prove anything otherwise the frauds get away with everything that is probably what you would like.I have no one to blame except 200years of theiving murdering frauds and corruption and people that want it to stay that way.Of course there are layers of corruption that would have made justice impossible at any time.Also conspitacys to refuse to deal and only willing to steal makes patents worthless.
Egads,
I just realized that I am a sockpuppet of Michael R. Thomas.
“Do a better job of inventing ; impossible”
Well then you really should be mad at yourself, shouldn’t you? Ya really have no one else to blame, cause you invented almost everything that is possible. I quite imagine that you invented the EGO that prevents you from seeing (eye) the real problem here.
Think about that a while before responding – you will recognize several layers in the message, since of course, you invented such a message.
Ping; if you need any determinations of the way the founding fathers would have determined new constitional questions just ask.
Ping;Do a better job of inventing ; impossible eye have invented almost everything that is possible. Eye could use an army of attorneys to get the top 10000 patents back into the correct name.Is there an ATTORNEY IN THE HOUSE! Ive already invented the major types of these drugs labs subinvent new variations.
Wishful thinking EG.
“must reside, at least initially, in the contractor to prevent these two objectives from being easily circumvented”
must?
Nah – if in fact the “must” were true, then the rest of the universe of university-inventor contracts deals would not have to be worded as they are – they wouldn’t have to be worded at all.
I done shown already how the actual wording of the B-D stuff does not implicate the original ownership settings in Title 35.
And don’t blame the court for frustrating the objectives – put the blame where it belongs – on Stanford – don’t they supposedly have one the “premier” academia on patent stuff there?
Mikey,
Don’t get upset with me – Iza just something you invented – if ya gonna be upset with anyone – be upset with yourself and do a better job of inventin. Iza suggest that ya focus on inventin some psychotropic drugs.
AI,
Iza surprised that ya didn’t fit in Bilski 14 somehow in your addition to the thread. But I also observed the (C)onstitutional authority picture in my reference to how the B-D act was made law (it was not a constitutional amendment and thus must be inferior and cannot serve to frustrate the ownership implication of who is awarded rights in a patent.
DC: “The legal basis for inventor rights is derived from constitutional principles that give Congress power to enact patent laws that grant exclusive rights “to inventors.” US Constitution, Article I, § 8, cl. 8.”…………. The US Constitution helps break this seeming conflict by focusing on inventors as the original recipient of rights. ”
AI: In addition, it’s pertinent to point out that it’s” WE THE PEOPLE”, as highlighted in the Constitution, that grants Congress the Power to enact said legislation, thus establishing an Inventors Constitutional Right to a patent.
EG,
I am not inclined to take B-D quite so literally for any number of reasons, not the least of which are:
1. To say that title resides by operation of law in a contractor to a funding agreement strips title from lower tier subcontractors, which even the federal agencies do not accept as an appropriate interpretation. See, e.g.:
48 C.F.R. PART 52–SOLICITATION PROVISIONS AND CONTRACT CLAUSES
2. It would likewise create a prima facie conflict, in the case of funding agreements with the Department of Defense, with 10 U.S.C. 2320, which differentiates between the rights of contractors and subcontractors (at any tier).
I cannot speak to how universities handle compliance with USG funding agreements (based upon what I have read in Stanford’s case, apparently not very well), but I can speak with authority concerning how such matters are handled under contracts for the performance of R&D work with ordinary businesses and individuals.
Contractors and subcontractors are expected to have agreements in place with employees sufficient to preserve the rights that are associated under B-D with the USG, contractors are expected to handle all the required disclosures/paperwork/etc. by dealing directly with the USG, subcontractors are free to bypass contractors entirely and deal directly with the USG even though privity of contract is absent, contractors may not demand by any means rights in the inventions of subcontractors (at any tier), and so on and so on.
As I noted in one of my above comments, B-D is built upon the assumption that the party to a funding agreement (including its subcontractors at any tier) has established agreements in place assigning rights to at least subject inventions in the contractor. Where the system has the potential to fail is in situations where contractors/subcontractors have failed to have such agreements in place. In these situations it is beyond reasonable argument that the USG has a right to pursue an action for breach of contract. It is, however, quite another matter to interpret B-D as substantively and intentionally amending Patent Law 101.
If there is recourse to be had by Stanford, to rely upon B-D in such a slavish and counter-intuitive manner is folly in my opinion. There are a host of existing legal doctrines that can accomplish the same result without grinding a fundamental underpinning of patent law into the ground.
Ping: wow my sarcasm is part of the grand comspiracy.Ping with your attitudes you have no business being associated with the patent business or basic honesty.As far as the constitution goes You will notice it was discovered in 1958 not on display since 1776 I remember speaking a text at a friend of the familys house into a tape recorder. I think I did the amendments or some of them to and miranda rights later also.I was the correct person to concieve it as the high federal. Yes ping controlling greed is dificult I need a small army although I invented the national guard I might need to call on them to do the job.I am trying to correct the ability of these vermin to perpetrate their crimes with patent reform but with incoherent mobsters like you and many others it has been dificult.People abusing the cival rights I gave them are making obtaining justice nearly impossible through this corrupt patent system.
EG, no doubt a reasonalbe construction of the statute. But it rips from other owners their property without compensation, shreds prior contract obligations, and disrupts reliance interests in other cases.
Imagine I have filed a patent application on my invention and may even have a patent on it. Gov. contractor calls up, seeing my patent, and asks for a license. They then build the first prototype.
Under the reasoning of the government and you, EG, the Government and Stanford now own my patent. I say, go pound sand, becase there is no way in Hades you can take my patent without my consent. I’ll see you in court.
Thanks sarah; now if I could just get obama and the business community to listen the country could move forward instead of squandering and going nowhere.
I believe you Michael, are truly out of this world. Glad to here you are so prolific.
I finally have some time to way into this discussion (sorry for the length, but it takes a bit to illustrate what’s wrong with the Federal Circuit’s decision):
Michael S. is correct that Patent Law 101 says that rights to the invention normally reside with the inventor until assigned. The problem is that Bayh-Dole changes the normal Patent Law 101 on where invention rights normally reside. That’s where I agree with what Malcolm said: when you take money from the feds, it comes with strings attached and that’s what happens under Bayh-Dole with regard to where the invention rights reside in what are called “subject inventions” which is what is involved in the Stanford case.
There are three significant objectives in Bayh-Dole: (1) allowing retention of invention rights by the contractor (e.g. a university) receiving federal funds that lead to “subject inventions”; (2) insuring that the feds’ rights in those “subject inventions” are protected; and (3) encouraging commercialization of those “subject inventions.” The first two objectives are definitely at play in the Stanford case, and why rights to “subject inventions” must reside, at least initially, in the contractor to prevent these two objectives from being easily circumvented.
What the Federal Circuit did in its ruling in Stanford was to allow easy circumvention of these two objectives and based on what? A flimsy Visitor’s Confidentality Agreement (VCA) with a “boilerplate” assignment provision that just happened to have the “right” wording in the Federal Circuit’s view. While Stanford could have phrased its assignment agreement more artfully, the fact is Stanford at least tried to do what is required by Bayh-Dole to protect both its rights and those of the feds. That comes out clearly in Bayh-Dole regulation 410.14(f)(2) which requires the contractor (i.e., Stanford) to make sure its employees (including university researchers) understand and agree in writing to disclose “subject inventions” and to protect the feds rights in these “subject inventions” including executing necessary paperwork to file patent applications on those “subject inventions.” That would necessarily include executing appropriate assignments. By allowing this “boilerplate” assignment in the VCA to trump Stanford’s reasonable effort to comply with this Bayh-Dole reg because of “inartful wording” of Stanford’s assignment, the Federal Circuit has frustrated these two key objectives of Bayh-Dole.
Also, the Federal Circuit’s ruling is at odds 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.
Even more significantly, the Federal Circuit’s ruling 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 in this case) without approval of the respective federal agency. That a university researcher 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 very strange to me.
The Federal Circuit’s ruling also cannot be so easily reconciled with the holding in Central Admixture. In essence, this ruling 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.
SCOTUS may view Bayh-Dole’s impact differently from how I and others view it. But I won’t be surprised if SCOTUS agrees with the DOJ’s position that title to this “subject invention” must reside with Stanford by virtue of what Bayh-Dole says and in view the two objectives of Bayh-Dole noted above,