37 CFR 401.14 - Standard patent rights clauses

Cite as37 CFR 401.14
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64 practice notes
  • Department of Commerce Pre-Award Notification Requirements for Grants and Cooperative Agreements
    • United States
    • Federal Register December 17, 2012
    • 17 Diciembre 2012
    ...at 35 U.S.C. 200 et seq., except as otherwise required by law. The specific rights and responsibilities are described in more detail in 37 CFR part 401 and in particular, in the standard patent rights clause in 37 CFR Sec. 401.14, which is incorporated by reference into awards. Recipients o......
  • Defense Department,
    • United States
    • Federal Register April 30, 2002
    • 30 Abril 2002
    ...(c) To provide for the license described in paragraph (b) of this section, your TIA generally would include the patent-rights clause that 37 CFR 401.14 specifies to implement the Bayh-Dole statute's requirements. Note (1) The clause is designed specifically for grants, contracts, and cooper......
  • Financial assistance rules: Grants and cooperative agreements with for-profit organizations; administrative requirements,
    • United States
    • Federal Register August 21, 2003
    • 21 Agosto 2003
    ...the world by or on behalf of the Government of the United States (including any Government agency); ``march-in rights'' as set forth in 37 CFR 401.14(a)(J)); preference for U.S. industry as set forth in 37 CFR 401.14(a)(I); periodic reports upon request, no more frequently than annually, on......
  • Grant and agreement regulations: Technology investment agreements,
    • United States
    • Federal Register August 07, 2003
    • 7 Agosto 2003
    ...(c) To provide for the license described in paragraph (b) of this section, your TIA generally would include the patent-rights clause that 37 CFR 401.14 specifies to implement the Bayh-Dole statute's requirements. Note (1) The clause is designed specifically for grants, contracts, and cooper......
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7 cases
  • Fenn v. Yale University, No. Civ.A.3:96 CV 736.
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Connecticut)
    • 29 Septiembre 2004
    ...so long as all resulting profits are used to fund additional scientific research and development. See 35 U.S.C. § 202(a); see also 37 C.F.R. § 401.14(b) ("[t]he Contractor may retain the entire right, title, and interest throughout the world to each subject invention subject to the provisio......
  • Central Admixture Pharmacy v. Advanced Cardiac, No. 2006-1307.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • 3 Abril 2007
    ...invention." '515 patent col.1 ll.23-26. 4. The regulation at issue in Campbell Plastics is in relevant part substantially the same as 37 C.F.R. § 401.14, which was incorporated into the grant agreement between UC and NIH. Compare 48 C.F.R. § 52.227-11 with 37 C.F.R. § 5. The result might be......
  • Board of Trustees of Leland v. Roche Molecular, No. C 05-04158 MHP.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • 16 Abril 2007
    ...these cases presumably applies equally to situations where a government-funded researcher declines to retain title to the invention. 37 C.F.R. § 401.14(d) (1) (providing that the government may obtain title to the invention "[i]f the contractor fails to disclose or elect title to the subjec......
  • United States v. Nayak, CRIMINAL ACTION 5: 20-144-DCR
    • United States
    • United States District Courts. 6th Circuit. United States District Court of Eastern District of Kentucky
    • 5 Mayo 2022
    ...because it was made with the support of DOE grant funding. [See id. at p. 9.] Willis testified that these rights are set forth in 37 C.F.R. § 401.14, [7] and include, inter alia: (1) a nonexclusive use right; and (2) the right to step into the shoes of the patent holder should it decide to ......
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19 firm's commentaries
2 books & journal articles
  • Essential Aspects for Licensing of Federally Supported Subject Inventions
    • United States
    • ABA General Library The technology transfer law handbook
    • 1 Enero 2014
    ...15. Special note should be made that, in accordance with Bayh‑Dole, the university cannot assign title to a subject invention. 37 C.F.R. § 401.14(k). 16. If no grant of the right to “have made” is intended, this should be expressly stated even if it is speciied that no sublicense rights are......
  • University-Originated Intellectual Property
    • United States
    • ABA General Library Intellectual Property and Technology Due Diligence
    • 1 Enero 2018
    ...7. The Bayh-Dole Standard Patent Rights Clause (SPRC) for university work is established by the Department of Commerce and appears at 37 C.F.R. § 401.14(a). 8. 10 How. 477, 493 (1851). 9. 35 U.S.C. § 202(a) (emphasis Title/Ownership 611 A. Is the Inventor a University Employee? As discussed......
1 forms
  • Provisional Application for Patent Cover Sheet-SB/16
    • United States
    • United States Patent and Trademark Office, Patent Trial and Appeal Board
    • Invalid date
    ...In accordance with 35 U.S.C. 202(c)(6) and 37 CFR 401.14(f)(4), the specifications of any United States patent applications and any patent issuing thereon covering the invention, including the enclosed provisional application, must state the ‘‘This invention was made with government support......

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