37 CFR 401.14 - Standard patent rights clauses
| Cite as | 37 CFR 401.14 |
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64 practice notes
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Department of Commerce Pre-Award Notification Requirements for Grants and Cooperative Agreements
...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......
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Defense Department,
...(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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Financial assistance rules:
Grants and cooperative agreements with for-profit organizations; administrative requirements,
...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......
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Grant and agreement regulations:
Technology investment agreements,
...(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
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Fenn v. Yale University, No. Civ.A.3:96 CV 736.
...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......
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Central Admixture Pharmacy v. Advanced Cardiac, No. 2006-1307.
...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......
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Board of Trustees of Leland v. Roche Molecular, No. C 05-04158 MHP.
...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......
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United States v. Nayak, CRIMINAL ACTION 5: 20-144-DCR
...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
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Amendments To Bayh-Dole Act Regulations Tweak Rights To Inventions Made Using Federal Assistance
...C.F.R. § 401.1(b) (May 14, 2018). 11 37 C.F.R. § 401.2(b); 37 C.F.R. § 401.3(h), referencing Executive Order 12591 at § 1(b)(4). 12 37 C.F.R. § 401.14(d)(1). 13 37 C.F.R. § 401.14(c)(3). 14 37 C.F.R. § 401.14(f)(3). 15 37 C.F.R. § 401.10. 16 37 C.F.R. § 401.10(a)(2); see also 37 C.F.R. § 40......
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New Proposed Rules Regarding Government Rights In Federally Funded Research
...and burdensome for small entities to comply with Bayh-Dole regulations. The proposed rule change will enable entities to comply with 37 CFR § 401.14(c)(3), which requires filing a patent application on any prospective invention within one-year after election of title to that invention, by s......
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Updated Bayh-Dole Regulations Increase Certain Risks of Losing Title to Federally Funded Inventions
...should be reviewed by anyone who has accepted or is considering accepting government funding. Of particular note, the update to 37 C.F.R. §401.14(d)(1) eliminates the previous sixty day objection period that allowed a fund recipient to retroactively correct defects in complying with disclos......
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Bayh-Dole Regulatory Update Offers Clarifications To Federal Grantees And Contractors But Also Raises Specter Of Government Interference With Patent Rights
...regulations eliminates the government's limited sixty day objection period and instead makes the objection period indefinite. 37 C.F.R. § 401.14(d)(1). This means that a contractor's failure to timely notify the funding agency of a subject invention, or to elect title to that invention, cou......
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2 books & journal articles
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Essential Aspects for Licensing of Federally Supported Subject Inventions
...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......
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University-Originated Intellectual Property
...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
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Provisional Application for Patent Cover Sheet-SB/16
...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......