What are ‘march-in rights’ in government-funded inventions?
What are ‘march-in rights’ in government-funded inventions? ‘March-in rights’ are a significant aspect of government rights in federally funded inventions. As described in MPEP 310, these rights allow the government to require the contractor, assignee, or exclusive licensee of a subject invention to grant a license to a responsible applicant under certain circumstances. The MPEP…
Read MoreWhat are the reporting requirements for contractors under the Bayh-Dole Act?
Contractors have specific reporting requirements under the Bayh-Dole Act: Disclose each subject invention to the Federal agency within 2 months after the inventor discloses it in writing to contractor personnel responsible for patent matters. Elect in writing whether or not to retain title to any subject invention by notifying the Federal agency within 2 years…
Read MoreWhat are march-in rights under the Bayh-Dole Act?
March-in rights are a provision of the Bayh-Dole Act that allow the government to intervene in certain circumstances: The government can require the contractor or exclusive licensee to grant a license to a responsible applicant. If the contractor or licensee refuses, the government can grant the license itself. These rights are exercised only in specific…
Read MoreWhat are the reporting requirements for subject inventions under government contracts?
What are the reporting requirements for subject inventions under government contracts? Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310: “The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to…
Read MoreHow does the government’s march-in rights affect contractor-owned inventions?
How does the government’s march-in rights affect contractor-owned inventions? The government’s march-in rights are a significant aspect of federally sponsored research and development contracts. As outlined in MPEP 310: “The government has the right to require the contractor to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible…
Read MoreHow is an arbitration award enforced in patent cases?
Enforcement of arbitration awards in patent cases requires specific steps as outlined in 35 U.S.C. 294(d) and 37 CFR 1.335. Key points include: The patentee, assignee, or licensee must file a written notice of the award with the USPTO Director. The notice must include details about the patent, parties involved, and a copy of the…
Read MoreWhat are the government’s rights in inventions made by nonprofit organizations and small businesses?
What are the government’s rights in inventions made by nonprofit organizations and small businesses? The government’s rights in inventions made by nonprofit organizations and small businesses under federally sponsored research are specifically addressed in MPEP 310. According to the manual: “A funding agreement may provide that the government shall have the right to require periodic…
Read MoreWhat information must be included in a notice of arbitration award?
According to 37 CFR 1.335(a), a notice of arbitration award filed with the USPTO must include the following information: Patent number Names of the inventor and patent owner Names and addresses of the parties to the arbitration A copy of the arbitration award The regulation states: “The notice must set forth the patent number, the…
Read MoreCan an arbitration award be modified, and how is this reported to the USPTO?
Yes, an arbitration award can be modified by a court, and this modification must be reported to the USPTO. The process is outlined in 35 U.S.C. 294(c) and 37 CFR 1.335(b): If a court modifies an arbitration award, the party requesting the modification must file a notice with the USPTO. The notice should be filed…
Read MoreWho is responsible for filing the notice of arbitration award with the USPTO?
The responsibility for filing the notice of arbitration award with the USPTO is primarily assigned to the patent owner or their representatives, but there are provisions for other parties to file if necessary. According to 35 U.S.C. 294(d) and 37 CFR 1.335: The patentee, assignee, or licensee is primarily responsible for filing the notice. If…
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