Licensing Technology Developed with Public Funds: Should Patent Assertion Entities Receive Exclusive Licenses to Federally Owned Patents?

Licensing Technology Developed with Public Funds: Should Patent Assertion Entities Receive Exclusive Licenses to Federally Owned Patents?

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The utilization of Bayh-Dole to license government-owned patents to patent assertion entities raises interesting policy considerations. This article, co-authored by Seth Waxman and published by the ABA Section of Intellectual Property Law in the November-December 2016 issue of Landslide Magazine, provides a brief introduction and overview of these issues using some illustrative patent licenses granted by federal agencies to patent assertion entities.

When it passed the Bayh-Dole Act in 1980,1 Congress aimed to "promote the utilization of inventions arising from federally supported research or development." The act's better-known provisions permit universities, small businesses, and nonprofit institutions that use federal funds for research to retain title to patents on inventions discovered through that research. But for patents that the United States owns, the act also explicitly authorizes federal agencies to issue nonexclusive, exclusive, and partially exclusive licenses if certain conditions are met. Read full article

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