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rmeman2k

Bayh-Dole Act

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My DoD agency awarded a commercial contract to a large U.S. corporation to develop a soldier wearable power supply. The corporation issued subcontracts to a few U.S. universities and included a provision pertaining to intellectual property where the corporation is asking for the license rights developed under the agreement between it and the subcontractor. A few universities take exception to the intellectual property provision based on the Bayh-Dole Act, 37 CFR part 401 and Internal Revenue Service Procedure 07-47. As a result of this issue the Prime has now asked if the government intends to include the Bayh-Dole Act as a specifically identified flow-down requirement; or, is it the government?s position that the Bayh-Dole Act does not apply.

The government did not require the prime to subcontract with the universities. My reading of the act seems to indicate the Act applies. Any thoughts?

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My DoD agency awarded a commercial contract to a large U.S. corporation to develop a soldier wearable power supply. The corporation issued subcontracts to a few U.S. universities and included a provision pertaining to intellectual property where the corporation is asking for the license rights developed under the agreement between it and the subcontractor. A few universities take exception to the intellectual property provision based on the Bayh-Dole Act, 37 CFR part 401 and Internal Revenue Service Procedure 07-47. As a result of this issue the Prime has now asked if the government intends to include the Bayh-Dole Act as a specifically identified flow-down requirement; or, is it the government?s position that the Bayh-Dole Act does not apply.

The government did not require the prime to subcontract with the universities. My reading of the act seems to indicate the Act applies. Any thoughts?

Upon further review it appears that my agency should not have awarded a "contract for commercial items" to "develop" a soldier wearable power supply. Ordinarily, "contracts for commercial items" are just that (buying refrigerators/staplers) and therefore the clauses associated with them do not include the R&D clauses such as patent rights clauses. However, here the SOW seems to be for the development of an item, not for purchase of a commercial item. Therefore, if this contract was an R&D contract it would have required the patent rights clauses and their "flow-down" to the subcontractors as pointed out by the universities.

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