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Intellectual Property

Peter M. Watt-Morse


Peter M. Watt-Morse

Morgan, Lewis & Bockius, LLP

Pittsburgh, PA

412 / 560-3320

pwatt-morse@ morganlewis.com

morganlewis.com



Question I have funded research by a university. Why does the university retain ownership of the resulting inventions?

Question The Bayh-Dole amendments to the Patent Act prohibit non-profit universities from transferring ownership of inventions that result from research that is funded in whole or in part by the federal government. In addition, some universities have adopted policies which limit assignment of inventions for all university-related research based on notions of protecting public investments and promoting education and research. Finally, the tax laws applicable to non-profit organizations limit the terms under which a university may transfer technology to private organization.







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