FAR clause 52.227-11 and DFAR 252.227-7039 for contracts
containing FAR clause 52.227-11, REQUIRE your commercial sponsor to give
you the patent rights specified at 37CFR 401.  I think Steve Erickson has a
good analysis of how they got where they did.  I suggest you point out to
them that 52.227.11 specifies exactly what rights you have and that they
MUST give you those rights if they do not have a variance from their
Contracting Officer.

Then you can negotiate with them, if you want to, the price of a license to
the company for any rights you can be persuaded to license to them.

I don't mean to sound like a mean old grouch -- but Bayh-Dole WAS enacted
in part to find a way to get rewards to Universities for being/keeping an
environment that fosters innovation, and I hate to see commercial entities
trying to gobble up all the rewards.  They could have elected to sub- to a
commercial concern rather than to a University, paid more, maybe gotten
less innovativeness, and kept all the rights.

Chuck

At 06:21 PM 2/21/00 -0500, you wrote:
>Dear FAR / DEAR guru's,
>
>I would appreciate your help and further ask that if you know of some other
>listserv where my question is most likely to find a definitive answer,
>please forward this posting to that listserv.  (In fact, please also share
>with me other listservs to which I should be subscribed.)
>
>I  have a subcontract I am negotiating with an independent nonprofit
>organization (non-university), "WXYZ", who has a R and D subsidiary. WXYZ
>received a DOE contract and wishes to subcontract to our university a
>portion of the work.  Portions of our work are potentially patentable. Not
>surprisingly, the subcontract contains a thick general provisions section of
>the flow-through clauses.  Company WXYZ has incorporated and amended these
>clauses by substituting "WXYZ" for, or adding "and WXYZ" to, the words
>"government", "contracting officer", "patent counsel" and "DOE" (depending
>upon the specific clause).  Specifically of concern to CWRU are the
>incorporated clauses dealing with patent rights and rights in data (DEAR
>952.227-11, FAR 52.227-14, FAR 52.227-17, FAR 52.227-23 and FAR 52.227-23).
>
>CWRU has no problem giving the government its rights as dictated by
>Bayh-Dole, but we have a problem giving up rights not apparantly specified
>by Bayh-Dole.  In addition, it seems that substituting "WXYZ" for
>"government" takes away rights from the government as well.
>
>I have two questions:
>
>1.  Where in FAR and / or DEAR are the rights to make these substitutions
>given to these companies?
>
>2.  How have other universities dealt with these clauses?
>
>Thanks so much for your help.
>
>Rosemary
>****************************************
>Rosemary K. Alexander
>Assistant Director, Office of Research Administration
>Case Western Reserve University
>10900 Euclid Avenue
>Cleveland, Ohio 44106-7015
>
>xxxxxx@po.cwru.edu
>Phone: 216-368-2008
>Fax:     216-368-4679
>
>
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Herbert B. Chermside, CRA
Director, Sponsored Programs Administration
Virginia Commonwealth University
PO BOX 980568
Richmond, VA  23298-0568
Express Delivery Only:
 Sanger Hall, Rm. 1-073
 11th & Marshall Streets
 Richmond, VA  23219
Voice:  804-828-6772
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Personal e-mail xxxxxx@vcu.edu
http://views.vcu.edu/ospa/

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