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I've already asked a question here about the Public Law 95-517 (The "Bayh-Dole Act"), so thanks to the response there I now have some understanding about this act. But what does it mean if a contractor who produces some patented works subject to this act elects not to "retain title"?

A specific example of this is US Patent 7,773,362. In the patent there is a section titled Statement as to Federally-sponsored research, which states;

The invention described herein was made in the performance of work under a NASA contract, and is subject to the provisions of Public Law 96-517 (U.S.C. 202) in which the Contractor has not elected to retain title.

The emphasis was added by me. What does this mean? Is the patent still protected? Who "owns" it?

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It is not the case that the company filed a patent and then decided to give it up. I looked up the patent in Public PAIR and the transmittal sheet with the original filing is on NASA letterhead. NASA filed it. I think the statement you quote means that the contractor declined their right to file for it on their own behalf (and cost) so NASA then had the right to file. It happens to now be expired due to non-payment of maintenance fees.

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  • Thanks. Side note - how did you find out that it is expired? – quant May 31 at 3:00
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    Your link was to the USPTO site. It has the patent as-published, as-granted. Other sites like google patent presents the patent as issued plus ancillary information like assignee, dates of key events - including expiration and lists later patents that - in the future, cite back to the patent in question. In this case I was looking in Public PAIR at the USPTO. It shows all of the back-and-forth document exchanges between the applicant and office and events like abandonment and expiration. – George White May 31 at 4:14

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