Bayh-Dole Act Revisions

| Eric Furman, Ph.D.Robert J. Hilton, Ph.D.

On May 14, 2018, several important revisions to regulations of the Bayh-Dole Act (University and Small Business Patent Procedure Act of 1980, codified as 35 U.S.C. § 200) went into effect. The final revisions were published in the Federal Register of April 18, 2018.

The Bayh-Dole Act relates to intellectual property arising from federal government-funded research, and permits a federally funded university, small business, or non-profit institution to elect to pursue ownership of an invention in preference to the government, rather than obligating inventors to assign inventions to the federal government.

The recent revisions to the Bayh-Dole Act clarify certain definitions, reduce compliance burdens, address co-inventions between funding recipients and federal agencies, and simplify the electronic reporting process. Institutions creating IP under the Bayh-Dole Act should become familiar with the new provisions, because some have important implications for how federally funded institutions need to act. Below are several of the new revisions:

1. The 60-day limit within which the government may seek ownership of an invention where the contractor fails to provide appropriate disclosure or election has been eliminated. Thus, the government now has an unlimited time period within which to assert ownership to an invention following the discovery of the contractor’s non-compliance with the Bayh-Dole Act’s disclosure and election requirements.

2. The contractor is obligated to require its employees to assign rights in a subject invention to the contractor.

3. Decisions to discontinue patent prosecution must be communicated to the government within 60 days prior to the statutory deadline (an increase from the prior 30-day notice period).

4. The deadline to provide notice to convert a provisional patent application to a non-provisional patent application is 10 months from priority in order to give the government 60 days’ notice prior to expiration of the application.

The changes to the Bayh-Dole Act affect all new funding agreements executed after May 14, 2018. Funding agreements in place prior to May 14, but amended after May 14 may also be subject to the updated provisions at the discretion of the funding agency.

Institutions that are federally funded as of May 14, 2018 should review the new revisions and revisit patent prosecution strategies and timelines to ensure that they are in compliance with these new Bayh-Dole regulations to ensure they maintain compliance with federal government requirements.