Dear Grant and Business Managers,

 

The Bayh-Dole Act or Patent and Trademark Law Amendments Act (Pub. L. 96-517, December 12, 1980) deals with intellectual property arising from federally funded research.  The Act is applicable to all grants, contracts, and cooperative agreements made by federal agencies to nonprofit organizations and small business. The key change made by Bayh–Dole was in ownership of inventions made with federal funding. Before the Bayh–Dole Act, federal research funding contracts and grants obligated inventors to assign inventions they made using federal funding to the federal government. Bayh–Dole permits a university, small business, or non-profit institution to elect to pursue ownership of an invention in preference to the government.

 

The Act is codified in 35 U.S.C. § 200-212 and implemented at 37 CFR 401.14 (Standard patent rights clauses); 48 CFR 52.227-11 (Patent Rights – Ownership by the Contractor).

 

35 U.S.C § 200 - Policy and objective

It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development; to encourage maximum participation of small business firms in federally supported research and development efforts; to promote collaboration between commercial concerns and nonprofit organizations, including universities; to ensure that inventions made by nonprofit organizations and small business firms are used in a manner to promote free competition and enterprise without unduly encumbering future research and discovery; to promote the commercialization and public availability of inventions made in the United States by United States industry and labor; to ensure that the Government obtains sufficient rights in federally supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions; and to minimize the costs of administering policies in this area.

 

Sec. 212. - Disposition of rights in educational awards

No scholarship, fellowship, training grant, or other funding agreement made by a Federal agency primarily to an awardee for educational purposes will contain any provision giving the Federal agency any rights to inventions made by the awardee.

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I am forwarding NCURA’s email with a link to two short videos, published by NCURA educators, that summarize the Act.

 

NCURA publishes weekly short videos on various pre-award, post-award and compliance topics, which can be viewed any time by visiting https://www.youtube.com/user/NCURA1959  It is an excellent free resource available to all research administrators.