Bayh-Dole and Federally Funded Inventions

Under the Bayh-Dole Act of 1980, grantees are obligated to disclose each new invention conceived or first reduced to practice during the performance of a federal grant, contract, or cooperative agreement. This requirement also applies to work that may be only partially funded by federal funding. This provision, however, does not apply to federal awards that are primarily for the training of students and postdoctoral scientists.

Under the Bayh-Dole Act, the University is required to:
  • Have written agreements with its faculty and technical staff requiring the disclosure and assignment of inventions.
  • Disclose each new reported invention to the sponsoring agency within two months.
  • Determine, within two years if the University will retain title to the invention. The time frame for election of title may be shorter in cases where the invention is publicly disclosed. In cases where the university does not elect title, the federal government retains title to the invention.
  • File a patent application within one year, or prior to the end of any statutory period in which valid patent protection can be obtained within the United States for those inventions where the University elects to retain title.

There are also compliance requirements presented in Bayh-Dole that must be met when the University licenses inventions discovered in the performance of federally funded research:

  • Include within the specification of the patent a notification of government support, and government rights in the invention.
  • Provide the government a non-exclusive, non-transferable, irrevocable, paid-up right to practice or have practiced the invention on behalf of the U.S. government.
  • Report periodically on the utilization of the invention as requested by the sponsoring agency.
  • Require companies that hold an exclusive license to a patent that involves the sale of a product within the United States to substantially manufacture the product in the U.S.

Please see the EMU Technology Transfer Policy for additional details about the University’s technology transfer program.

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Content Posted 06/02/2010 | Design Posted 04/17/2012