New Proposed Rules Regarding Government Rights In Federally Funded Research

Currently, the regulations of the Bayh-Dole Act apply to all small business firms and nonprofit organizations, in particular educational institutions, that have entered into a federal funding agreement. However, in light of recent overarching changes to patent law, such as the America Invents Act, a set of proposed rule changes to Bayh-Dole regulations are about to be implemented.

For small business firms and nonprofit organizations that receive federal funding in developing technology and scientific discoveries, the Bayh-Dole Act is intended to make it easier to participate in federally supported programs by guaranteeing the protection of the intellectual property that is created in these firms and organizations. Many educational institutions that receive federal funding for scientific research and development are already aware that the regulations of the Bayh-Dole Act require that the Government has certain rights in inventions developed at least in part with federal assistance. The proposed rule changes will adjust the obligations of these educational institutions, and other organizations that are receiving federal support for work.

The proposed rule changes clarify that Bayh-Dole regulations apply to the first provisional application or nonprovisional U.S. national application, or international PCT application that designates the U.S. The intent of this clarification is to make it less costly and burdensome for small entities to comply with Bayh-Dole regulations. The proposed rule change will enable entities to comply with 37 CFR § 401.14(c)(3), which requires filing a patent application on any prospective invention within one-year after election of title to that invention, by simply filing a provisional application. This should have the effect of reducing formatting and other initial formal costs of patent prosecution to small entities when they are pursuing a federally supported invention. However, the proposed rule changes also allow federal agencies to shorten certain time limitations applicable to election of title to a federally supported invention.

At present, the Bayh-Dole regulations require election of title in a federally supported invention within two years of the initial disclosure to a federal agency. The proposed rule changes allow a federal agency to step in and shorten this period of time to protect the government's interest if need be. In particular, where a proposed invention has been published, publically used or...