Intellectual property includes patents, copyrights, trademarks, and related proprietary matters. Grantees and contractors are required to adhere to the Bayh-Dole Act, which specifies reporting requirements for all inventions resulting from federal funds. This legislation permits NIFA’s grantees and contractors to retain ownership of inventions made under federally funded research and contract programs, while also giving the government license to the invention.
Overview of The Bayh-Dole Act
The Bayh-Dole Act requires government grantees and contractors to report federally-funded research intellectual property activities to the funding agency.
The purpose of the Bayh-Dole Act is to facilitate and accelerate the transfer of technologies and other such products resulting from Federally-funded research into public use. It also takes advantage of market based incentives of the patent and plant variety protection process. Bayh-Dole does this by allowing the Federal funding recipient (i.e. contracts, capacity and non-capacity grants, or cooperative agreements) to retain invention rights as long as the recipient complies with certain conditions and procedures.
What Ownership rights are granted?
The Bayh-Dole Act grants to the recipient of Federal research funding the entire right, title, and interest throughout the world to inventions covered by the Act, subject to the conditions of the Act.
It also grants to the Federal government a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the invention throughout the world (35 USC 202(c)(4)).
Overview of Federal Intellectual Property Reporting Requirements
For a complete listing consult 37 CFR Part 401
| Time | Patent and PVP Reporting Requirement | Reference in the Bayh-Dole Act |
|---|---|---|
| 2 months after the institution learns of an invention | Submit invention disclosure in iEdison | 37 CFR Part 401.14(c)(1) |
| 2 years after the disclosure of an invention | Notify the agency whether electing title in iEdison | 37 CFR Part 401.14(c)(2) |
| Election of title or when reporting a PVP application | Submit confirmatory license in iEdison | 37 CFR Part 401.14(f)(1) |
| 1 year after the election of title | File patent and PVP application, notify agency of the application in iEdison | 37 CFR Part 401.14(c)(3) |
| Acknowledgement of Federal support | File a government support clause in iEdison; federal support must be acknowledged in all patent and PVP applications, patents, and PVP certificates | 37 CFR Part 401.14(f)(4) |
| Issuance | Notify agency upon issuance of patent grant and issuance of PVP certificate in iEdison | 37 CFR Part 401.14(f)(2) |
| Annual Utilization Report | Submit Utilization Report on iEdison | 37 CFR Part 401.14(h) |
Request for Title Election Extensions
While one of the purposes of the Bayh-Dole Act is to accelerate the transfer of technology developed from Federal research funding into use, NIFA recognizes that sometimes extensions of time are required to address the specific actions required by the Bayh-Dole Act. Requests for extensions of time may made via iEdison.gov. Requests should document actions taken on the invention and the reason an extension is required.
Transfer of Rights to the Inventor
Subject to certain conditions set forth by the regulations appearing in 37 CFR 401.9, employee-inventors may request to retain title to their inventions to which the grantee/contractor does not elect to retain title. USDA requires that an inventor certification form be completed by the inventor(s) before NIFA will consider an inventor's request to retain title to an invention. This is to ensure that inventors who are permitted to retain title to inventions made with NIFA funding understand their obligations to the government to file for patent protection and carry out other responsibilities set forth by 37 CFR 401.9 and to initiate USDA consultation with the grantee/contractor. It is USDA policy that its approval of the inventor's request to retain title is equivalent in effect to election of title to the invention by the grantee/contractor.
Among the responsibilities under 37 CFR 401, the inventor(s) has one year from the date of approval by USDA to seek patent protection as set forth by 37 CFR 401.14 (c)(3). Rights to the invention will revert to the government after one year unless an extension of time is requested from NIFA following the procedures on NIFA's Intellectual Property web page. Inventors who wish to retain title to their invention(s) should complete the inventor certification form. The responsible official at the grantee/contractor organization must then complete and sign the lower portion of the certification.
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Related Resources
- Federal Regulations for Intellectual Property
- Intangible property/Copyrights (7 CFR 3019.36)
- Rights to inventions made by grantees that are not covered by 37 CFR 401 (7 CFR 3015.175)