The Bayh-Dole Act or Patent and Trademark Law Amendments Act (Public Law 96-517) is the legislative basis for today’s model for university technology commercialization.
Sometimes referred to as the Homestead Act for technology, federal grant funded entities, such as the University of Virginia, businesses, or non-profit organizations are permitted to elect title to federally funded inventions in exchange for commitments to commercialization and compliance. On May 14, 2018, several important revisions to regulations of the Bayh-Dole Act went into effect:
- 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
- The contractor is obligated to require its employees to assign rights in a subject invention to the contractor.
- 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).
- 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, 2018 but amended after May 14, 2018 may also be subject to the updated provisions at the discretion of the funding agency.
Bayh-Dole at UVA
UVA has established a procedure under the Patent Policy that governs our compliance with the Bayh-Dole Act and our reporting obligations for inventions developed with federal funds. Under the policy, UVA requires research faculty members, employees, graduate students and staff engaged in research activity to sign the Patent Agreement and Assignment Form.