BAYH-DOLE ACT: REGULATIONS IMPACTING OWNERSHIP OF PATENT RIGHTS

The Bayh–Dole Act or Patent and Trademark Law Amendments Act (Pub. L. 96-517, December 12, 1980) is United States legislation dealing with intellectual property arising from federal government-funded research. Bayh-Dole permits universities that receive federal funding, such as the University of Texas at El Paso (UTEP), businesses, or non-profit organizations to elect to pursue ownership of an invention, rather than obligating inventors to assign inventions to the federal government. On May 14, 2018, several important revisions to regulations of the Bayh-Dole Act went into effect:

1. 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
2. The contractor is obligated to require its employees to assign rights in a subject invention to the contractor.
3. 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).
4. 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. To ensure compliance with the Bayh-Dole Act, UTEP requires its employees and students to sign an agreement to comply with the requirements of the Bayh-Dole Act. To access the form to sign the agreement, visit: Invention Disclosure Form.

For more information about intellectual property and a researcher’s obligation to disclose inventions created while carrying out their university duties at UTEP, please visit The University of Texas System Board of Regents Rule 90101: Intellectual Property.

UTEP employees, including student employees, are required to disclose inventions UTEP’s Office of Technology Commercialization (OTC). To learn more about OTC, please visit http://otc.utep.edu/.