On 15 May 2018, the National Institute of Standard and Technology announced a series of rule changes that will reduce regulatory burdens on recipients of federal research and development funding, including large and small businesses, universities, federal laboratories and non-profit organizations. The updates relate to sections of the Code of Federal Regulations (CFR) implementing the 1980 Bayh-Dole Act, which govern technology transfer and rights to inventions made with federal funding. The rules encompass government grants, contracts and cooperative agreements, as well as the licensing of government-owned inventions.
The changes clarify certain definitions, reduce compliance burdens, address co-inventions between funding recipients and federal agencies, and simplify the electronic reporting process. They also provide for automatic extensions of the requirement to file non-provisional patent applications and permit a business, university or other collaborator to rely on its Cooperative Research and Development Agreement (CRADA) with a federal laboratory to support an application for a license to a federal invention developed under that CRADA.
“As we move forward on a whole-of-government initiative with public and private sector inputs to improve federal technology transfer, these new rules will help advance implementation of the Bayh-Dole Act into the 21st century,” said Under Secretary of Commerce for Standards and Technology and NIST Director Walter G. Copan. “The Bayh-Dole Act is a key element of U.S. innovation, and the changes conform its rules to current patent laws, improving our ability to move innovative technologies to the marketplace, where they can create jobs and keep U.S. companies competitive.”
“Streamlining the CRADA and licensing process will save companies’ time and money,” said Paul Zielinski, director of NIST’s Technology Partnerships Office and co-chair of the Lab-to-Market Subcommittee of the National Science and Technology Council. “And changes to certain timelines will allow the government to patent federally funded inventions that can help businesses leverage the technology for private investment and growth.”
The new rule, “Rights to Inventions Made by Nonprofit Organizations and Small Business Firms under Government Grants, Contracts, and Co-operative Agreements,” applies to funding agreements with all federal agencies and was the subject of a 2016 public comment opportunity. The rule changes affect all new funding agreements executed after 14 May 2018, although existing agreements may be amended at a funding agency’s discretion to include the new provisions.
You can access the new rule online at: https://www.federalregister.gov/documents/2018/04/13/2018-07532/rights-to-federally-funded-inventions-and-licensing-of-government-owned-inventions