Sneak Preview: NIST Is Seeking Input on Changes to Bayh-Dole Regulations

Darla M. Fera
January 8, 2021 at 08:27:06 ET
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(The following was excerpted from a recent Thompson Grants 360 article.) The Department of Commerce’s National Institute of Standards and Technology (NIST) has proposed extensive revisions to the Bayh-Dole regulations governing the rights to inventions created under federally funded awards.

NIST regulations (37 C.F.R. Parts 401 and Part 404) implement the requirements of the University and Small Business Patent Procedures Act of 1980, as amended (Pub. L. 96-517), more commonly known as the Bayh-Dole Act, to encourage researchers and their recipient organizations to patent and market inventions created under a federal financial assistance award by guaranteeing patent rights. The Bayh‑Dole Act celebrated its 40th anniversary in December. Compliance with the act has been a term and condition of all federal funding agreements since its passage.

The recent proposed revisions to “Rights to Inventions Made by Nonprofit Organizations and Small Business Firms under Government Grants, Contracts, and Cooperative Agreements” and “Licensing of Government-Owned Inventions,” published in the Jan. 4 Federal Register, would make various technical corrections; institute a reporting requirement on federal agencies; and provide clarifications on definitions, communications, scope of march-in rights, filing of provisional patent applications, electronic filing, the purpose of royalties on government licenses, and the processes for granting exclusive, co-exclusive and partially exclusive licenses and for appeals.

In 2018, NIST said it initiated a “large-scale stakeholder engagement effort” to further the goals of the Lab-to-Market Cross Agency Priority (CAP), part of the 2018 President’s Management Agenda. The stated purpose of the goal was to “improve the transition of federally funded innovations from the laboratory to the marketplace by reducing the administrative and regulatory burdens for technology transfer and increasing private sector investment in later-stage research and development (R&D); develop and implement more effective partnering models and technology transfer mechanisms for federal agencies; and enhance the effectiveness of technology transfer by improving the methods for evaluating the ROI [return on investment] and economic and national security impacts of federally funded R&D, and using that information to focus efforts on approaches proven to work.”

(The full version of this story has now been made available to all for a limited time here.)

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