This post was written by Jessica Hauth.

Effective May 14, 2018, the rules implementing the Bayh-Dole Act (specifically, 37 CFR § 401 and 404) were changed in some important ways that impact patent protection of federally-funded inventions.  Some notable highlights include:

Patent prosecution

  • Contractors must provide notice to the funding agency of its decision not to continue with patent prosecution or pay a maintenance or renewal fee no later than 60 days prior to the statutory deadline. This is longer than the previous 30 days’ notice requirement.
  • Contractors may re-file a provisional patent application only upon submitting notice to the funding agency no later than 60 days prior to the statutory deadline, and receiving a grant to do so.
  • Non-provisional patent applications must be filed within 10 months of filing the provisional application, rather than the 12 months allowed under 35 U.S.C. § 120.
  • PCT and foreign patent applications must be filed within 10 months of filing the initial U.S. application, rather than 12 months allowed in the Patent Cooperation Treaty.

Ownership

  • Contractors must have written agreements with employees which include an assignment of rights to the contractor and an obligation to sign all necessary application papers.
  • The funding agency may take title to a subject invention at any time if the contractor fails to timely elect to retain title or meet its other requirements, rather than the previous time-limited window.

These changes apply to any grants issued on or after May 14, 2018, and may apply at the discretion of the agency to any existing grants amended after May 14, 2018.

Please feel free to contact us if you have any questions or would like further information.

 

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