Archives—September 2008

Bayh-Dole Act

Ownership of inventions created at Michigan Tech that are the result of efforts conducted under an externally funded project are always dictated by the terms of the contract under which that funding was provided. While the contract terms for projects funded by industry, state governments, and foundations can vary, the invention ownership terms of federally sponsored projects are always the same as defined by federal law.

The Bayh-Dole Act was enacted into law in 1980 and specifically allows universities to retain ownership of inventions that result from federally funded research. Since its enactment, this law had a significant impact on both the economy and state of technology of the United States by encouraging investment in the commercial development and ultimate public dissemination of federally funded, university based innovations.

As stated in 37 CFR 401.14, an invention means, “any invention or discovery which is or may be patentable or otherwise protectable under Title 35 of the United States Code”. The legal standard is any invention or discovery “conceived OR first actually reduced to practice”.

Federal research sponsors are increasingly encouraging university research funding recipients to comply with the Federal Bayh-Dole Act reporting requirements by disclosing all inventions conceived or first actually reduced to practice using federal funds. While many federally sponsored inventions meet the requirements for patentability by being new and not obvious to one of ordinary skill in the art and licensing industry statistics demonstrate that relatively few have all the necessary characteristics for commercial viability. Recently however, federal agencies have been reminding institutions that Bayh-Dole requires the reporting of all inventions that may be patentable regardless of how likely they are to be commercially viable.

Some funding agencies appear to be moving in a direction of using disclosure rates, in part, to demonstrate the value of federal research programs. While commercial outcomes produce the most compelling of these arguments, the overall volume of potentially patentable inventions is also being used as a leading indicator of the potential impact of public investments in research.

Michigan Tech’s invention disclosure form can be downloaded from http://www.ted.mtu.edu/. Draft manuscripts, presentations, and other written materials are acceptable as attachments to the invention disclosure to simplify completion and filing. University researchers that have questions about completing and submitting the form or about federal reporting requirements can contact Robin Kolehmainen at 7-1927 or rakolehm@mtu.edu.