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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 Wisconsin–Madison, 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.

UW–Madison Policy: To ensure compliance with the Bayh-Dole Act, the University of Wisconsin–Madison requires its employees and graduate students to sign an agreement to comply with the requirements of the Bayh-Dole Act. If these and other requirements are not satisfied, a university may not have title (ownership) of the invention and associated patent rights.

To access the form to sign the agreement, visit: go.wisc.edu/bayhdole.

For questions about how the Bayh-Dole Act applies to UW–Madison, contact:
Kristin Harmon at kristin.harmon@wisc.edu or (608)263-2877
Lee Jankoski at lee.jankoski@wisc.edu or (608)890-1867
Office of Legal Affairs, https://legal.wisc.edu/research-and-intellectual-property-team/, (608) 263-7400

For more information about intellectual property and a UW researcher’s obligation to disclose inventions created while carrying out their university duties at UW–Madison, visit the Intellectual Property page at research.wisc.edu.

UW-Madison employees are required to disclose inventions through the Wisconsin Alumni Research Foundation (WARF).  WARF is the designated is the designated patent and licensing organization for UW–Madison. To learn more visit https://www.warf.org/.

Frequently Asked Questions:

  • Intellectual property (IP), is a work or invention that is the result of creativity, such as a design, method or manuscript, to which one has rights and for which one may apply for a patent, copyright, trademark, etc. Some examples include devices, machines, composite materials, algorithms, artwork, and manuscripts.  The Bayh-Dole Act pertains only to patentable inventions, and has no impact on copyright (manuscripts, artwork, etc.) or trademark.
  • University of Wisconsin-Madison faculty and staff generally retain right in intellectual property they develop, unless there are contractual obligations that prevent retaining rights. Common examples of these are federal funding and other sponsored research agreements, which often require intellectual property that arises from the funding to be assigned to the university or WARF in order to protect the sponsor’s interest in the intellectual property.
  • Because many graduate students are also employees (Research Assistants, etc.); and because it is feasible that a student may enter an employee role at some point, all graduate students have been asked to sign the form in the event they become an employee or otherwise participate in federally funded research during their career at UW-Madison. It is understood that the wording on the website refers to employees, however, this is meant to include all graduate students and we request that you complete the certification to help UW-Madison comply with the updated regulations. Any intellectual property you develop that is not related to federally-funded research is not impacted by the Bayh-Dole Act. In addition, by completing this one-time certification, you will not need to complete it again in the event that you become a UW-Madison employee in the future.
  • All faculty, including emeritus faculty, received this email and have been asked to sign the form in the event they participate, or are participating, in federally funded research projects. Many of those with the emeritus title continue to be engaged in research and request that you complete the certification to help UW-Madison comply with the updated regulations.
  • Any intellectual property you develop that is not related to federally-funded research conducted at UW-Madison is not impacted by this certification.
  • Software code is a unique case, as it may be patentable, copyrightable, or both. Copyrightable intellectual property falls under a separate policy, and is not subject to the Bayh-Dole Act.  The best resource in determining whether software is patentable or only copyrightable is WARF.  In order to determine whether to disclose software code to WARF, it may be useful to consider whether the software and/or code are novel and non-obvious; the best judge of that may be the person who creates the intellectual property.  It may also be useful to reach out to WARF directly to discuss specific cases, as they may be able to give additional guidance on whether particular software is patentable. Contact WARF at info@warf.org, 608-960-9850.
  • UW-Madison’s implementation of the new Bayh-Dole regulations is an evolving process, and we are working to ensure that the most appropriate employee categories receive future correspondences.  At this time, we have determined that volunteers and adjunct faculty do not need to sign the Bayh-Dole certification. Student hourlies working on federal research projects, especially in a capacity in which they may contribute to intellectual property, should sign.