NIST Streamlines Bayh-Dole Regulations for Federal Funding Recipients 

GAITHERSBURG, Md.—Rule changes went into effect yesterday 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 to sections of the Code of Federal Regulations (CFR) that implement the 1980 Bayh-Dole Act affect rights in inventions made with federal funding were issued by the U.S. Department of Commerce’s National Institute of Standards and Technology (NIST).

“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.”

The updates to the Bayh-Dole implementation regulations align with the Lab-to-Market Cross Agency Priority and IT Modernization goals of the recently released President’s Management Agenda and affect government grants, contracts and cooperative agreements, as well as the licensing of government-owned inventions. 

The rule 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.

“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 new funding agreements executed after May 14, 2018, although existing agreements may be amended at a funding agency’s discretion to include the new provisions.

Earlier this year, NIST and the White House Office of Science and Technology Policy launched the Return on Investment Initiative to improve federal technology transfer. On May 1, 2018, NIST published a request for information to seek further input from public and private sector stakeholders across the R&D, intellectual property and technology transfer communities.