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Tip Sheet Volume 1:5
Patents I: The Bayh-Dole
Act
In addition to learning and discovery,
universities are involved in economic development (engagement)
activities, which often involve technology transfer from the
university to industry. One key piece of legislation, the Bayh-Dole
Act, governs ISU's policies on technology transfer.
What is the Bayh-Dole
Act?
The Bayh-Dole Act and subsequent amendments were enacted between
1980 and 1985 to foster economic development by allowing universities
to own, patent, and market inventions developed with federal
funding. Prior to this act, inventions were owned by the government
and only licensed non-exclusively to industry. The lack of an
option to an exclusive research license was not attractive to
industry, and thus many inventions were never taken on by industry
for improvement and implementation. In addition, the Bayh-Dole
Act ensures that all public universities maintain a consistent
policy on intellectual property inventions resulting from government
funding.
Policies
With few exceptions, funds
received from the federal government must abide by the Bayh-Dole
Act. Regulations include:
- The regulations apply to all inventions
conceived or reduced to practice as a result of research at least
partially funded by the federal government. The provisions do
not apply to federal training grants.
- The university must inform the government
of each invention disclosure.
Prior to public disclosure, the university has two years to determine
if it wants to retain title to the inventions. If the university
chooses not to retain the title, there is a series of provisions
that determine title ownership. - The government must be given a non-exclusive,
non-transferable, paid-up license to all technologies invented.
- Any company that has an exclusive
license to a patent that involves the sale of a product in the
U.S. must "substantially manufacture" that product
in the U.S. There are provisions for exceptions to this.
Related Legislation
Developing Sponsored Research
Agreements (Federal Register 59FR55673). The NIH published a
set of guidelines in 1994 to provide guidance in ensuring compliance
for researchers collaborating with industry on projects partially
supported with federal government funds.
For additional information, see www.cogr.edu or use an internet search engine to search for BAYH DOLE.
Lisa Lorenzen
Biotechnology Industrial Liaison
1210 Molecular Biology Building
Phone: (515) 294-0926
Email: llorenze@iastate.edu
Acknowledgment: A special thanks to Nita Lovejoy
and other memebers of the ISURF staff for their help in preparing
this document.
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