For Small Business, SBIR and
Small businesses that receive federal R&D funding are required to comply with the regulations of the Bayh-Dole Act in order to retain title of their inventions. When small businesses receive federal government R&D contracts, including SBIR’s, and file patent applications they are obligated to disclose that their invention was federally funded and they need to formally elect to retain title to these inventions. If this is not done on a timely basis, in compliance with Bayh-Dole reporting requirements, the federal agency has the right to take ownership of the patents. And these regulations apply even if the federal government was not the sole funding source for the invention.
Changes to Bayh-Dole Reporting Requirements
The timing required around provisional patent applications is important. The election of title date is the date of the first filing, regardless of the type of patent application. Under the new Bayh-Dole reporting requirements, provisional applications need to be converted or waived ten months from the filing date. The process to file provisional applications under the new regulations can be confusing and at times complicated as not all agencies have the same requirements in how to report provisional applications and request extensions.
Borman & Company Compliance Expertise
Lack of Bayh-Dole compliance puts IP at risk. Borman & Company’s expertise managing the complexities of the Bayh-Dole compliance process ensures that our small business clients stay on top of Bayh-Dole compliance regulations. Our clients keep us on call to review the compliance status of their IP portfolio, manage the reporting requirements for new inventions and provide patent docket management and patent license agreement management.
What SBIR's Need to Know About Bayh-Dole Compliance
Under the Bayh-Dole Act, inventions that come out of federally funded research at universities, non-profits, and small businesses, are subject to strict reporting requirements. In May of 2018 these regulations have been updated to include changes every SBIR should be aware of.