How to Report Provisional Patent Applications Under the Revised Bayh-Dole Regulations
As we approach the two-year anniversary of the revised Bayh-Dole regulations, Compliance Administrators, even those with years on the job, have questions about how the federal agencies require us to comply under the new requirements. One key point to remember is that provisional patent applications, including re-filed and supplemental provisionals, must be reported to the federal funding agency.
Patent Filing Strategies
The most common question we hear is: “How do I report provisional applications and what is the process for requesting the extension to convert a provisional”? The answer to this question is not straightforward and it depends on your institution’s patent filing strategies. The election of title date is now the date of the first filing, regardless of the type of patent application (including provisionals). Under the new Bayh-Dole reporting requirements, provisional applications need to be converted or waived ten months from the filing date.
Deadlines and Extensions
The new regulations give institutions the ability to request an automatic one-year extension from the federal agency, which will allow you to file up to the legal conversion deadline. When you contact the federal agency to request an extension, you need to include all of the federal grants in your request that have an award date after May 14, 2018. As a Compliance Administrator, you will need to have access to federal award data at your institution in order to track the award dates in your records. It is well worth your time to develop a system that enables you to receive conversion decisions from your licensing managers in a timely manner. This will help prevent the need for extensions and allow you to be confident that nothing slips through the cracks.
Different Agencies Have Different Requirements
At this time, each federal agency has a different requirement for how to report provisionals and request the automatic extensions. For NIH funded inventions, the request consists of entering and linking the provisional applications in Edison and emailing the extension request to iEdison. In the case of other agencies, you may need to obtain a copy of the award or contact someone at the agency to obtain the proper reporting contact.
As you can see, the process to file provisional patent applications can be confusing and at times complicated. We will continue to communicate with various federal agencies to better understand how to be able to properly comply with this reporting requirement and we will share that information with you as we learn more.