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Borman & Company, LLC
Innovation Advisors


 phone: +1 (508) 294-1402

email: info@bormanandco.com

© 2019 Borman and Company

November 2018 Update: New Bayh-Dole Reporting Requirements

 

Earlier this month I participated in the AUTM Compliance Course in Bethesda, MD and what follows are my observations as an audience participant and as a presenter.  The session was very well attended with attendees eager for guidance as to the implementation of the new Bayh-Dole regulations that took effect in May. 

 

To start things off, NIST provided an overview of the new Bayh-Dole requirements, and NIH presented an advanced tutorial on how to report inventions in Edison under the old vs. the new requirements. Representatives from NSF, DOE, the Army, USDA, and NASA also provided an overview of the reporting requirements for their agencies. On the last day, I participated in a presentation with my fellow compliance colleagues.  We summarized what we learned and discussed how to go back to our institutions and use the knowledge in order to update/create additional procedures and systems to be able to comply properly, on a timely basis, going forward.

 

The key message: The message our panel offered to the compliance administrators: Don’t panic! Although the Bayh-Dole requirements are standard, the interpretation of how to meet the reporting requirements varies across agencies.  Agencies that do not use Edison have different requirements. These include asking grantees to email different individuals across different agency departments with invention, compliance, and closeout updates. 

 

Implementation across agencies varies: It became clear that the agencies represented at this course differed in how they expect reporting to take place. The topic of changes to provisional reporting and filing extensions took up the most time and was confusing. Some agencies require that grantees report on the status of provisional patent applications throughout the filing and re-filing process, in order to ensure that the Government has an opportunity to file whenever the grantee decides not to.  Other agencies indicated that they only want to hear from grantees at whatever point they decide to completely discontinue the re-filing of provisional.  Some agencies require an email requesting the 10-month extension and others do not want an email, as the extension is automatic.

 

Timing: The audience asked questions of the agency representatives as to when Edison would be updated.  Apparently, no decision has been made, as the agencies continue to participate in interagency meetings to discuss how they want to streamline and track reporting across agencies.

 

The overriding message was that all agencies expect grantees to comply with the new reporting requirements and the audience was encouraged to email with any questions. (We can only hope the agencies’ email systems can handle the anticipated volume…)

 

In our discussions, the Compliance Course attendees agreed that it is important to:

 

  • Keep an eye out for Agency updates, database system reporting updates (from Edison and non-Edison agencies), and additional training sessions. 

  • Establish relationships with sponsored programs offices and make sure we have access to grant/contract databases.

  • Educate Licensing Office personnel and management on what we learned, and request the systems, tools, and staffing we will need to be able to comply properly going forward.

  • Recognize that the workflow of licensing managers will need to change to accommodate the new reporting requirements (i.e., making conversion and other patent prosecution decisions sooner).

  • Network with each other as much as possible to share our knowledge, tips, and tricks on how to comply using “best efforts”

  • Maintain our sense of humor at all times!

 

To keep up to date with the ongoing implementation challenges of the new Bayh-Dole requirements, check back here at Tech Transfer Compliance Central in the coming months.