What is an invention funded by the federal government?

Certain rules pertain to any private companies or persons seeking to patent a federal government funded invention. We will dive into certain basic rules further below. At the outset, let’s clarify which government funded inventions are subject to these rules.

Under the Bayh-Dole Act which is codified in 37 CFR § 401, a “Subject Invention” is any invention conceived or reduced to practice by a contractor in performing work under a federal grant or contract. Subject inventions are made by private parties, also known as contractors, pursuant to a funding agreement.

Who is a contractor?

A person, small business, non-profit organization or any private party that receives funding from the federal government is considered a contractor.

What are required steps to own patent rights to federally funded inventions?

A contractor must perform certain tasks in a timely manner in order to reserve the right to patent a federally funded invention. Those action items include the following:

  • disclose each Subject Invention to the proper Federal Agency within 2 months after the inventor discloses it in writing to the contractor;
  • elect in writing whether or not the contractor will retain title to any Subject Invention within two years after notifying the Federal Agency;
  • file an initial patent application on Subject Invention within one year after electing to retain title. If the initial patent application is a provisional patent application, the nonprovisional patent application must be filed within 10 months of the provisional filing date, unless a 2-month extension request is granted. Any foreign patent applications must generally be filed within 10 months of the first filed patent application. If prohibited by a Secrecy Order, foreign patent applications must be filed by 6 months from the date of permission granted by the Commissioner of Patents.
  • sign all written agreements to confirm or establish that the US government has certain rights to the Subject Invention throughout the world (i.e., basically, a nonexclusive patent license to the federal government)

See 37 CFR § 401.14(c).

Need to patent your government funded invention?

Email patent attorney Vic Lin or call (949) 223-9623 to see how we can assist in patenting your government funded invention.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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