How to patent a government funded invention

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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