Enacted in 1980, the Bayh-Dole Act fundamentally changed the management of intellectual property created under federal awards. Arguably, one of the most important provisions of the Act is the ability for universities to retain the title to innovations including inventions and intellectual property. Other key provisions include:
- Encouraging universities to promote the utilization of inventions by collaborating with commercial entities
- Universities are also expected to file patents and give licensing preferences to small businesses
- The government retains a non-exclusive licensee to practice the patent/invention throughout the world
- The government retains march-in rights (the right to require the university to grant a license to another party)
Prior to Bayh-Dole, the government held title to almost 30,000 patents with less than five percent licensed to industry for development. Bayh-Doe has helped to create new technologies, vaccines, and products. The former President of the NASDAQ Stock Market estimates that 30% of its value is rooted in university-based, federally funded research results, which might have never been commercialized without the Act.
The University is required to do the following to ensure compliance with the Act:
- Disclose inventions within two months to the federal agency
- Patent the invention
- Attempt to develop and commercialize the invention
- Share a portion of the royalties with the inventor(s)
- Require employees to assign rights in inventions to the University
The ensure compliance with the last condition, UM requires all new employees to agree to the UM Inventions, Intellectual Property and Technology Transfer Policy which outlines the rights and responsibilities regarding inventions, intellectual property and technology transfer including the management and commercial application of innovations and aligns with the requirements of Bayh-Dole. This agreement is captures when new employees are onboarded in Workday. Additionally, as task was added in Workday to all employees hired prior this process. The Office of Research Administration and the Office of Technology Transfer will follow-up with all employees and faculty who work on federally sponsored awards who have not completed this task in Workday.
Please join me on Thursday, March 17th at 12:00 p.m. to discuss this topic further, I would love to hear from you!
Register in advance for the Zoom session here. You may also submit your question(s) and/or comment(s) in advance of the session.
