Bayh-Dole Basics, 7: Disclosure

The Bayh-Dole Act requires contractors who acquire title to an invention made in the performance of work under a federal funding agreement to disclose that invention to the federal government. Here’s 35 USC 202(c)(1), specifying one condition among others that must be in a standard patent rights clause:

That the contractor disclose each subject invention to the Federal agency within a reasonable time after it becomes known to contractor personnel responsible for the administration of patent matters, and that the Federal Government may receive title to any subject invention not disclosed to it within such time.

“Contractor” is a collective noun, used for any and all parties to a funding agreement. A prime contractor may add other parties to a funding agreement by any assignment, substitution of parties, or subcontract of any type. A subject invention is a patentable invention owned by a contractor and which has been made under a federal funding agreement. 

The standard patent rights clause at 37 CFR 401.14 repeats 35 USC 202(c)(1):

The contractor will disclose each subject invention to the Federal Agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.

For “reasonable time” we now have “two months.”

The standard patent rights clause then has this to say about disclosure (37 CFR 401.14(c)(1)):

The disclosure to the agency shall be in the form of a written report and shall identify the contract under which the  invention was made and the inventor(s).

Contract
Names of inventors

It shall be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention.

Disclosure

The disclosure shall also identify any publication, on sale or public use of the invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure.

Potential bars to patenting

The standard patent rights clause also requires prime contractors to flow down the disclosure obligation as part of the (f)(2) written agreement requirement:

The contractor agrees to require, by written agreement, its employees, other than clerical and nontechnical employees, to disclose promptly in writing to personnel identified as responsible for the administration of patent matters and in a format suggested by the contractor each subject invention  made under contract in order that the contractor can comply with the disclosure provisions of paragraph (c) of this clause,

The disclosure requirement excludes clerical and nontechnical employees (hmmm–why?), adds that the contractor may suggest the format (rather than, say, the federal agency), and makes it clear that the purpose of the disclosure is so that the prime contractor can comply with its disclosure requirement.

“Disclosure” is descriptive of what the written report must do. It must reveal sufficient information to allow an assessment of an invention, its patentability, and serve as the basis for a patent application.

To meet the disclosure requirement, not only must a university convey the disclosure to the federal government within two months of its receipt by personnel responsible for patent matters, but also the university must see that the disclosure properly meets the standard of the Bayh-Dole disclosure requirement–all the information necessary to determine whether an invention already owned by the university indeed is patentable, and to draft a patent application. Based on this information, then, both the university and the federal agency (if it gains the right to request title from the university) may decide what course of action to take with regard to patenting.

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