A Bayh-Dole Quick Read–Ha!

A Twitterer admonished another Twitterer to give Bayh-Dole a quick read. Sigh. But then I thought that I could help out. Here’s a really short version of Bayh-Dole, extracted from the swamp of muddy drafting that is Bayh-Dole, with bold added.

It is the policy and objective of the Congress to use the patent system

to promote the utilization of inventions arising from federally supported research or development;

to ensure that inventions made by nonprofit organizations and small business firms are used in a manner to promote free competition and enterprise without unduly encumbering future research and discovery;

to promote the commercialization and public availability of inventions made in the United States by United States industry and labor;

to ensure that the Government obtains sufficient rights in federally supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions;

This chapter shall take precedence over any other Act which would require a disposition of rights in subject inventions of small business firms or nonprofit organizations contractors in a manner that is inconsistent with this chapter, [35 USC 210(a)]

Each nonprofit organization or small business firm may, within a reasonable time after disclosure as required by paragraph (c)(1) of this section, elect to retain title to any subject invention: [35 USC 202(a)]

The term “subject invention” means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement: [35 USC 201(e)]

The term “contractor” means any person, small business firm, or nonprofit organization that is a party to a funding agreement. [35 USC 201(c)]

The term “funding agreement” means any contract, grant, or cooperative agreement entered into between any Federal agency, other than the Tennessee Valley Authority, and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the Federal Government. Such term includes any assignment, substitution of parties, or subcontract of any type entered into for the performance of experimental, developmental, or research work under a funding agreement as herein defined. [35 USC 201(b)]

Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following: [35 USC 202(c)]


With respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferrable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world: [35 USC 202(c)(4)]

The right of the Federal agency to require periodic reporting on the utilization or efforts at obtaining utilization that are being made by the contractor or his licensees or assignees: Provided, That any such information as well as any information on utilization or efforts at obtaining utilization obtained as part of a proceeding under section 203 of this chapter shall be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5. [35 USC 202(c)(5)]

In the case of a nonprofit organization,

(A) a prohibition upon the assignment of rights to a subject invention in the United States without the approval of the Federal agency, except where such assignment is made to an organization which has as one of its primary functions the management of inventions (provided that such assignee shall be subject to the same provisions as the contractor);

(B) a requirement that the contractor share royalties with the inventor;

(C) . . . a requirement that the balance of any royalties or income earned by the contractor with respect to subject inventions, after payment of expenses (including payments to inventors) incidental to the administration of subject inventions, be utilized for the support of scientific research or education; [35 USC 202(c)(7)]

Each Federal agency is authorized to—

grant nonexclusive, exclusive, or partially exclusive licenses under federally owned inventions, royalty-free or for royalties or other consideration, and on such terms and conditions, including the grant to the licensee of the right of enforcement pursuant to the provisions of chapter 29 as determined appropriate in the public interest; [35 USC 207(a)(2)]

A Federal agency may grant an exclusive or partially exclusive license on a federally owned invention under section 207(a)(2) only if—

(1) granting the license is a reasonable and necessary incentive to—

(A) call forth the investment capital and expenditures needed to bring the invention to practical application; or

(B) otherwise promote the invention’s utilization by the public; [35 USC 209(a)]


No Federal agency shall grant any license under a patent or patent application on a federally owned invention unless the person requesting the license has supplied the agency with a plan for development or marketing of the invention [35 USC 209(f)]

. . . the Federal agency . . . shall have the right . . . to require the contractor, an assignee or exclusive licensee of a subject invention to grant a . . . license . . . upon terms that are reasonable under the circumstances, and if the contractor, assignee, or exclusive licensee refuses such request, to grant such a license itself, if the Federal agency determines that such—

(1) action is necessary because the contractor or assignee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of the subject invention in such field of use;

(2) action is necessary to alleviate health or safety needs which are not reasonably satisfied by the contractor, assignee, or their licensees; [35 USC 203)(a)]


The term “practical application” means . . . that the invention is being utilized and that its benefits are . . . available to the public on reasonable terms. [35 USC 201(f)]

There you have it. It’s still too long for a quick read. I’ve left out US manufacturing [35 USC 204] because it is routinely waived and is so weak it doesn’t matter anyway. And I’ve left out all sorts of other stuff, too. Bayh-Dole is a swamp. Here, a bog puddle.

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