Bayh-Dole Act

In 1980, Congress passed the Bayh-Dole Act. This act and subsequent amendment passed in 1984 provide the basis for current OHIO technology transfer practices related to any technology discovered using federal grant dollars. In a very basic summary, the Act allowed universities to elect to retain title to inventions through government funding. Universities are able to file patents on inventions they own and the government retains a non-exclusive license to practice the invention throughout the world. The Act dictates that preference for licensing be given to small businesses. In addition, the government retains march-in rights. If OHIO elects to file a patent on a government funded invention, some general rules apply, as identified below:

OHIO must to disclose each new invention to the federal funding agency within two months after the inventor discloses it to OHIO.

The decision whether or not to retain title to the invention must be made within two years after disclosing the invention to the agency. This time is shortened, if, due to publication of results, the one year U.S. statutory patent bar has been set in motion. Under those circumstances, OHIO must make an election at least sixty days before the end of the statutory period.

Upon election of title, OHIO must file a patent application within one year, or prior to the end of any statutory period in which valid patent protection can be obtained in the United States. OHIO must, within ten months of the U.S. filing, notify the agency whether it will file foreign applications. If OHIO does not intend to file, the agency may then file on its own behalf.

If OHIO elects to retain title, the federal government is provided a non-exclusive, irrevocable, paid-up license to practice the invention (or have it practiced on behalf of the U.S.) throughout the world.

Any company that holds an exclusive license for sales in the United States, must substantially manufacture the product in the U.S. Waivers of this rule may be granted by the federal agency upon showing that reasonable but unsuccessful efforts had been made to find a company that would manufacture in the U.S.

As they proceed to license an invention OHIO must give preference to a small business firm, provided the firm has the resources and capability for bringing the invention to practical application. However, if a large company has provided research support that led to the invention, that company should be awarded the license.

OHIO may not assign their rights to inventors to third parties, except to a patent management organization.

OHIO must share with the inventor any income collected on the invention. Any remaining income, after expenses, must be used to support scientific research or education.

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