NIST proposes Bayh-Dole revisions, invites comments by April 5

NIST proposes Bayh-Dole revisions, invites comments by April 5

January 7, 2021

The National Institute of Standards and Technology (NIST) requests comments on proposed revisions to regulations that would further the Return on Investment (ROI) Initiative for Unleashing American Innovation. Comments must be received no later than April 5, 2021.

The proposed revisions to “Rights to Inventions Made by Nonprofit Organizations and Small Business Firms under Government Grants, Contracts, and Cooperative Agreements” and “Licensing of Government-Owned Inventions” were published on January 4. These proposed revisions make technical corrections; reorganize certain subsections; remove outdated and/or unnecessary sections; institute a reporting requirement on federal agencies; and provide clarifications on definitions, communications, scope of march-in rights, filing of provisional patent applications, electronic filing, the purpose of royalties on government licenses, and the processes for granting exclusive, co-exclusive and partially exclusive licenses and for appeals.

NIST is requesting comments about 37 CFR parts 401 and 404 of the Bayh-Dole regulations. They have proposed some questions for potential commenters to consider:

1. Are there any changes to these regulations, consistent with current law, that you or your organization think would accelerate the transfer of federally funded research and technology to entrepreneurs, or otherwise strengthen the nation's innovation system?

2. Are there specific revisions to the language in § 401.14(b) that could help clarify the existing scope of the Government Use License for owners and licensees working to achieve practical application of subject inventions?

3. Are there provisions within 37 CFR part 401 or 404 that are inconsistent with, or otherwise affected by, changes in the patent laws under the Leahy-Smith America Invents Act, Public Law 112-29, or that Act's implementing regulations?

NIST intends to hold a webinar regarding the proposed changes and information on that webinar will be available to the public at​tpo/​bayh-dole.

For more details on the proposed revisions and how to submit comments, visit