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NIST Issues NPRM for Bayh-Dole


Greetings from D.C. The Department of Commerce’s National Institute of Standards and Technology (NIST) just released a Notice of Proposed Rulemaking (NPRM) regarding various provisions of the Bayh-Dole Act (aka the University and Small Business Patent Act of 1980). It is currently seeking comments regarding the proposed changes.

The following information comes verbatim from the Federal Register Notice announcing the proposed rulemaking and opening the public comment period:

“The Bayh-Dole Act obligates nonprofit organizations and small business firms (‘contractors’), and large businesses, as directed by Executive Order 12591, to disclose each ‘subject invention’ (that is, each invention conceived or first actually reduced to practice in the performance of work under a funding agreement, 35 U.S.C. 201(e)) within a reasonable time after the invention becomes known to the contractor, 35 U.S.C. 202(c)(1), and permits contractors to elect, within a reasonable time after disclosure, to retain title to a subject invention 35 U.S.C. 202(a). Under certain defined ‘exceptional’ circumstances, Bayh-Dole permits the Government to restrict or eliminate the contractor’s right to elect to retain title, 35 U.S.C. 202(a), 202(b), and under such circumstances, rights vest in the Government. The Secretary of Commerce has delegated to the Director of NIST the authority to promulgate implementing regulations.”

NIST has issued the Federal Register Notice to solicit comments on its proposed changes, providing an opportunity for input from communities with an interest in this effort. Space limitations in this column prohibit a complete recitation of the proposed changes (although they are relatively few), but as stated in the Federal Register Notice, the proposed revisions “make technical corrections, update certain sections to conform with changes in the patent laws, clarify the role of provisional patent application filing, create a new Determination of Exceptional Circumstances, increase the role of Funding Agencies in the Bayh-Dole process, address subject inventions as to which a Federal laboratory employee is a co-inventor, and streamline the licensing application process for some Federal laboratory collaborators.”

NIST will hold a public hearing on the proposed changes Monday, November 21, and written comments will be accepted through December 9.

See the Federal Register Notice here for a more detailed discussion of the proposed changes.

Gary can be reached at gkjones.ctr@federallabs.org.

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