What to Avoid When Patenting Government-Funded Inventions

Law360

"Under the Bayh-Dole Act, a small business can patent an invention made with federal funding. But if the small business doesn’t properly notify the government about the invention, then the government can take title to the patent or patent application. Worse, if takes title, the government does not have to license the patent to the small business. In some circumstances, the government can even take title to inventions conceived outside the scope of the funding agreement. Here, we review pitfalls and how to avoid them when electing title to a patent or patent application on an invention made with government funding.[1] We also identify some steps for identifying and mitigating the risk that the government will take title if the invention hasn’t been properly reported."

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Related Contacts
Max Colice Associate, Boston
David Fletcher Special Counsel, Washington, DC