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Federal Funding Patents

Proskauer - Trade Secrets

Streamlining University IP Innovation: How the Improving Efficiency to Increase Competition Act Could Advance University...

University-driven innovation is a cornerstone of societal progress, as academic institutions play a pivotal role in advancing research and technology that fuel economic growth, enhance quality of life, and address global...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Weighs in on Temporal Rigidity of the Bayh-Dole Act’s Licensing Provisions

In University of South Florida Board of Trustees v. United States, the Federal Circuit rejected a strict temporal limitation on when the Government’s license rights in patents stemming from federally funded research is...more

Goodwin

Recent Bayh-Dole Act News: Comments on the Draft Framework; HHS Refuses to March-In on Xtandi; and Delayed Contracting Doesn’t...

Goodwin on

U.S. universities and academic institutions rely heavily on federal grants to fund their research and generate innovations in life sciences. Universities often out-license patents protecting inventions created using federal...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2024

Univ. of South Florida Bd. of Trustees v. United States, Appeal No. 2022-2248 (Fed. Cir. Feb. 9, 2024) In this week’s Case of the Week, the Federal Circuit examined the scope of a provision of the Bayh-Dole Act of 1980 (35...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: Biden Administration Proposes Framework for Exercising Bayh-Dole March-in Rights to Control Drug Pricing

The Biden-Harris Administration recently announced various actions to lower healthcare and prescription drug costs. In one action, the National Institute of Standards and Technology (NIST) released in December 2023 a draft...more

Wilson Sonsini Goodrich & Rosati

Draft Guidance Puts March-In Authority Pursuant to Bayh-Dole in the News Once Again

On December 8, 2023, the National Institute of Standards and Technology (NIST) released the Draft Interagency Guidance Framework for Considering the Exercise of March-In Rights (guidance) to the public for comment. The...more

Axinn, Veltrop & Harkrider LLP

HHS to Go a March-In'

Following years of discussion and pressure being applied by certain policymakers (including Senate HELP Committee Chair Bernie Sanders), the Biden Administration announced that a framework is being put forward by HHS and the...more

MoFo Tech

Top 10 Considerations In Licensing Cleantech Innovations

MoFo Tech on

Spurred by both planetary and economic needs, the industry commonly referred to as “cleantech”—short for “clean technology”—has been on the rise. Current estimates predict clean energy technologies could dominate oil and gas...more

Akin Gump Strauss Hauer & Feld LLP

Federally Funded Research & Development: New Executive Order Pushes Federal Agencies to Take Title to Subject Inventions and...

Key Points - On July 28, 2023, President Biden signed EO 14104, “Federal Research and Development in Support of Domestic Manufacturing and United States Jobs,” which aims to increase domestic manufacturing and...more

Goodwin

Changes To March-In Rights Under Bayh-Dole And More?

Goodwin on

Since its enactment in 1980, the Bayh-Dole Act has been credited with promoting the development of over 10,000 startup companies and at least 200 pharmaceutical drugs and vaccines, while contributing more than $500 billion...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Patenting Considerations for SBIR Awardees

Awardees of funding from the Small Business Innovative Research (“SBIR”) program face unique strategic questions as they plan their intellectual property development. Like all companies, SBIR awardees must decide whether to...more

Miles & Stockbridge P.C.

Recent USPTO Announcements on Patent Entity Status and Trademark Fees

Miles & Stockbridge P.C. on

Small Entity Government Use License Exception (Effective date: January 20, 2021) - The United States Patent and Trademark Office (USPTO) is amending the rules of practice in patent cases to clarify and expand exceptions...more

Haug Partners LLP

When the “States” Come Marching-In: The Bayh-Dole Act’s Effect on IP Rights of COVID-Related Patents and Knowledge Ecology...

Haug Partners LLP on

On August 4, 2020, a bipartisan coalition of over 30 attorneys general led by California Attorney General Xavier Becerra and Louisiana Attorney General Jeff Landry sent a letter request to United States Health and Human...more

Pillsbury - Internet & Social Media Law Blog

Keep an Eye on the Bayh-Dole Act in Regard to COVID-19-Relevant Patents

While companies in every industry are working hard to figure out the best response to this global pandemic, those in the pharmaceutical and medical device industries have been faced with some unique challenges related to the...more

Bennett Jones LLP

Government Funding Opportunities for SMEs

Bennett Jones LLP on

The lack of readily available funds that often exists within a growing small or medium technology enterprise (Tech-SME) can result in management having to juggle many competing priorities; unfortunately, this sometimes means...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2019

Fenwick & West LLP on

In This Issue - A Looming AI War: Transparency v. IP Rights - As artificial intelligence systems become more prevalent in daily life, efforts to create a unifying set of AI principles have intensified. In the past few...more

Fenwick & West LLP

Avoiding Loss of Title to Inventions Made Under Federal Funding as New Bayh-Dole Requirements Affect Patent Rights

Fenwick & West LLP on

Federal grants are an important source of funding for many businesses and research institutions. The Bayh-Dole framework provides contractors the ability to retain title to an invention developed using federal funding, but...more

Womble Bond Dickinson

Lessons Learned in IP Strategy during the US Government Shutdown

Womble Bond Dickinson on

On January 25, 2019, after 35 days of uncertainty and hundreds of thousands of federal employees missing their second paycheck, the partial government shutdown that went into effect on December 22, 2018 ended. Ramifications...more

Sunstein LLP

August 2018 IP Update - Revisions to Bayh-Dole Act Regulations Governing Rights to Federally Funded Inventions

Sunstein LLP on

Rules affecting recipients of federal research and development funding have recently been revised, adding new deadlines and obligations. Changes to the regulations implementing the Bayh-Dole Act went into effect on May 14,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Updated Bayh-Dole Regulations Increase Certain Risks of Losing Title to Federally Funded Inventions

Businesses and nonprofits that receive funding under a federal government agreement (e.g., contract, cooperative agreement, or grant) executed after May 14, 2018, are subject to the updated regulatory provisions that...more

McCarter & English Blog: Government Contracts...

Contractors And Grantees Beware! Safe Harbors Removed In Preserving Patent Ownership Rights Under Bayh-Dole

Buried in a grab bag of seemingly innocuous course-correcting changes to the Bayh-Dole Act regulations (effective May 14 of this year) is the removal by regulators of the sixty-day window between the federal agency’s notice...more

Knobbe Martens

Bayh-Dole Act Revisions

Knobbe Martens on

On May 14, 2018, several important revisions to regulations of the Bayh-Dole Act (University and Small Business Patent Procedure Act of 1980, codified as 35 U.S.C. § 200) went into effect. The final revisions were published...more

Hogan Lovells

A Word to the Wise for Advanced Reactors Accepting DOE Money: DOE Enforces its IP Rights

Hogan Lovells on

A recent headline in the energy trade press would not likely have caught the attention of the advanced nuclear industry: “Trump’s DOE punishes Obama-era solar success story.” A casual reader might quickly dismiss the story as...more

Snell & Wilmer

Amendments to Rights of Federally Funded Inventions and Government Owned Inventions

Snell & Wilmer on

On April 13, 2018, a final rule was published in the Federal Register adopting proposed rule changes from the National Institute of Standards and Technology (“NIST”)....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

March-in Rights and Compulsory License in the United States

March-in rights in the US were created in 1980, as part of the Bayh-Dole Act. Simply stated, when the US government funds research that results in patents, it obtains rights to those patents. These rights are retained even...more

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