Ownership of the Patent

Overview

Ownership of inventions created at Michigan Tech that are the result of efforts conducted under an externally funded project are always dictated by the terms of the contract under which that funding was provided.

For projects funded by industry, state governments, and foundations please review the terms of the agreement under which the project was funded and contact the Office of Innovation and Industry Engagement (IIE) for processing your disclosure consistent with those terms.

For Federally funded projects, the invention ownership terms are defined by the Bayh-Dole Act which was enacted into law in 1980 and specifically allows universities to retain ownership of inventions resulting from federally funded research.

The Council on Government Relations (COGR) has prepared an overview document on Bayh-Dole that provides background on the act, descriptions of its requirements, and examples of its outcomes and can be found at http://www.cogr.edu/Pubs_intellectual.cfm.

Requirements for Federally Sponsored Inventions Under Bayh-Dole

Inventors and universities have certain requirements that need to be followed if research was conducted using federal funds.

Most particularly, inventors must note that their disclosure was the result of federal funding and provide the contract number and must provide some means to identify the project providing the funds (for example an MTU Account number, or MTU proposal number).

Once IIE receives the disclosure Michigan Tech has 2 months from date of submission to notify the funding agency that we have received the disclosure, then two years to make the decision to retain title to the invention.

The two year window to elect title may be shorter if a statutory bar event has occurred. Events that create a statutory bar to patentability include publication of invention results or public use of the invention. If a patent is sought, it must be filed within one year of the barring event and the University then has to make an election of title at least 60 days before the end of the statutory period. Please note, that patenting and publication are not mutually exclusive, but publication or public use prior to submission of a disclosure to IIE and the federal sponsor considerably compresses the time under which decisions regarding ownership and patent filings can be made.

If the University elects title, a patent application must be filed within one year of that election of title, or prior to the end of any statutory bar period (e.g. within one year of a publication). The University must notify the funding agency within 10 months of U.S. patent filing, whether it will file any foreign patent applications and where.

Each patent filing must include a statement within the application that the invention is government supported and that the United States government has certain rights in the invention as provided by Bayh-Dole. In order to perfect the federal government’s rights, a confirmatory license must be submitted to the funding agency once election of title is made. The confirmatory license provides the federal government a non-exclusive, non-transferable, irrevocable, paid-up right to practice the invention or have the invention practiced on its behalf for federal government purposes.

Reports regarding the activity of the invention and whether or not it has been licensed must be submitted annually or otherwise specified by the funding agency. If these procedures are not followed and the University is not diligent in pursuit of commercial applications of the inventions, the government may exercise what is referred to as March-In Rights. March-in allows a funding agency to require the grantee, contractor, or its licensee to grant a license on reasonable terms to a responsible applicant. The statute and its implementing regulations provide that an agency may exercise march-in if the agency finds that:

  • action is necessary because the grantee or its licensee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of the invention;
  • action is necessary to alleviate health or safety needs which are not reasonably satisfied by the grantee or its licensee;
  • action is necessary to meet requirements for public use as specified by Federal regulations and such requirements are not reasonably satisfied by the grantee or its licensee; or
  • action is necessary because the licensee has failed to obtain certain waivers required by the law.