The regulations governing obligations related to patent filings changed in 2018. But now, almost a year later, I find that very few grant recipients are aware of the recently added obligations or even more generally, of the ones that remain the same.
In a nutshell- if you get government money for research and that is used to make a patentable invention, there are strings attached. Welcome to the Bayh-Dole Act. If you are getting NSF, NIH and SBIR funds (or other government funding) as a small business (e.g., start-up company) or non-profit institution (e.g., university), you should understand your commitments.
Why? Because if you don’t, you could lose valuable rights to your inventions.
If you work for a university, most likely the folks handling the patent filings there are aware of the requirements. But for those of you with a start-up managing your own IP filings, this may come as news.
The most recent shift
Outside of the government funded arena, if you file a provisional patent application, you typically have 12 months before conversion to a PCT or non-provisional US application. But this 12-month opportunity to add data and update the provisional before the window shuts and expenses mount, just got shorter for grant recipients.
The 2018 updated regulations shorten the 12-month filing a PCT/non-provisional to 10 months.
You just lost 2 months of additional research time for that “data window.” So, plan accordingly!
You can request an extension of time, for example to file the PCT/non-provisional at a later date. But this request needs to occur before the 10-month mark. In fact, once requested, the government has 60 days to deny the extension. Unless you want to find out with no time left to react, that means more than 2 months before that 10-month mark, you need to decide if an extension if needed and make that request. So now? You are making this judgement call less than 8 months after getting your provisional is filed. Be vigilant!
These changes impact all grants and renewals of existing grants awarded on or after October 1, 2018.
There are a number of additional obligations that are not new. But keep them in mind, as they too can affect your rights.
The benefits of government grants, aside from the funding to make your research happen, include retaining ownership of your inventions. The university or small business that receives the grant can file for patents and own the IP rights.
This ownership has some rules.
- You must notify the government of any inventions within 2 months of when you report the invention to the university or company designee responsible for patent matters.
- Once this report is filed, you then typically have 2 years to decide if you want to take title to the invention, meaning that you want to own it (rather than the government owning it). This time can be shortened if you publish, sell or otherwise publicly disclose the invention. These disclosures start a 1-year clock on the time to file a US patent and so the government can require you to decide on ownership at least 60 days before this 1-year time period ends.
- As describe above, you must file a PCT/non-provisional application at 10 months after filing the provisional patent application.
If you do not follow (a), (b) or (c), the government can take ownership of your inventions. What does this mean? You could end up with no rights at all to use the invention or commercialize it.
Thinking of it with a more positive spin may help. If you get government grants for research and you follow the rules, you get to own the patents. As a start-up this means, you get money to help the research underlying your product development and accumulate IP assets that will help you along the road to future investment.
For more information:
The content of this blog is for informational purposes only and does not offer legal advice. Circumstances are fact-specific and you should consult an attorney for legal advice concerning your individual issues.