Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 300 - Ownership and Assignment (4)
Contractors have specific reporting requirements under the Bayh-Dole Act:
- Disclose each subject invention to the Federal agency within 2 months after the inventor discloses it in writing to contractor personnel responsible for patent matters.
- Elect in writing whether or not to retain title to any subject invention by notifying the Federal agency within 2 years of disclosure.
- File patent applications within statutory deadlines.
- Include a government support clause in patent applications.
The MPEP states: ‘The contractor is also required to submit periodic reports on the utilization of a subject invention or on efforts at obtaining such utilization that are being made by the contractor or its licensees or assignees.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
March-in rights are a provision of the Bayh-Dole Act that allow the government to intervene in certain circumstances:
- The government can require the contractor or exclusive licensee to grant a license to a responsible applicant.
- If the contractor or licensee refuses, the government can grant the license itself.
- These rights are exercised only in specific situations, such as when the contractor is not taking effective steps to achieve practical application of the invention.
The MPEP explains: ‘March-in rights allow the government to grant licenses to other parties… where the contractor has failed to take effective steps to achieve practical application of the invention.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
For more information on patent licensing, visit: patent licensing.
The Bayh-Dole Act, as implemented in 37 CFR Part 401, significantly affects government rights in federally funded inventions:
- It allows contractors (including small businesses and nonprofit organizations) to retain title to inventions made under federally funded research and development contracts.
- The government receives a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention.
- The Act encourages the commercialization of federally funded inventions while protecting the government’s interests.
As stated in the MPEP: ‘The Bayh-Dole Act… provides, in essence, that nonprofit organizations and small business firms may retain title to inventions made under federally funded research and development contracts.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:
- The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
- It requires contractors to disclose these inventions and include a statement in patent applications about government support.
- MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
- The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.
In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.
MPEP 310 - Government License Rights to Contractor - Owned Inventions Made Under Federally Sponsored Research and Development (4)
Contractors have specific reporting requirements under the Bayh-Dole Act:
- Disclose each subject invention to the Federal agency within 2 months after the inventor discloses it in writing to contractor personnel responsible for patent matters.
- Elect in writing whether or not to retain title to any subject invention by notifying the Federal agency within 2 years of disclosure.
- File patent applications within statutory deadlines.
- Include a government support clause in patent applications.
The MPEP states: ‘The contractor is also required to submit periodic reports on the utilization of a subject invention or on efforts at obtaining such utilization that are being made by the contractor or its licensees or assignees.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
March-in rights are a provision of the Bayh-Dole Act that allow the government to intervene in certain circumstances:
- The government can require the contractor or exclusive licensee to grant a license to a responsible applicant.
- If the contractor or licensee refuses, the government can grant the license itself.
- These rights are exercised only in specific situations, such as when the contractor is not taking effective steps to achieve practical application of the invention.
The MPEP explains: ‘March-in rights allow the government to grant licenses to other parties… where the contractor has failed to take effective steps to achieve practical application of the invention.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
For more information on patent licensing, visit: patent licensing.
The Bayh-Dole Act, as implemented in 37 CFR Part 401, significantly affects government rights in federally funded inventions:
- It allows contractors (including small businesses and nonprofit organizations) to retain title to inventions made under federally funded research and development contracts.
- The government receives a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention.
- The Act encourages the commercialization of federally funded inventions while protecting the government’s interests.
As stated in the MPEP: ‘The Bayh-Dole Act… provides, in essence, that nonprofit organizations and small business firms may retain title to inventions made under federally funded research and development contracts.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:
- The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
- It requires contractors to disclose these inventions and include a statement in patent applications about government support.
- MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
- The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.
In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.
MPEP 500 - Receipt and Handling of Mail and Papers (1)
How does government funding affect small entity status?
Government funding can impact small entity status, particularly for universities and small businesses. The MPEP 509.03 provides guidance:
A small business concern or nonprofit organization is not disqualified as a small entity because of a license to the Federal government pursuant to 35 U.S.C. 202(c)(4).
This means:
- Receiving government funding does not automatically disqualify an entity from small entity status.
- The government’s license rights under the Bayh-Dole Act do not negate small entity status.
- However, other types of government agreements or contracts might affect status.
It’s important to carefully review the terms of any government funding or agreements to determine if they impact small entity eligibility. When in doubt, consult with a patent attorney or the USPTO for clarification.
To learn more:
Patent Law (5)
Contractors have specific reporting requirements under the Bayh-Dole Act:
- Disclose each subject invention to the Federal agency within 2 months after the inventor discloses it in writing to contractor personnel responsible for patent matters.
- Elect in writing whether or not to retain title to any subject invention by notifying the Federal agency within 2 years of disclosure.
- File patent applications within statutory deadlines.
- Include a government support clause in patent applications.
The MPEP states: ‘The contractor is also required to submit periodic reports on the utilization of a subject invention or on efforts at obtaining such utilization that are being made by the contractor or its licensees or assignees.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
March-in rights are a provision of the Bayh-Dole Act that allow the government to intervene in certain circumstances:
- The government can require the contractor or exclusive licensee to grant a license to a responsible applicant.
- If the contractor or licensee refuses, the government can grant the license itself.
- These rights are exercised only in specific situations, such as when the contractor is not taking effective steps to achieve practical application of the invention.
The MPEP explains: ‘March-in rights allow the government to grant licenses to other parties… where the contractor has failed to take effective steps to achieve practical application of the invention.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
For more information on patent licensing, visit: patent licensing.
The Bayh-Dole Act, as implemented in 37 CFR Part 401, significantly affects government rights in federally funded inventions:
- It allows contractors (including small businesses and nonprofit organizations) to retain title to inventions made under federally funded research and development contracts.
- The government receives a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention.
- The Act encourages the commercialization of federally funded inventions while protecting the government’s interests.
As stated in the MPEP: ‘The Bayh-Dole Act… provides, in essence, that nonprofit organizations and small business firms may retain title to inventions made under federally funded research and development contracts.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:
- The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
- It requires contractors to disclose these inventions and include a statement in patent applications about government support.
- MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
- The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.
In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.
How does government funding affect small entity status?
Government funding can impact small entity status, particularly for universities and small businesses. The MPEP 509.03 provides guidance:
A small business concern or nonprofit organization is not disqualified as a small entity because of a license to the Federal government pursuant to 35 U.S.C. 202(c)(4).
This means:
- Receiving government funding does not automatically disqualify an entity from small entity status.
- The government’s license rights under the Bayh-Dole Act do not negate small entity status.
- However, other types of government agreements or contracts might affect status.
It’s important to carefully review the terms of any government funding or agreements to determine if they impact small entity eligibility. When in doubt, consult with a patent attorney or the USPTO for clarification.
To learn more:
Patent Procedure (5)
Contractors have specific reporting requirements under the Bayh-Dole Act:
- Disclose each subject invention to the Federal agency within 2 months after the inventor discloses it in writing to contractor personnel responsible for patent matters.
- Elect in writing whether or not to retain title to any subject invention by notifying the Federal agency within 2 years of disclosure.
- File patent applications within statutory deadlines.
- Include a government support clause in patent applications.
The MPEP states: ‘The contractor is also required to submit periodic reports on the utilization of a subject invention or on efforts at obtaining such utilization that are being made by the contractor or its licensees or assignees.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
March-in rights are a provision of the Bayh-Dole Act that allow the government to intervene in certain circumstances:
- The government can require the contractor or exclusive licensee to grant a license to a responsible applicant.
- If the contractor or licensee refuses, the government can grant the license itself.
- These rights are exercised only in specific situations, such as when the contractor is not taking effective steps to achieve practical application of the invention.
The MPEP explains: ‘March-in rights allow the government to grant licenses to other parties… where the contractor has failed to take effective steps to achieve practical application of the invention.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
For more information on patent licensing, visit: patent licensing.
The Bayh-Dole Act, as implemented in 37 CFR Part 401, significantly affects government rights in federally funded inventions:
- It allows contractors (including small businesses and nonprofit organizations) to retain title to inventions made under federally funded research and development contracts.
- The government receives a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention.
- The Act encourages the commercialization of federally funded inventions while protecting the government’s interests.
As stated in the MPEP: ‘The Bayh-Dole Act… provides, in essence, that nonprofit organizations and small business firms may retain title to inventions made under federally funded research and development contracts.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:
- The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
- It requires contractors to disclose these inventions and include a statement in patent applications about government support.
- MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
- The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.
In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.
How does government funding affect small entity status?
Government funding can impact small entity status, particularly for universities and small businesses. The MPEP 509.03 provides guidance:
A small business concern or nonprofit organization is not disqualified as a small entity because of a license to the Federal government pursuant to 35 U.S.C. 202(c)(4).
This means:
- Receiving government funding does not automatically disqualify an entity from small entity status.
- The government’s license rights under the Bayh-Dole Act do not negate small entity status.
- However, other types of government agreements or contracts might affect status.
It’s important to carefully review the terms of any government funding or agreements to determine if they impact small entity eligibility. When in doubt, consult with a patent attorney or the USPTO for clarification.
To learn more: