What statement must be included in patent applications for inventions made with government support?
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read: “This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has…
Read MoreWhat are the consequences of not including the Government License Rights statement in a patent application?
Failing to include the Government License Rights statement in a patent application can have serious consequences. While the MPEP 310 does not explicitly state the penalties, the requirement is mandated by law under 35 U.S.C. 202(c)(6). Potential consequences may include: Non-compliance with federal regulations Risk of the patent being unenforceable Potential loss of rights or…
Read MoreHow does the Government License Rights statement affect patent ownership?
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that: “The government has certain rights in the invention.” These rights typically include: A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention…
Read MoreWhat is a ‘subject invention’ in the context of government-funded research?
What is a ‘subject invention’ in the context of government-funded research? A ‘subject invention’ is a term used in government contracts and refers to any invention conceived or first actually reduced to practice in the performance of work under a government contract. According to MPEP 310, ‘The term ‘subject invention’ is defined by 35 U.S.C.…
Read MoreHow does the Bayh-Dole Act affect government rights in federally funded inventions?
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…
Read MoreWhat are ‘march-in rights’ in government-funded inventions?
What are ‘march-in rights’ in government-funded inventions? ‘March-in rights’ are a significant aspect of government rights in federally funded inventions. As described in MPEP 310, these rights allow the government to require the contractor, assignee, or exclusive licensee of a subject invention to grant a license to a responsible applicant under certain circumstances. The MPEP…
Read MoreWhat are the reporting requirements for contractors under the Bayh-Dole Act?
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…
Read MoreWhat are march-in rights under the 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…
Read MoreWhat are the reporting requirements for subject inventions under government contracts?
What are the reporting requirements for subject inventions under government contracts? Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310: “The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to…
Read MoreHow does the government’s march-in rights affect contractor-owned inventions?
How does the government’s march-in rights affect contractor-owned inventions? The government’s march-in rights are a significant aspect of federally sponsored research and development contracts. As outlined in MPEP 310: “The government has the right to require the contractor to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible…
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