Boston Patent Law Association Response to a USPTO Notice of Proposed Rulemaking on Bayh-Dole Regulations

Jonathan Roses was the lead author on behalf of the Boston Patent Law Association’s (BPLA’s) Patent Office Practice and Licensing Committees of an April 2021 Response to a Notice of Proposed Rulemaking from the National Institute of Standards and Technology (NIST) of the U.S. Department of Commerce regarding proposed changes to the rules implementing the Bayh-Dole Act which governs rights in inventions made with Federal assistance. In particular, NIST sought input on its goal of furthering return on investment for subject inventions developed under Federal funding agreements by revising regulations promulgated under Bayh-Dole in an attempt to add clarity for both contractors and Federal agencies. The Response requested that NIST clarify the rules around filing more than one provisional application for subject inventions, reconsider the requirement that subsequent such provisional applications include “additional written description,” and consider expanding the ability of agencies to waive the requirement to convey title to a subject invention where a contractor fails to timely disclose or elect title.