IP Talk Episode 36: Rob Sahr on the Administration’s Aggressive Approach to Bayh-Dole Compliance

Rob Sahr is a shareholder in Wolf Greenfield’s Biotechnology Practice. He develops strategies for life science companies to maximize exclusivity for therapeutic and diagnostic products. Rob has also assisted federal grant recipients and contractors with Bayh-Dole compliance.

Originally passed at the end of 1980, the Bayh–Dole Act permits ownership by contractors of inventions arising from federal government-funded research. In recent months, the Biden Administration has seemed intent on more aggressively exercising “march-in rights” under the Act to promote affordability of taxpayer-funded inventions.

In this edition of IP Talk with Wolf Greenfield, Rob provides insight on recent developments regarding Bayh-Dole compliance. Here are the highlights.

• 00:59 - On the contentiousness of Bayh-Dole
• 03:06 - What is a subject invention and why are they the source of so much confusion?
• 04:59 - Defining “march-in rights” and how are they different from “taking title”
• 06:16 - The four requirements of march-in rights
• 07:04 - Explaining “timely disclosure” and its importance
• 08:34 - Implications of the recent University of South Florida case
• 10:28 - Enforcing the requirements around utilization reports and how the Presidential election might factor into the equation

Related content: 

• Proposed March-In Guidance Signals Funding Agencies to Actively Evaluate Government Rights Under the Bayh-Dole Act