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Federal Register / Vol. 86, No. 1 / Monday, January 4, 2021 / Proposed Rules DEPARTMENT OF COMMERCE
National Institute of Standards and Technology 37 CFR Parts 401 and 404
Docket No.: 2012070327
RIN 0693AB66

Rights to Federally Funded Inventions and Licensing of Government Owned Inventions National Institute of Standards and Technology NIST, United States Department of Commerce.
ACTION: Notice of proposed rulemaking.
AGENCY:

The National Institute of Standards and Technology NIST
requests comments on proposed revisions to regulations that would further the Return on Investment ROI
Initiative for Unleashing American Innovation. The proposed revisions to Rights to Inventions Made by Nonprofit Organizations and Small Business Firms under Government Grants, Contracts, and Cooperative Agreements and Licensing of Government-Owned Inventions make technical corrections; reorganize certain subsections; remove outdated and/or unnecessary sections; institute a reporting requirement on Federal agencies; and provide clarifications on definitions, communications, scope of march-in rights, filing of provisional patent applications, electronic filing, the purpose of royalties on government licenses, and the processes for granting exclusive, co-exclusive and partially exclusive licenses and for appeals. NIST
intends to hold a webinar regarding the proposed changes and information on that webinar will be available to the public at https www.nist.gov/tpo/
bayh-dole.
DATES:
For Comments: Comments must be received no later than April 5, 2021.
For Public Webinar: Details about accessing the public webinar will be made available via the Technology Partnerships Office website at http
www.nist.gov/tpo/bayh-dole.
ADDRESSES: Submit your comments, identified by docket identification ID
number: 2012070327, through the Federal e-Rulemaking Portal: http
www.regulations.gov search using the docket number. Follow the online instructions for submitting comments.
Identify the document by docket ID
number and other identifying information subject heading, Federal Register date and page number. See SUPPLEMENTARY INFORMATION for file SUMMARY:

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formats and other information about electronic filing. All submissions, including attachments and other supporting materials, will become part of the public record and subject to public disclosure. NIST reserves the right to publish relevant comments publicly, unedited and in their entirety.
Personal information, such as account numbers or Social Security numbers, or names of other individuals, should not be included. Do not submit confidential business information, or otherwise proprietary, sensitive or protected information. Comments that contain profanity, vulgarity, threats, or other inappropriate language or content will not be posted or considered.
For Public Webinar: Details about accessing the public webinar will be made available via the Technology Partnerships Office website at http
www.nist.gov/tpo/bayh-dole.
FOR FURTHER INFORMATION CONTACT:
Courtney Silverthorn, via email:
courtney.silverthorn@nist.gov or by telephone at 3019754189.
SUPPLEMENTARY INFORMATION:
I. General Information Does this action apply to me?
This action may be of interest to you if you are an educational institution, company, or nonprofit organization, especially one that has received or would like to receive Federal funding for scientific research and development.
II. Statutory Framework These proposed rule revisions are promulgated under the University and Small Business Patent Procedures Act of 1980, Public Law 96517 as amended, codified at title 35 of the United States Code U.S.C. 200 et seq., commonly known as the Bayh-Dole Act or Bayh-Dole, which governs rights in inventions made with Federal assistance. The Bayh-Dole Act obligates nonprofit organizations and small business firms contractors, and large businesses, as directed by Executive Order 12591, to disclose each subject invention that is, each invention conceived or first actually reduced to practice in the performance of work under a funding agreement, 35 U.S.C.
201e within a reasonable time after the invention becomes known to the contractor, 35 U.S.C. 202c1, and permits contractors to elect, within a reasonable time after disclosure, to retain title to a subject invention, 35
U.S.C. 202a. Under certain defined exceptional circumstances, Bayh-Dole permits the Government to restrict or eliminate the contractors right to elect to retain title, 35 U.S.C. 202a, 202b,
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and under such circumstances, rights vest in the Government.
The Secretary of Commerce has delegated to the Director of NIST the authority to promulgate implementing regulations. Regulations implementing 35 U.S.C. 200 through 204 are codified at 37 CFR part 401, Rights to Inventions Made by Nonprofit Organizations and Small Business Firms under Government Grants, Contracts, and Co-operative Agreements, and apply to all Federal agencies, 37 CFR
401.1b. These regulations govern all subject inventions under Bayh-Dole, 37
CFR 401.2d, even if the Federal Government is not the sole source of funding for either the conception or the reduction to practice, 37 CFR 401.1a.
Regulations implementing 35 U.S.C.
208, specifying the terms and conditions upon which federally owned inventions, other than inventions owned by the Tennessee Valley Authority, may be licensed on a nonexclusive, partially exclusive, or exclusive basis, are codified at 37 CFR
part 404, Licensing of Government Owned Inventions.
Bayh-Dole and its implementing regulations require Federal funding agencies to employ certain standard clauses in funding agreements awarded to contractors, except under certain specified conditions; 37 CFR 401.3.
Through these standard clauses, set forth at 37 CFR 401.14a, contractors are obligated to take certain actions to properly manage subject inventions.
These actions include disclosing each subject invention to the Federal agency within two months after the contractors inventor discloses it in writing to contractor personnel responsible for patent matters, 37 CFR 401.14c1;
electing in writing whether or not to retain title to any subject invention by notifying the Federal agency within two years of disclosure, 37 CFR 401.14c2;
filing an initial patent application on a subject invention as to which the contractor elects to retain title within one year after election, 37 CFR
401.14c3; executing and promptly delivering to the Federal agency all instruments necessary to establish or confirm the rights the Government has throughout the world in those subject inventions to which the contractor elects to retain title, 37 CFR 401.14f1;
requiring, by written agreement, the contractors employees to disclose promptly in writing each subject invention made under contract, 37 CFR
401.14f2; notifying the Federal agency of any decision not to continue the prosecution of a patent application, 37 CFR 401.14f3; and including in the specification of any U.S. patent
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