The Bayh-Dole Act (P.L. 96-517) affords grantees the right to elect title and retain ownership to inventions they develop with funding under an NIH grant (“subject inventions”).  In accepting an award, the grantee agrees to comply with applicable NIH policies, the Bayh-Dole Act, and its Government-wide implementing regulations found at Title 37, (CFR) Part 401 (http://www.law.cornell.edu/cfr/text/37/401.14#a).

A significant part of the regulations require that the grantee report all subject inventions to the awarding agency (see section 8.4.1.6 Invention Reporting  in the NIHGPS), as well as include an acknowledgement of federal support in any U.S. patent applications and issued patents thereon (see 37 CFR 401.14(a)(f)(4) for specific language).

Actions to Protect Government’s Interest (37 CFR 401.14(f.2)

The awardee agrees to require, by written agreement (assignment agreement), its employees, other than clerical and nontechnical employees, to disclose promptly in writing (disclosure form) to institutional official each subject invention made under agreement in order that the institution can comply with the disclosure provisions of the federal agency, and to execute all papers necessary to file patent applications on subject inventions and to establish the government’s rights in the subject inventions. The awardee shall instruct such employees through employee agreements or other suitable educational programs on the importance of reporting inventions in sufficient time to permit the filing of patent applications prior to U.S. or foreign statutory bars.

Examples of Assignment Agreements and Disclosure forms:

Policies:

University of New Hampshire (UNH): http://www.usnh.edu/olpm/UNH/VIII.Res/D.htm