Common Misconceptions about the Bayh-Dole Act
On this Page
Introduction
Understanding the Bayh-Dole Act is essential for effectively managing and commercializing federally funded inventions. This section addresses some of the most common questions and misconceptions about the Act to ensure clarity and compliance.
Misconception: The government automatically owns any invention created with federal funding.
Reality: Under the Bayh-Dole Act, the university or organization receiving a grant can elect to retain ownership of the invention, provided they comply with all other requirements of the Act.
Misconception: Any invention developed at a university is subject to the Bayh-Dole Act.
Reality: Only inventions conceived or first actually reduced to practice using federal funds are subject to the Act. Inventions made entirely with private or other non-federal funding are not covered under Bayh-Dole. Penn, like other institutions, generally owns other innovations that are not generated with federal funds via its policies and procedures. You should always consult with PCI when you believe you have an innovation made in the course of your employment.
Misconception: The Bayh-Dole Act requires that all inventions be patented.
Reality: The Act encourages patenting but does not require it. The decision to file a patent is based on the patentability and commercial potential of the invention and other strategic considerations weighed by PCI.
Misconception: Once I disclose my invention, I no longer have any rights to it.
Reality: Inventors are typically entitled to a share of revenue generated by the invention per the Penn Patent Policy.
Misconception: Bayh-Dole compliance is the sole responsibility of the inventor.
Reality: Compliance is a collaborative effort involving inventors, PCI, and other university departments to ensure all legal and regulatory obligations are met.
Related Resources
Policies & Procedures
Compliance Requirements under the Bayh-Dole Act
Common Misconceptions about the Bayh-Dole Act
Resources and Tools for Bayh-Dole Compliance
About the Bayh-Dole Act
Navigating the Bayh-Dole Act: A Guide for Inventors at the University of Pennsylvania
Related FAQs
What is the Bayh-Dole Act?
The Bayh-Dole Act is the federal legislation that allows universities, small businesses, and non-profits to own inventions made with federal funding. It aims to promote the commercialization of these inventions to benefit the
Who needs to comply with the Bayh-Dole Act?
Any organization that receives federal funding for research and development must comply with the Bayh-Dole Act. This includes universities, government-funded laboratories, and businesses.
How does the university handle royalties from inventions?
Royalties from inventions are distributed according to the Penn Patent Policy, which includes shares for the inventor(s), further research in the inventor(s)’ labs, schools and reinvestment in further research and technology development at the University.
What are the key requirements of the Bayh-Dole Act?
The key requirements include disclosing inventions, electing whether to retain title to the inventions, filing for patent protection, regular reporting to the funding agency and ensuring that the products developed from these inventions are manufactured in the United States when possible.
What happens if I do not disclose an invention?
Failure to disclose an invention can result in the loss of patent rights (under general patent laws) and other severe consequences, including financial penalties for non-compliance with Bayh-Dole regulations. Timely disclosure is critical to protecting your rights and the university’s interests.