Navigating the Bayh-Dole Act: A Guide for Inventors at the University of Pennsylvania

Introduction

As an inventor at the University of Pennsylvania, your innovations and discoveries play a crucial role in advancing knowledge and technology. The Bayh-Dole Act provides a framework that enables Penn to take ownership of and commercialize inventions developed with federal funding. This guide is designed to help you understand your rights and responsibilities under the Act, ensuring that your inventions reach their full potential.

Understanding Your Obligations

The Bayh-Dole Act imposes several key obligations on inventors and the University to ensure proper management and commercialization of federally funded inventions:

• Disclosure of Inventions: Promptly report any new inventions to the Penn Center for Innovation (PCI) using the invention disclosure form. This is the first step in protecting your intellectual property and exploring commercial opportunities.
• Documentation and Detailed Description: When completing the invention disclosure form, it is essential to provide a comprehensive and detailed description of your invention. This documentation should be approximately two typed pages, double-spaced, to satisfy the requirements of the federal government.  By providing a detailed and thorough description, you also facilitate the evaluation process by PCI, which will assist in determining the commercial potential and patentability of your invention. This documentation is crucial for ensuring compliance with the Bayh-Dole Act and is the first step towards safeguarding intellectual property rights associated with your invention.

Steps for Compliance

Initial Disclosure: Inform PCI about your invention as soon as possible after making the discovery by submitting an invention disclosure or reaching out to a PCI licensing officer. PCI’s licensing officers have scientific and business backgrounds so that they can understand your research and guide you through the commercialization process.  It is crucial to provide a complete and detailed invention disclosure to PCI, including a thorough and accurate description of your invention, as this enables PCI to meet Penn’s obligation of notifying the federal government within 60 days of receiving the disclosure. Early and complete disclosure is essential for meeting statutory deadlines and preserves Penn’s ability to safeguard intellectual property rights associated with your invention.

Assessment by PCI: PCI will work with you to evaluate the commercial potential of your invention and decide whether to pursue intellectual property protection, which may include filing a patent application, registering a copyright, etc.

Patent Application: If the decision is to proceed with patent protection, PCI will oversee the filing of patent applications to protect the invention.

Commercialization: PCI will work with you to identify and seek commercial partners to license the invention, and develop products or services based on the invention, for the benefit of the public and the US economy.

Your Rights and Benefits

Involvement in Patent Application Process: As an inventor, while the university retains ownership of the invention, you may play a crucial role in the patent application process.  You will likely work closely with patent counsel to assist them in drafting the patent application and providing guidance and advice during its examination.  Your expertise and input are vital to ensure the patent accurately and comprehensively covers your invention.

Revenue Sharing: Inventors are entitled to a share of the royalties or income generated from commercializing the invention. This not only provides a financial incentive but also recognizes their contribution to the innovation. Please see Penn’s Patent Policy for details.

Potential Consequences of Non-Compliance

Failure to comply with the Bayh-Dole Act can have significant implications, including the loss of patent rights and potential financial penalties. It is crucial to adhere to all disclosure and reporting requirements to avoid these risks.

Support and Resources Available

The Penn Center for Innovation is your primary resource for navigating the Bayh-Dole Act. They offer support and guidance throughout the invention and commercialization process, including:

One-on-One Consultations: Personalized advice and assistance in handling any situations that arise related to your inventions, including addressing any questions you may have related to the disclosure, evaluation, patenting, licensing and commercialization of your invention.

Conclusion

As an inventor at the University of Pennsylvania, you play a pivotal role in the innovation ecosystem. By understanding and adhering to the Bayh-Dole Act, you can ensure that you and the University of Pennsylvania are in compliance with federal regulations governing its receipt of federal funds and that your inventions make a meaningful impact while benefiting from the commercial success they generate. We encourage you to engage with PCI and utilize the resources available to maximize the potential of your innovative work.