August 29, 2018

Tyson Benson Shares Compliance Checklist for Tech Transfer Offices

Following the May 2018 revisions to the Bayh-Dole compliance regulations affecting university tech transfer offices, patent attorney Tyson Benson created a helpful checklist for updating compliance protocols. In a new article appearing in Tech Transfer Tactics’ August Newsletter, Benson provides additional insight into using the checklist and maintaining compliance in the future.

One such clarification concerns the assignment clause that is covered under Step 2. Benson reminds tech officers that the updated assignment “needs to be edited in accordance with each office’s patent agreements or patent policies.” He provides the following template as an example of an agreement that an employee/inventor may sign while assigning rights to the university:

As required by the University in compliance with the standard patent rights clause at 37 CFR 401.14(a)(f)(2), I hereby agree (i) to disclose promptly in writing to University personnel responsible for patent matters each subject invention so that the University can fulfill its reporting obligations to the Funding Agency, (ii) to assign and hereby do assign to the University the entire right, title, and interest in and to each subject invention made under the Funding Agreement, and (iii) to execute all papers necessary (a) to file patent applications on subject inventions and (b) to establish the federal government’s rights in the subject inventions.

Benson also provides readers with the government clause that is referenced in Step 3. The clause, which Benson notes must now be included in any patent application, is as follows:

This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.

Regarding Step 5, Benson explains that the revised regulations have affected the timeline in which decisions have to be made regarding the abandonment of patents. “It creates a bigger onus on the tech transfer office,” Benson says, “because they must ensure that the USPTO is notified ahead of time if they decide not to continue with a patent.”

The May revisions to the Bayh-Dole rules created other obstacles that tech transfer offices must overcome, although they are manageable if the proper protocols are updated within each university. Benson suggests that tech transfer managers revisit their protocols sooner rather than later, and consult his checklist and the Tech Transfer Central website for additional support.

For a copy of the Checklist for the New Bayh-Dole Rules, please email Tyson Benson at tbenson@hdp.com

To view the full article, please visit the Tech Transfer Tactics website.