The Allocation of Patent Rights in Government Funded Inventions

In recent days, increased attention has been given to government funding on the national and state level, for example through investment in our country’s infrastructure. Some of those resources may be directed to research and development, spurring innovation in the private sector. The parties who accept government contracts or other federal grants should consider how such funds could lead to the development of patentable inventions and how patents obtained on those inventions may ultimately be enforced. While some may be familiar with securing and enforcing patents directed to inventions developed in-part or in-whole using federal resources, many will soon encounter this scenario for the first time. This article is part of a two-part series addressing the acquisition and litigation of patent rights directed to inventions developed with the support of government grants or contracts.

In this article, we provide a brief overview of the Bayh–Dole Act, which controls the allocation of intellectual property rights in inventions developed using federal funding, and its implications on both obtaining and retaining enforceable patents. In the second article, we will explore the considerations and requirements when bringing or facing an enforcement action based on those patents.

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