Total Compliance with Bayh-Dole Assignments Must be Goal

February 27, 2019 – Article
Technology Transfer Tactics - February Issue

Jeffrey McIntyre is Featured in Technology Transfer Tactics on Compliance with Bayh-Dole Assignments.

The recent update in federal regulations regarding Bayh-Dole compliance has some university TTO leaders wondering just how much is enough when it comes to getting faculty inventors to sign over their intellectual property. According to Jeff McIntyre, the goal must be 100% compliance. Technology Transfer Tactics turned to McIntyre for insight on what the National Institute of Standards and Technology requires of universities. McIntyre commented, “The NIST regulations require that universities have employees under written obligation to assign, typically an easy enough task, but they do not specify how to make them assign or what level of compliance is expected. The real risk from inadequate compliance comes in the form of universities losing out on potentially promising IP, along with any litigation expenses that would accompany a dispute.”

McIntyre also suggests that one step to increasing compliance is to include ownership language in all employment agreements, but explains the effectiveness can be limited if the employee challenges it later in relation to a specific invention.

“The problem with that language is that it can be vague and general, and there have been cases in which courts said it does not apply to specific assignments somewhere down the road,” he said. “You could have another more specific agreement at the time you receive funding covered by Bayh-Dole. The agreement could have the employee acknowledge that the funding requires this assignment, and anything that results from this funding will belong to the university. That’s a more narrow type of agreement that would back up what you already have in the general employment agreement.”