The Bayh-Dole Act and Its Implementing Regulations & Rule-Making

Ronald Kudla
Ronald Kudla
60 Minutes
Product Id:
6 months

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Price Details
$131 Recorded
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This webinar provides a brief history of the Bayh-Dole Act, where it is managed within the federal government, the invention reporting requirements of grantees to the federal government, an example of how a university coordinates invention reporting requirements to complete timely reporting requirements of the Act. In addition to those provisions that apply to all organizations, non-profit organizations are subject to three obligations that those that seek intellectual property rights via license contracts need to be aware of.

Under the Act, the government retains the right to "march in "and grant license to third parties under four enumerated circumstances that perspective licensees and university personnel need to be aware of. Universities and the sponsors of research at universities have competing interests at stake that each need to be aware of in order to achieve a successfully negotiated sponsored research agreement and/or license agreement. In addition right to future intellectual property by industrial and research sponsors and licensees is covered.

Why should you Attend: University personnel should attend to be sure they possess the knowledge to fulfill the obligations of this Federal Act. Failure to do so can in a worse case scenario could result in cessation of future federal funding to the university and/or result in the right to manage and license intellectual property sponsored in-whole or in-part from a federal agency.

Entrepreneurs and company personnel who sponsor research at universities should attend if they do not know the impact that the Bayh-Dole Act will have on the intellectual property rights related to the intellectual property that stems from their funded research. Companies that wish to obtain ownership of the intellectual property that stems from the research they sponsored may not be able to achieve their goal. In addition they may not be able to manufacture product under the patents licensed from the university outside the United States. Knowledge of the Bayh-Dole Act is important to achieve efficient sponsored research license agreement with a university.

Areas Covered in the Session:

  • Confidentiality requirements
  • Ensure acknowledgement of government’s license to the invention.
  • The nine timely reporting obligations recipient institutions must make to the government
  • Ensure compliance to 37CFR;401.14
  • Recommended coordination between the sponsored research office with the technology transfer office/licensing office.
  • Government "March-in” rights
  • Key definitions: Funding Rights, Subject Inventions
  • Competing Interests between Industry & Non-Profits
  • Delays and restrictions of publications
  • Rights to future intellectual property

Who Will Benefit:
  • Patent attorneys, law students interested in intellectual property law, entrepreneurs
  • High technology entrepreneurs
  • Directors of Sponsored Research at companies
  • Directors of Business Development
  • Contract attorneys involved in in or out licensing from universities

Speaker Profile
Ronald Kudla recently served as the Executive Director of the Office of Intellectual Property, Technology Transfer and New Ventures at Rensselaer Polytechnic Institute in Troy, NY. Prior to that, he served as the Director of Academic Liaison for North America at GSK. Prior roles include the Director of Technology Transfer at the Universities of Florida, Director of Patents and Licensing at the Wisconsin Alumni Research Foundation (WARF) in Madison Wisconsin.

Dr. Kudla has a Ph.D. in Pharmaceutics with a minor in Biopharmaceutics from the University of North Carolina; an MBA in Pharmaceutical Marketing from Fairleigh Dickenson University, a MS degree in Pharmaceutics from the University of Michigan and a B.S. in Pharmacy from Ferris State University in Big Rapids Michigan. He is holds the designation as a Certified Licensing Professional (CLP) from the Licensing Executive Society (LES).

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