Summary. The deadlines and records that determine whether rights survive.

Phase 1 — Identify subject inventions

  • Is the invention patentable? (Copyrightable software and unpatented know-how are not subject inventions.)
  • Was it conceived in the performance of work under a funding agreement?
  • Was it first actually reduced to practice under a funding agreement?
  • Identify every funding source supporting conception and reduction to practice, with award numbers.
  • Where funding is mixed, review contemporaneous laboratory notebooks to date conception.
  • Read the patent rights clause in the specific award — 37 C.F.R. Part 401 supplies the standard clauses under 35 U.S.C. § 206, and agencies add supplemental terms.
  • Where the analysis is close, disclose and let the agency determine rather than concluding unilaterally.

Phase 2 — Meet the deadlines

  • Disclose to the agency within 2 months of the inventor's disclosure to institutional personnel responsible for patent matters. (The clock starts on internal disclosure, not on invention.)
  • Elect to retain title within 2 years of the agency disclosure — sooner if a statutory bar is imminent.
  • File an initial patent application within 1 year of election, or before any statutory bar date.
  • File foreign applications within the required periods.
  • Notify the agency before abandoning any patent or application, sufficiently in advance.
  • Calendar every deadline at intake, not at review.
  • Request extensions in writing where needed; document agency responses.

Phase 3 — Statutory bars and publication

  • Ask the inventor about every disclosure made or scheduled: journal articles, conference talks, posters, preprints, theses, public grant abstracts, company presentations, social media.
  • Confirm whether any public disclosure preceded the priority filing.
  • If yes: United States rights may survive the grace period under 35 U.S.C. § 102(b); foreign rights are likely lost in absolute-novelty jurisdictions.
  • Document the loss so it is disclosed in licensing rather than discovered in diligence.
  • File a provisional before any scheduled disclosure.
  • Educate researchers: a poster is a publication.

Phase 4 — Title and chain of title

  • Every inventor has an agreement with present assignment language ("I hereby assign"), not a promise to assign.
  • Agreements executed at hiring and, where appropriate, reconfirmed by project.
  • Visiting scientists, students, postdoctoral researchers, and contractors are covered.
  • Confirmatory assignments executed and recorded.
  • Inventorship determined by counsel and documented.
  • Contributions by industry collaborators evaluated for inventorship.
  • Any co-ownership with another institution identified, and an inter-institutional agreement executed before licensing.
  • Review any material received under a material transfer agreement for reach-through obligations.

Failure mode: the Stanford v. Roche problem — an inventor's present assignment to a third party defeating the institution's promise-to-assign.

Phase 5 — Filing requirements

  • The government support statement appears in every application and issued patent on a subject invention, identifying the agency and award.
  • Correct any patent lacking the statement.
  • Confirm the statement is accurate as to agency and award number.
  • Record assignments before or promptly after filing.

Phase 6 — Reporting

  • Invention disclosure reported.
  • Election reported.
  • Filings reported, domestic and foreign.
  • Issuance reported.
  • Utilization reported periodically as the agency requires.
  • Abandonment notifications filed in advance.
  • Confirmations retained for every submission.
  • A named person owns the reporting queue; it does not float.

Phase 7 — License flow-through

Every license of a subject invention must carry forward:

  • Acknowledgment of the government's paid-up worldwide license under 35 U.S.C. § 202(c)(4).
  • The domestic manufacturing commitment under 35 U.S.C. § 204, or an obligation to cooperate in seeking a waiver.
  • Acknowledgment of march-in rights under 35 U.S.C. § 203.
  • Licensee obligation to supply utilization data the institution needs for its own reporting.
  • Requirement that the government support statement appear in filings the licensee controls.
  • Diligence obligations that are objective and dated — a licensee sitting on the technology is itself a march-in exposure.
  • Reserved research rights for the institution and other nonprofits.
  • For nonprofits: royalty sharing with inventors, as 35 U.S.C. § 202(c)(7) requires.

Phase 8 — Domestic manufacturing

  • Determine early whether the licensee will manufacture in the United States.
  • If not, evaluate a waiver under 35 U.S.C. § 204.
  • Build the waiver record contemporaneously: efforts to find a domestic licensee, or evidence that domestic manufacture is not commercially feasible.
  • Consider structuring the grant so United States exclusivity converts if a waiver is denied.
  • Consult the agency informally before filing a waiver application.

Phase 9 — For licensees receiving flow-through terms

  • Understand that "exclusive" is exclusive of everyone except the United States government and its contractors performing government work.
  • Confirm the domestic manufacturing position against your actual supply chain, in week one of the negotiation.
  • Accept the reporting obligation and build a process to supply the data.
  • Confirm the government support statement appears in the patents before closing.
  • Do not spend negotiating capital trying to remove statutory conditions.
  • Confirm whether a co-owner exists and whether an inter-institutional agreement is in place — without one, exclusivity is illusory.
  • Calendar milestones, reports, maintenance fees, and cure periods.

Phase 10 — Sponsored research

  • Ownership default: each party owns inventions of its own personnel; joint inventions jointly owned.
  • Sponsor rights delivered through an option, ideally on pre-agreed terms in an exhibit.
  • Publication review of 30–90 days for patent filing and removal of sponsor confidential information; no suppression.
  • Background intellectual property retained by its owner, with a license to the extent necessary to practice the results.
  • Statement of work attached and narrowly scoped — not "research in Dr. X's laboratory."
  • Principal investigator named; departure addressed.
  • Exempt-status review: no impermissible private benefit under 26 U.S.C. § 501; unrelated business income considered under 26 U.S.C. § 511.
  • Private business use reviewed where the facility is bond-financed.
  • Federal funding overlap disclosed: the agreement cannot override Bayh-Dole.

Phase 11 — Conflict of interest (faculty-founded licensees)

  • Inventor's equity, options, board seats, consulting, and family interests disclosed.
  • Management plan addressing supervision of students on company-funded work.
  • The inventor does not negotiate the license on the institution's behalf.
  • Use of institutional facilities documented and priced; private business use reviewed.
  • Publication and research-direction review in place.
  • Roles kept separate in correspondence and accounts.

Phase 12 — Audit readiness

Be able to produce, on request:

  • Disclosure log with internal and agency disclosure dates

  • Election records

  • Filing records with government support statements

  • Reporting confirmations for every transaction

  • License agreements showing Bayh-Dole flow-through provisions

  • Utilization reports received from licensees

  • Inventor agreements with present assignment language

  • Recorded assignments

  • Inter-institutional agreements

  • Conflict-of-interest management plans

  • Waiver applications and agency responses

  • Documentation supporting funding determinations where mixed

  • Confirm consistency with award requirements under 2 C.F.R. Part 200.

  • Run a sample self-audit annually: pull ten disclosures and trace each to filing, reporting, and license.

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