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January 25, 2023 |

Bayh-Dole Act Reporting Requirements

What Inventors Need to Know About Receiving Department of Energy Funding

Whether you’re a startup, an independent contractor, or a company with proven technology, your project needs funding. Investors can be hard to come by, especially in the early stages of your research and development. Fortunately, government assistance is available.

The Department of Energy (DoE) supports many funding opportunities to fit every kind of energy project. There are awards for energy efficiency and renewables, resources for small businesses, and loan programs, to name a few. You’ll want to do thorough research to find the right funding fit before you apply under the relevant program. Then, you’ll want to read up on Bayh-Dole Act reporting requirements, which the DoE will expect you to fulfill. We’ll outline the basics below.

For more detailed information, including how to create the reports, you’ll find our downloadable Reference Guide linked here.

Visit our resources page to download our Reference Guide.
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Bayh-Dole Act reporting requirements for DoE-funded inventions

If you’ve secured your funding and begun working on your project, the fruits of your labor may manifest in the form of an invention. We’ll refer to your invention as a “subject invention” since it was conceived of (or first reduced to practice) in the performance of DoE-funded work. As a result, it’s subject to a few legal regulations, namely those related to the Bayh-Dole Act of 1980. This isn’t a bad thing. Many people assume that a regulation automatically restricts the commercialization of inventions.

In fact, there are very few restrictions in this regard. The important thing, and what the Bayh-Dole Act regulates, is the reporting of your invention. Since the Energy Department funded your research, they have a few stipulations to monitor the use of their awarded funds. Properly reporting your invention adheres to their expectations and protects your intellectual property.

A subject invention officially belongs to the DoE unless you follow the proper procedure to take ownership of your invention.

So imagine that you receive funding through the DoE’s Office of Energy Efficiency and Renewable Energy. Your team develops a more durable solar panel that is more resistant to water damage. Because this came about thanks in whole or in part to the Energy Department’s funding, you have a subject invention on your hands.

You must do three things to protect your invention:

  • Disclose your subject invention to the DoE in a timely manner.
  • Maintain your disclosure/election with the DoE.
  • Elect to retain title worldwide to the subject invention in a timely manner.

Disclose your invention to the Department of Energy

You’ll disclose your invention in writing to the DoE using their iEdison system. This is where the entire process will be maintained, so be sure to familiarize yourself with the interface. There is specific information the DoE reviewers will be looking for, such as “the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention.”

You can download a full list of requirements and a handy cover sheet and a timeline of events in our Reference Guide.

Maintain your disclosure with the Department of Energy

To monitor inventions developed under their funding and the use of their funds, the Energy Department requires periodic reports on the use of the invention or efforts to obtain that utilization. Additionally, any publications of the subject invention must be reported.

If you choose to discontinue the prosecution of a patent application or choose not to defend it in a reexamination or opposition, this must be reported to the DoE through the relevant patent office.

Elect to retain title worldwide to the subject invention

You must elect to retain the title of the invention within roughly twenty-four months. By doing this, you retain rights to your invention, but the Energy Department is granted a “nonexclusive, nontransferable, irrevocable, paid-up license” to practice—or have the invention practiced on its behalf—worldwide.

By failing to do so, the government can take ownership of the invention.

Conclusion

The DoE is a great source of funding for your company, but there are strings attached. Make sure to dot your i’s and cross your t’s. Working with a trusted patent attorney that is familiar with DoE contracts can help streamline this process and save you a two-year headache. For a more in-depth discussion of how you can protect your federally funded inventions, make sure to download our Reference Guide.

Helpful Terms and Links

Bayh-Dole Act

The Bayh-Dole Act, or the Patent and Trademark Law Amendments Act, is U.S. legislation regulating the use and reporting of inventions that arise from federally funded research.

Subject Invention

Any invention or idea conceived of (or first reduced to practice) in the performance of DoE-funded work and thus subject to the Bayh-Dole Act.

Department of Energy
Funding Programs

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Bayh-Dole Act Reporting
Requirements Reference Guide

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