1. 0 Overview of Bayh-Dole Act and Data Rights under the Federal Acquisition Regulation Milton Hsieh Office of Chief Counsel August 10, 2006

2. 1 Bayh-Dole Act Bayh-Dole Act, as amended, codified in Title 35 of the United States Code. The federal statute that controls the allocation of rights to inventions made during the performance of federally-funded/supported research and development. Enacted in December 1980. The Bayh-Dole Act is implemented in the FAR, which governs procurement contracts, and in government-wide regulations issued by the Department of Commerce. DOC regulations contain standard patent rights clauses. See 37 C.F.R. §401.14. FHWA regulation requires that State DOTs, using FHWA planning and research funds, and their subrecipients include or cite the standard patent rights clauses at 37 C.F.R. §401.14 in all subgrants or contracts. 23 C.F.R. §420.121(i).

3. 2 Bayh-Dole Act Non-profit organizations, small businesses, and other contractors may elect to retain title to an invention made during the performance of federally- funded research and development. Must elect to retain title within two years of the date that the organization discloses the invention to the federal funding agency. If they elect to retain title, the federal government retains a nonexclusive, nontransferable, irrevocable, paid-up license to use, and authorize others to use, the subject invention for or on behalf of the United States. If they elect to retain title, must adhere to a number of detailed requirements (e.g., must file a patent application within one year after electing to retain title or prior to any statutory bar).

4. 3 Bayh-Dole License Nonexclusive – the contractor may license the technology or invention to other parties Irrevocable – the contractor cannot revoke the federal government’s license Paid-up – the contractor cannot require the federal government to pay royalties to use the invention Nontransferable – the federal government’s license cannot be given to a third party so that the third party can use the invention in place of the federal government

5. 4 Bayh-Dole License So, what can the FHWA do under its license: FHWA can use the invention; FHWA can provide the invention to our contractors to use for federal purposes, generally for R&D; FHWA can provide the invention to another federal agency to use.

6. 5 Data Rights under the Federal Acquisition Regulation (FAR) 48 C.F.R. §52.227-14 – Standard Data Rights Clause The Federal Government has “unlimited rights” in all data first produced in the performance of the contract and all other data delivered under the contract unless the data constitutes “limited rights data”, “restricted computer software”, or data that the contractor has received permission, in writing, from the contracting officer to copyright.

7. 6 Definitions “Unlimited rights” means the rights of the Government to use, disclose, reproduce, prepare derivative works, distribute copies to the public, and perform publicly and display publicly, in any manner and for any purpose, and to have or permit others to do so. “Limited rights data” means data, other than computer software, that embody trade secrets or are commercial or financial and confidential or privileged. “Restricted computer software” means computer software developed at private expense and that is a trade secret; is commercial or financial and confidential or privileged; or is published copyrighted computer software; including minor modifications of such computer software.

8. 7 If the contractor receives permission to copyright the data, then... For data other than computer software, the Contractor grants to the Government, and others acting on its behalf, a paid-up, nonexclusive, irrevocable worldwide license in such copyrighted data to reproduce, prepare derivative works, distribute copies to the public, and perform publicly and display publicly, by or on behalf of the Government. For computer software, the Contractor grants to the Government and others acting in its behalf, a paid-up nonexclusive, irrevocable worldwide license in such copyrighted computer software to reproduce, prepare derivative works, and perform publicly and display publicly by or on behalf of the Government.