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Senate Bill Introduced to Examine Bayh-Dole Reporting Requirements

On January 10, 2024, Senators Chris Coons and Thom Tillis introduced a bill titled Improving Efficiency to Increase Competition Act (“IEICA”).  The IEICA would require that the Comptroller General provide a report to certain Congressional Committees regarding the Bayh-Dole Act and “specifically with respect to the requirements under that [Act], and the regulations implementing that [Act], that a contractor under a funding agreement with a Federal agency must follow with respect to patent disclosure.”

The one pager released with the IEICA states that while the reporting requirements under the Bayh-Dole Act are set out in existing Federal regulations, “each government agency has set forward different methods for reporting, has established various forms of communication with grantees, and has its own standards for retaining the intellectual property from the grantee.”  It also notes that having different reporting systems for each agency creates a “burdensome, time-consuming, and confusing process [that] forces grantees, many of which are universities, to dedicate resources to navigating different systems for each federal agency [which] wastes time, money, and resources that could otherwise be used to develop new inventions.”

The IEICA would require that the Comptroller General’s report include: (1) the percentage of inventions that contractors elect not to retain under Bayh-Dole’s implementing regulations; (2) the number of requests for extensions of time made by contractors related to the disclosure and election of inventions; (3) how Bayh-Dole’s reporting requirements “impact the ability of a contractor to compete with foreign competitors”; (4) how the government uses reporting under Bayh-Dole “and suggested improvements to ensure there is an improved public-private partnership”; (5) the barriers that Bayh-Dole’s reporting requirements create for contractors to develop inventions; (6) “the time and effort” universities use for the management and reporting required by Bayh-Dole; (7) the “difficulties contractors encounter in using the patent reporting system deployed by [NIST] and recommendations to address those difficulties”; (8) if any agency does not use the NIST system whether that agency would benefit from using it; and (9) the number of disclosure systems used throughout the government, listed by which system is used by each agency, and the various disclosure requirements made by each agency.

Key Takeaways

  1. While it remains to be seen whether the IEICA is enacted, Senator Coons’ press release notes that this same bill was introduced in the House of Representatives last month indicating bipartisan and bicameral support for this legislation.
  2. Even if President Biden is unable to achieve the Administration’s overarching goals with respect to patent rights under Bayh-Dole, this legislation demonstrates that members of Congress are continuing to look for additional ways to update and modernize the nearly 45-year old legislation. 

This post builds on our previous post regarding the Biden Administration’s introduction of the Draft Interagency Guidance Framework for Considering the Exercise of March-In Rights.