Patently Strategic - Patent Strategy for Startups

Government Grants and Patent Rights: SBIR, STTR, and Your IP

Sep 6, 2023

This podcast episode explores the use of government grants and the regulations surrounding inventions generated under these grants. It discusses the types of small business research grants available and the implications for patent licensing and ownership. The episode also highlights the Prevail Act, a patent reform legislation aimed at improving the Patent Trial and Appeal Board. Additionally, it delves into the challenges faced by inventors who receive federal funding and attempt to avoid government ownership of their inventions. The chapter concludes by exploring the benefits and challenges of government grants as a source of non-deluding capital for startups.

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Introduction

00:00 • 3min

The Prevail Act and Reforming the PTAB

02:43 • 10min

Understanding Government Grants, SBIR, STTR, and Patent Rights

13:12 • 4min

The Biodol Act of 1980: Provisions and Definitions

16:55 • 6min

Challenges of Avoiding Government Ownership

22:29 • 16min

Licensing Provisions and Government's March in Rights

38:27 • 2min

Disclosing and Electing Subject Inventions to Federal Agencies

40:02 • 21min

Government Grants: Temptation and Ramifications

01:01:01 • 2min

In this month's episode, we’re talking about the use of government grants and the strings that can come attached to your IP! We’re exploring the various types of small business research grants, how the Bayh-Dole Act regulates inventions generated under government grants, licensing and ownership implications for your patent when using federal dollars, and the sticky webs that you may find yourself in if you are not carefully tracking IP and adhering to the numerous provisions and timelines.

Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads the discussion along with our all-star patent panel, exploring:

⦿ How the Bye-Dole Act of 1980 regulates inventions under government grants
⦿ As a small business, what types of grants are available to you and whether or not they can cover IP-related costs
⦿ The rights of the federal government to your Invention when you use grant money
⦿ Implications for using subcontractors to perform the work under the grant
⦿ And of course, some of the biggest gotcha’s and practical tips for avoiding them

Ashley is also joined today by our always exceptional group of IP experts including:

⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate at Aurora

** Mossoff Minute **

This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the introduction of a very important piece of patent reform legislation called the PREVAIL Act.

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Thanks for listening!

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Note: The contents of this podcast do not constitute legal advice.

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