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​​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.
01:03:33

Podcast summary created with Snipd AI

Quick takeaways

  • The Bayh-Dole Act regulates inventions generated under government grants and can have implications for patent licensing and ownership when using federal dollars.
  • Grant recipients must comply with disclosure and reporting requirements, make a written election to retain title, and acknowledge government support in patent applications.

Deep dives

Overview of the Bayh-Dole Act and Government Grants

The podcast episode discusses the Bayh-Dole Act, which regulates inventions generated under government grants. It explores the various types of small business research grants and the implications of using federal dollars for patent licensing and ownership. It highlights the potential risks and strings attached to government grants, such as the government's royalty-free license to practice an invention worldwide. The importance of disclosure and reporting requirements for grant recipients is emphasized, along with the provision of margin rights for the government. The discussion also touches on the Prevail Act, a patent reform legislation that aims to address issues with the Patent Trial and Appeal Board.

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