~Iri,n - Bayhdolecentral

Losing Patent Rights for Failing to Comply
with the Bayh-Dole Act: The Implications
of Campbell Plastics on Federally Funded
University Research
Scott D. Locke, JD, and Eric W Guttag, JD
Abstract
Federal funding, typically in the form of research grants, is often used to
support university research. Most universities are aware that the Bayh-Dole
Act allows them to retain title to patent rights in such research. What uni­
versities may not know is that the Bayh-Dole Act is a two-edged sword:
patent rights can also be lost if the subject invention is not timely disclosed
to the federal funding agency. This was sadly brought home by the recent
case of Campbell Plastics Engineering & Mfg., Inc. v. Brownlee, where the
Court of Appeals for the Federal Circuit affirmed an administrative ruling
that a federal defense contractor forfeited its patent rights under the Bayh­
Dole Act for such failure to timely disclose.
Introduction
Federal grants provide the majority of funding for university-based
research. Most universities are aware that the Bayh-Dole Act! allows them
to retain title to pateuts derived from such federally funded research. What
universities may not appreciate is that the federal government, to protect
the public's investment in such research, imposes many obligations on those
who receive those funds, including a requirement that potential inventions
from such research be disclosed in a timely manner to the funding agency.
There was always the legal, but generally unenforced, possibility that
failure to comply with this aud other obligatious could cause loss of these
valuable pateut rights.
That legal possibility now has become an euforced reality, as was
brought home by the recent case of Campbell Plastics Engineering & Mfg.,
Scott D. Locke, JD, is a partner with Kalow & Springut LLp, in New York, New
York. Eric W. Guttag, JD, is a partner with Jagtiani + Guttag, Fairfax, Virginia. '
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