~Iri,n - Bayhdolecentral

42 I Journalof the Association of University Technology Managers
funding agency of and timely filing patents on disclosed inventions in
the United States, as well as countries outside of the United States.
• Undertake periodic internal due diligence reviews to check for compliance
with Bayh-Dole Act obligations, especially with regard to
federally funded research where invention disclosures have already
been submitted, patents are pending; etc. While this may be considered
burdensome to do, the consequences of overlooking a failure to com­
ply can be grave indeed. If a problem is discovered promptly enough,
there may even be time to take remedial action to avoid the potential
loss of rights.
• Take prompt action to try: to remedy anyfailure to comply with Bayh­
Dole Act obligations. All is not necessarily lost if such a failure is
discovered in time, and a diligent, good faith effort is made to come into
compliance. For example, if a subject invention was submitted to the
university patent administrator more than two months earlier but
before the patent is filed, promptly disclose that subject invention (on
the correct fonn) to the funding agency. Most funding agencies are not
interested in and do not have the resources to exploit inventions from
federally funded extramural research, and some may not even be aware
of the university's obligations under the Bayh-Dole Act. Again, the
funding agency is more likely to exercise its "discretion'' not to take title
if the university proactively tries to remedy what may be a technical
failure to comply with the Bayh-Dole Act.
Campbell Plastics may prompt funding agencies to focus more on the
obligations of contractors, including universities and other nonprofit
research institutions, under the Bayh-Dole Act. Indeed, this potentially
heightened scrutiny could draw unwanted attention to these obligations
under the Bayh-Dole Act for those who are recipients of federal funding.
Congress may eventually reevaluate whether the arguably draconian results
of Campbell Plastics ate a fair and equitable way to obtain compliance, as
well as articulate how much discretion should be vested in a funding agency
for failure to comply. Meanwhile, universities need to be prepared and
proactive to avoid losing valuable patent rights in federally funded research,
as well as suffering other undesirable consequences from a failure to
comply with the Bayh-Dole Act.