Online discussion of NIST proposals to change Bayh-Dole regulations and Stevenson-Wydler Act statutes – January 27, 2021 at 2PM

KEI will host an online discussion of the new end of Trump term proposals to change Bayh-Dole regulations and Stevenson-Wydler Act statutes, on January 27, 2021, from 2pm to 4pm.

To register for the event, send an email to

On January 4, 2021, the Department of Commerce’s National Institute of Standards (NIST) published a request for comments on changes in regulations for “Rights to Federally Funded Inventions and Licensing of Government Owned Inventions.” The NIST web page on this is:

The proposed regulations address several topics, including an attempt to eliminate the obligation to make products available to the public on reasonable terms:

(7) Clarify § 401.6 to include a provision that march-in rights shall not be exercised by an agency exclusively on the basis of business decisions of a contractor regarding the pricing of commercial goods and services arising from the practical application of the invention.

Note that practical applications is currently defined in 35 USC 201(f) as follows:

The term “practical application” means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case of a machine or system; and, in each case, under such conditions as to establish that the invention is being utilized and that its benefits are to the extent permitted by law or Government regulations available to the public on reasonable terms.

There are also proposals by NIST for several changes to the Stevenson-Wydler Act statutes (here), which are very significant, which were made public in December. NIST proposes to expand from 5 to 12 years confidentially of certain information related to CRADAs, raise the cap on the sharing of royalties on federally owned patents with employee inventors to $500,000 per year, from $150,000 per year, permit the federal government to copyright soft software programs,and to greatly expand authority to completely bypass public rights in inventions and data, under expanded use of “Other Transactions Authority” (OTAs), to mention a few issues.

Here is some commentary on this:

January 12, 2021. NIST Requests Comments on Proposed Changes to Bayh-Dole Regulations. NIST.

January 13, 2021. Ronald D. Lee Kristen O. Riemenschneider Nathaniel Castellano Claire O. Eaton, Proposed Changes To March-In and Other Bayh-Dole Regulations for Federally-Funded Inventions. Advisory. Arnold & Porter.

January 14, 2021. UIDP Webinar: Implementation of the NIST ROI Green Paper Findings.