CRA Intellectual Property & Technology Transfer 1 — Questions and Answers
Question 1: The Bayh-Dole Act of 1980 primarily grants universities and small businesses the right to:
- Retain title to inventions made with federal funding (Correct answer)
- Receive unlimited federal grants without reporting requirements
- License all federally funded inventions exclusively to large corporations
- Waive all patent rights on government-sponsored research
Correct answer: Retain title to inventions made with federal funding
The Bayh-Dole Act allows universities, small businesses, and nonprofits to elect to retain title to inventions developed with federal funding, stimulating commercialization.
Question 2: Which federal agency retains 'march-in rights' under the Bayh-Dole Act?
- The Department of Commerce
- The funding federal agency (Correct answer)
- The U.S. Patent and Trademark Office
- The National Science Foundation exclusively
Correct answer: The funding federal agency
Under Bayh-Dole, the funding federal agency retains march-in rights to require licensing to third parties if the grantee fails to commercialize the invention adequately.
Question 3: An invention disclosure is typically the first formal step in technology transfer. Its primary purpose is to:
- Publish the discovery in a peer-reviewed journal
- Notify the Technology Transfer Office of a potentially patentable invention (Correct answer)
- Authorize commercialization without further institutional review
- File a provisional patent application directly with the USPTO
Correct answer: Notify the Technology Transfer Office of a potentially patentable invention
An invention disclosure is a confidential document submitted by inventors to their Technology Transfer Office to report a potentially patentable discovery and initiate the evaluation process.
Question 4: Under Bayh-Dole, a university that elects title to a federally funded invention must notify the sponsoring agency within how many months of the inventor's report?
- 6 months
- 12 months (Correct answer)
- 24 months
- 2 months
Correct answer: 12 months
Bayh-Dole regulations (37 CFR 401) require the contractor to elect title within two years of the inventor's report, but notification of the election intention to the agency must occur within the required timeframe set at 12 months of the invention report.
Question 5: A 'nonexclusive license' in technology transfer agreements means the licensor:
- Transfers full ownership of the patent to the licensee
- Can license the same technology to multiple parties simultaneously (Correct answer)
- Restricts the technology to a single commercial partner
- Grants the licensee the right to sublicense without restriction
Correct answer: Can license the same technology to multiple parties simultaneously
A nonexclusive license allows the licensor (e.g., university) to grant the same rights to multiple licensees at the same time, whereas an exclusive license restricts those rights to one party.
Question 6: The government use license retained by the federal government under Bayh-Dole grants the government the right to:
- Sell commercialized products derived from the invention to private entities
- Practice the invention for governmental purposes without paying royalties (Correct answer)
- Block the university from licensing to foreign companies
- Require the inventor to share royalties with the funding agency
Correct answer: Practice the invention for governmental purposes without paying royalties
The Bayh-Dole Act includes a royalty-free, nonexclusive license for the U.S. government to practice any subject invention for its own purposes.
Question 7: Which of the following best describes the role of a university Technology Transfer Office (TTO)?
- Managing graduate student admissions and academic programs
- Evaluating invention disclosures, filing patents, and negotiating licenses to commercialize university IP (Correct answer)
- Overseeing human subjects research and IRB compliance
- Administering federal grant budgets and subcontract agreements
Correct answer: Evaluating invention disclosures, filing patents, and negotiating licenses to commercialize university IP
A Technology Transfer Office is responsible for evaluating the commercial potential of inventions, pursuing patent protection, and licensing intellectual property to industry partners.
CRA Intellectual Property & Technology Transfer 1
The Bayh-Dole Act of 1980 primarily grants universities and small businesses the right to: