NIST reveals regulatory, legislative changes to tech transfer

January 07, 2021

The National Institute of Standards and Technology (NIST) has continued to follow through on improvements to federal technology transfer proposed through the Return on Investment initiative. In December, the agency revealed legislative text for statutory changes and, on Monday, released a notice of proposed rulemaking related to Bayh-Dole.

The legislative package contains 10 proposals that primarily relate to updating Stevenson-Wydler’s authorization of federal technology transfer processes. Proposed changes include allowing cooperative research and development agreements (CRADAs) to extend to 12 years, increasing the annual cap on patent royalties paid to federal employees, and authorizing all contractor-operated labs to use the newer agreements for commercializing technology (ACT) partnership models. Many of these changes were already included in a bill presented by the Republicans on the House science committee early in 2020 that did not pass during the session.

The notice of proposed rulemaking suggests numerous changes to the regulations governing the commercial use of inventions developed from federally-funded research. Many of the revisions are described as technical corrections or clarifications, with more substantial changes occurring to the regulations for filing provisional patent applications, the scope of march-in rights, and exclusive licenses procedures, among other issues. The proposed rules were published in the Federal Register on Jan. 4, and commenters have until April 5 to submit their responses. NIST will hold a webinar on the changes during the comment period, at a date to be determined.

nist, tech transfer