Bayh-Dole Act Overview
The Bayh-Dole Act aligns with Notre Dame's mission to be a force for good by enabling the use of scholarly research with far-reaching social and commercial benefits. Understanding Bayh-Dole helps researchers comply with federal requirements and maximize the impact of their discoveries.
Watch an introductory video to learn how this process unfolds at Notre Dame
Ownership and Assignment of Rights
As stated in the University’s Intellectual Property Policy, the University of Notre Dame owns all intellectual property arising from University Work, including all rights to patentable inventions. This policy aligns with federal regulations and requires faculty, staff, and students within its scope to assign rights to the University. In order for both individuals and Notre Dame to remain compliant with federal law and other sponsor requirements, individuals are required to execute an Assignment of Rights document.
Assignment of Rights Document
The Assignment of Rights document
- Indicates you acknowledge your obligation under the Intellectual Property Policy, including the requirement to disclose inventions to the University
- Assigns rights in present and future inventions to the University
- Confirms you will execute additional assignments and other documents to perfect the University’s ownership and assist in preparation and prosecution of patent filings
Assistance with Patent Filings
The filing and prosecution of a patent application are only possible with review and input from inventors - who are innately familiar with their invention. Patent counsel and IDEA Center staff can help navigate the process, but you, the inventor, are the true technical expert. Inventors will be asked to provide descriptions of their inventions, supporting data, and may even be asked to talk through their invention with a patent professional. You should expect to review draft documents, including responses to government patent offices to support patent prosecution. Patent documents contain both technical and legal exactitudes. We want to make sure you feel the filed documents reflect your invention.
Additional Assignment and Declarations
With any patent filing, there will be documents that you will need to sign. Basic examples include Declaration and Assignment documents. Declarations confirm you believe yourself to be an inventor. Assignments will transfer ownership of the patent rights for the specific invention and patent family; are required as part of the University’s compliance with the Bayh-Dole Act; and are required so the University may act on your behalf in filing patent applications. While rare, some countries will require additional documentation that requires witnessing or notarization. We’ll explain what we are asking for when this is the case.
Possible Litigation Involving Patents
In some cases, litigation can arise challenging the patent validity or alleging a third party is infringing a patent. As an inventor, the University may need you to participate in the litigation by providing written statements, testifying, or in other ways specific to the individual case. Litigation involving a University-created invention is a rare occurrence.
As an inventor, you might be asked to travel or devote a reasonable amount of time to support any University litigation efforts. You may be very involved in the discussions leading up to an infringement action, so any such requests for your efforts will not take you by surprise; and your willingness to participate to support the case can be a factor which the University weighs before deciding how to proceed in any litigation. If you need to travel as part of any litigation, that would be covered by the University, and not a personal expense.