Not All NIFA Grantees Are Complying with Bayh-Dole Act

January 9, 2018 | By Jerry Ashworth | Post a Comment

USDA_logoAlong with the more noteworthy requirements when administering a federal award, such as financial and performance reporting, indirect costs and subrecipient monitoring, grant recipients should not forget the other “strings attached” when it comes to award oversight. In fact, in Thompson’s Federal Grants Management Handbook, we dedicate a whole tab (Tab 500) to such regulations and statutes that have an impact on grants. One of these “strings” is research grantee compliance with the Bayh-Dole Act.

The Bayh-Dole Act of 1980 (Pub. L. 96-517) permits nonfederal entities to patent an invention created through a federal award for the purpose of ownership title, further development and commercialization. Before the Bayh-Dole Act, the title vested to the federal government. Ownership can also create royalty payments. Royalties from these ventures are often assigned to the applicant organization (grant recipient), but can be shared with the principal investigators or inventors as defined by award and subaward agreements.

The regulation requires, among other things, that eligible organizations establish a written agreement with all employees to disclose promptly each subject invention made under a federal award and to execute all papers necessary to file patent applications. However, at this week’s Federal Demonstration Partnership meeting in Washington, D.C., Melanie Krizmanich, senior policy specialist in the policy and oversight division at the U.S. Department of Agriculture’s National Institute of Food and Agriculture (NIFA), told attendees that NIFA has noticed numerous instances of noncompliance with the Bayh-Dole Act for patent reporting for federal fiscal year 2017.

All NIFA invention reporting must be submitted through the Interagency Edison (iEdison), and the reporting requirements are included in the award terms and conditions. NIFA requires that two months after the institution learns of an invention, it must submit an invention disclosure. Two years after the disclosure of the invention, it must notify the agency whether it is electing to retain title to the invention.

“It’s come to our attention that not everybody is reporting through iEdison,” Krizmanich said, adding that one institution, for example, informed NIFA about 18 special patent requests but none were reported in iEdison. “Failure to comply with the Bayh-Dole Act reporting requirements may result in an institution’s loss of rights to the invention, but it’s also important to us because this is a requirement in the terms and conditions.” Krizmanich did not provide any further details on actions NIFA is taking to address these instances of noncompliance.

Now that we’re aware of the problem that NIFA is having with Bayh-Dole reporting compliance, it would be interesting to hear from other agencies to see if they have similar concerns. Remember, grantees must comply with the terms and conditions of their federal grant. Take the time to understand all the requirements, and make sure you don’t lose your federal funding — or your rights to an invention.

Have you had any issues with Bayh-Dole Act reporting? Let us know.

As a reminder, we have all of our Federal Funding Training Forums scheduled for 2018. Please let me know if you have questions or can make any of these. We hope to see you there!


  • Wednesday Feb 7 – Friday Feb 9 in PHOENIX

  • Wednesday May 1 – Friday May 4 in ST LOUIS

  • Wednesday July 25 – Friday July 27 in MINNEAPOLIS

  • Wednesday October 17 – Friday October 19 in ATLANTA


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