The CAFC held that the subcontractor's receipt of retroactive payments from the government grant puts the subcontractor's work under Bayh-Dole jurisdiction, even if the work was performed before the contract was awarded. The judgment was held. In that case, the Federal Circuit held that the government had a license to the patent at issue because the invention was in fact practiced by an individual who was then paid for the work under a subcontract with an NIH grant. .
A related invention relates to transgenic mice that develop Alzheimer's disease at an accelerated rate. This mouse was first developed by his four scientists at the University of South Florida (USF), one of whom he applied for NIH funding to support this research in 1995. Did. All four scientists were identified as individuals expected to contribute to research related to the grant. Shortly after the project began, two of his scientists transferred to the Mayo Clinic. And shortly after he did so in September 1996, the NIH awarded Mayo a grant. However, the mice remained housed at USF. In April 1997, the two scientists remaining at USF told the two Mayo Clinic scientists that they had succeeded in observing the onset of Alzheimer's disease in mice, meaning that the invention was actually made in April 1997. It was reported that it has been put into practical use.
More than a year after the grant was awarded, Mayo and USF entered into a subcontract. That contract explicitly stated that it was entered into to comply with his NIH guidelines, which require such a contract if the research covered by the grant is conducted at another research institution. The effective date of the subcontract was September 1997. that his April 1997 work performed by USF was the subject of his NIH grant, and that USF accepted a grant from Mayo for his April 1997 work. There is no room for disagreement. Based on these facts, the Court of Federal Claims found that Bayh-Dole applied for the USF patent because the mouse was actually used in the performance of business under the funding agreement.
USF argued on appeal that Bayh-Dole had no subcontract in place at the time of the work, and a legally sufficient implied agreement did not exist when the work was performed in April 1997. It was argued that it was not applied.
The CAFC rejected both arguments, holding that Bayh-Dole broadly defined a “financing agreement” to: all kinds of subcontractingThis must be construed to include payment for the performance of a subcontract or work already performed prior to its effective date. The court found that this interpretation was confirmed by USF's own position that Mayo had retroactively paid the subsidy for the April 1997 construction. The Federal Circuit also found that its conclusion was supported by the fact that this type of subcontracting is not uncommon after a federal grant is awarded, even if work under the grant has begun in advance. He also said that he was The CAFC said this practice supports focusing on the facts of the contract and the actual financing, as in this case.
practice tips: In assessing the applicability of Bayh-Dole to intellectual property, parties should look to the factual circumstances surrounding the conception, implementation, and handling of funds by the parties involved. This is because this decision clarifies the timing of payment and execution of funds. /The effect of subcontracting is unlikely to be decisive.
University of Florida Bd. Trustees v. United States92 F. 4th 1072 (Fed. Cir. 2024)
