Action |
When |
Discussion |
37 CFR Reference |
Comparison
Paper vs. iEdison |
Employee
Agreement to Disclose All Inventions:
The agreement to be obtained by the grantee/contractor
organization is that the employee will abide
by the terms of the patent rights clause.
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At time of employment -- term
of employment.
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Grantee/contractor organizations
must have policies in place regarding ownership
of intellectual property, including conflict
of interest issues.
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401.14(f)(2)
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Invention
Report: The grantee/contractor must submit a report
of any "subject" invention. The report must identify
inventor(s), federal agency(ies) grant or contract number(s),
and date of any public disclosure. Date of submission establishes
time frames for all future actions. Must be complete in
technical detail. The report should be directed to the lead
agency.
The term "subject invention"
means any invention of a grantee or contractor
organization conceived or first actually reduced
to practice in the performance of work under
a federal funding agreement (grant, cooperative
agreement, contract).
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Within 2 months of inventor's
initial report to the grantee/contractor organization.
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There is no single format for
disclosing the invention to the government. The communication
should include: the title of the invention, date of any
public disclosure, names of all inventors, source(s) of
federal funding (i.e. grant or contract number),
a written description of the invention in technical detail.
The invention disclosure should ideally be signed by the
inventor(s): at the very least signed by a grantee/contractor
institutional official.
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401.14(a)(2)
401.14(c)(1)
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Submission of the invention
report may be done electronically by uploading either a
PDF, TIFF, or text file through iEdison. Alternatively the
document can be faxed to the lead agency, or submitted through
U.S. mail. |
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Rights
to Inventions on Subcontracts: Subcontractors
retain rights to their subject inventions.
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Same reporting responsibilities,
obligations and time frames as prime grantee/contractor
organization.
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Prime grantee/contractor organization
cannot require ownership of subcontractor's
subject invention(s).
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401.14(g)(1)
401.14(g)(2)
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Invention disclosure, confirmatory
license, and proof of government support clause may be submitted
electronically through iEdison.
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Election
of Title to Invention: Grantee/contractor
organization must notify the federal agency
sponsor that it will retain ownership of invention
and take steps to commercialize the invention.
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Within 2 years of reporting
the invention to the lead federal agency sponsor.
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401.14(b)
401.14(c)(2)
401.14(f)(1)
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Election of title handled electronically
using iEdison, otherwise a signed paper document
is required.
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Confirmatory
license: The grantee/contractor organization
must provide a nonexclusive, nontransferable,
irrevocable, paid-up license for the government
to practice or have the invention practiced
on its behalf throughout the world.
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Commensurate with report of any
initial patent filing, unless the invention
is being licensed as an unpatented biological
material or research tool.
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401.14(f)(1)
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Submission of the confirmatory
license may be done electronically by uploading either a
PDF or TIFF file through iEdison. Alternatively the signed
document can be faxed to the lead agency, or submitted through
U.S. mail.
See http://iedison.gov/iEdison/license.jsp
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Nonelection
of Title to Invention: Grantee/contractor
organization must notify the federal sponsor
that it will not retain ownership of an invention.
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Within 2 years of reporting
to federal agency sponsor.
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Effectively a waiver to the government.
After further review the federal agency sponsor
may elect title on behalf of the government.
Title does not actually vest with the government
until government elects to retain title.
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401.14(c)(2)
401.14(d)
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Handled electronically through
iEdison, otherwise a signed hard-copy request
is required.
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Assignment
of Invention Rights to the Inventor: The inventor
may request assignment of invention rights. Agencies support
requests of this type to variously. In all cases, documentation
is required when a grantee/contractor organization waives
rights to the invention and the inventor(s) wishes to retain
the invention rights.
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At the time the grantee/contractor
organization elects not to pursue title and
the inventor requests rights in the invention.
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First, the grantee/contractor
organization must elect not to retain rights in the invention.
Second, the inventor must request the assignment of rights,
agree to all terms associated with invention reporting as
detailed in 37 CFR 401, and must pursue commercialization
of the invention through patent filing or licensing as a
research tool. Specific procedures for any agency should
be determined prior to initiating the request.
For NIH, see inventor certification. |
401.14(k)(1) non-profits
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This status can be indicated
using iEdison; all other issues (such as outstanding required
documents) should be resolved prior to proceeding further.
Paper receipt (via fax) of inventor certification signed
by each inventor and organizational official. |
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Initial
Patent Application: The grantee/contractor
must inform the government of the initial patent
application that related to any subject invention.
The patent application must include a government
support clause.
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Within 1 year after election
of title, unless there is an extension.
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Time frame may vary if invention
becomes public.
The term initial
patent application means a nonprovisional
U.S. national application for patent as defined
in 37 CFR 1.9(a)(3).
The notification must
include the patent application number and filing
date assigned by the USPTO. A copy of the full
application is not required.
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401.14(c)(3)
401.2(n)
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All filing data can be
submitted via iEdison. Evidence of inclusion of government
support clause may be submitted electronically as either
a PDF or TIFF file through iEdison. Alternatively, a hard copy
may be submitted via fax or U.S. mail.
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Assignment
to Third Party: Documentation necessary when a grantee/contractor
wishes to assign invention rights to third party.
If the grantee/contractor is a non-profit, the government
must approve the assignment. For profit or small business
grantee/contractors do not need to seek approval. If the
rights are assigned, new rights holder assumes the same reporting
responsibilities as the grantee/contractor organization.
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If assignment approved, third
party must pursue commercialization of the invention through
patent filing or (for NIH) licensing of the invention as
a research tool. Specific procedures to request third party
assignment may vary between agencies. Consult lead agency
prior to initiating request.
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401.14(k) for non-profits. Note the distinction
between small businesses and non-profit organizations.
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Extent of information available
about this process varies according to agency. Consult agency
links on the iEdison Home Page. |
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Issued
Patent:
Grantee/contractor must provide federal agency sponsor with
patent issue date, number, title of patent, and evidence
of government support clause. |
At the time of issue.
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Patent must include government
support clause.
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401.5(f)(2)
401.14(f)(4)
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All issued patent information
can be received using iEdison. Evidence of inclusion
of government support clause may be provided electronically
as a PDF or TIFF file through iEdison. Alternatively, a
hard copy may be submitted via fax or U.S. mail. |
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Request
for Extension of Time: An extension
of up to two years may be requested for election
of title, or one year for filing a patent application.
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Prior to any statutory bar.
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Extension of 2 years for title
election and one year for patent application are preapproved
for funded inventions. Additional extensions need
written approval from the federal agency sponsor.
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401.14(c)(4)
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Can be requested electronically
if using iEdison; otherwise request must be
in writing.
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Discontinuance
of Patent Application, Payment of Maintenance
Fees, or Defense in a Reexamination or Opposition
proceeding on a Patent: Grantee/contractor
must notify federal agency sponsor of changes
in patent status.
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At anytime in the process, but
prior to established deadlines.
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Relevant information and documents
(e.g., patent application or patent) must be provided such
that a determination to protect government interests can
be made. The federal agency sponsor has the option
to pursue the patent application or the patent if not being
properly pursued or maintained. Any change in status must
be reported at least 30 days prior to pending PTO office
actions. |
401.14(f)(3)
401.6
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Indication may be made via iEdison
or through written correspondence.
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Annual
Utilization Report: For agencies that require utilization
reporting the report is for all subject inventions that
have had title elected or are licensed without a patent.
Report includes stage of development, date of first commercial
sale or use, number and type of licenses, gross income,
licensing to small business, status of U.S. manufacturing
and identification of any FDA-approved product names. |
Annually for agencies that
require utilization reports. |
Not all agencies require invention
utilization reports. When in doubt, organization should
consult the lead agency on the invention in question. For
NIH grantee/contractor establishes a 12 month reporting
cycle beginning in the month of their choosing. Information
requirements defined in iEdison. |
401.14(h)
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Can be submitted electronically
using iEdison, otherwise submission of the same data may
be made in writing. |
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Final
Invention Statement and Certification:
Report all subject inventions derived or reduced
to practice during the performance of the grant
or contract.
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Due within 90 days after the project
ends. |
If no inventions occurred during
the award period, a negative report must be
submitted. The report is to be submitted
to the awarding unit grants or contracts management
office.
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401.5(f)(1)
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The completed form must be submitted
in hard copy. No electronic submission
is yet possible.
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