| Invention Reports: Background and Purpose |
The Employee Invention Report (EIR) is a standardized PHS form on which NIMH scientific personnel must report their inventions to the NIMH Technology Transfer Office. Simple to complete, the EIR enables the Office to evaluate an invention's patentability and commercial potential. Submission of a completed EIR is the first step toward securing important intellectual property rights-namely, patents-for inventors.
|
| What Is A Patent? | A patent is a legal document, analogous to a deed of land, that memorializes the ownership of intellectual property rights described in words. Patentability and the scope of the property rights to which an invention may be entitled are judged in the context of related research findings and information already in the public domain. |
| Patent Criteria | In order to be patentable, a "claimed" invention must demonstrate
- novelty
- utility, and
- nonobviousness.
Novelty means that the exact invention has not previously been known to exist in the public domain. Utility means that the claimed invention has a demonstrated usefulness or function (for example, treating a disease entity). Nonobviousness means that the gap between what existed in the public domain (that is, "prior art") and the claimed invention could not reasonably have been bridged by the average skilled worker in the same field of technology using existing means.
|
| Timing Is Everything! "RUSH" and "EMERGENCY" EIRs | The time to submit an EIR is whenever an individual NIMH employee believes that there is sufficient data to warrant a public disclosure of an invention through a presentation, talk, or publication.
Routine processing of invention reports commonly takes at least 90 days to ensure proper Institute review, including referral to the NIH Office of Technology Transfer (OTT) for filing of a US patent application, if appropriate. Accordingly, NIMH technology transfer staff must receive an invention report at least 90-120 days in advance of a disclosure. EIRs submitted 60 days prior to disclosure are designated "RUSH." In turn, EIRs submitted only 30 days prior attain "Emergency" status. As a practical matter, submission of an EIR should therefore coincide with the first submission of any manuscript or abstract to a journal or for any other public disclosure.
|
| What Is Public Disclosure? | Public disclosure includes talks, lectures, poster presentations, newspaper or newsletter interviews, all publications, or any other unrestricted disclosure of an invention (such as unrestricted deposits of material in ATTC or sequences in GenBank), and even oral conversations with others outside of NIMH.
It is important that no public disclosure be made on a potentially patentable invention prior to filing of a patent application with the US Patent and Trademark Office (USPTO). Public disclosure of the invention more than a year before filing with the USPTO creates an absolute bar to seeking patent protection at home or abroad. If a need does arise for disclosure, then a Confidential Disclosure Agreement must properly be in place. |
| EIR Filing Procedures: What You Should Know | When a scientist believes that s/he may have a patentable invention related to the subject matter of his or her employment at NIMH, whether made at NIMH or not, then the following procedures apply:
- First, obtain an EIR form with cover sheet available on this website.
- Next, contact NIMH technology transfer staff to discuss the particular aspects of the invention and obtain guidance in completing the EIR.
- Complete the EIR and attach any manuscripts and literature that are relevant to the invention. Inventors must disclose to the USPTO the most relevant "prior art" known to them at the time of filing to avoid forfeiture of patent rights.
- Lastly, forward the completed EIR, with attachments, to the NIMH Technology Transfer Office.
|
| About Joint Inventorship | When an invention is made by two or more persons jointly, they should apply for a patent jointly. Inventors may apply for a patent jointly even though:
- They did not physically work together or work simultaneously;
- Their individual contributions to the invention are not of the same type or scope; or
- They did not each contribute to the subject matter of every claim of the patent.
|
| Final Processing Of EIRs By OTT | The NIMH Technology Advisory Committee (TAC) first evaluates of an invention's patentability. This determination at the Institute level may result in a recommendation and appropriation of funds to file a patent application. The final determination, however, is made by OTT. Not all inventions or discoveries are patentable, and not all patentable inventions have commercial potential
Because the investigator is an important source of information regarding this decision, s/he is consulted as needed to clarify the scope and content of the invention and to respond to any queries arising from supporting documentation submitted with the EIR. If OTT recommends patent prosecution, then the EIR is forwarded to a patent attorney with expertise to understand the invention and its importance as a scientific advance. |
| Royalties | Royalties can be earned from licensing both patented and non-patented inventions. A portion is split among the inventors and additional revenue goes to the Lab or Branch and to the Technology Transfer program to cover costs such as patent prosecution and other administrative expenses. |
| Waiver to Inventor Rights to Intramural Inventions: | Under certain limited circumstances, an institute may waive its right to patent an employee invention to the inventor. The NIH policies and procedures for this waiver are outlined in this manual chapter.
Please note this chapter may only be accessed from an NIH computer |
