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    Add/Modify Patent Reports


  1. To add a new patent report,
    1. Select Main Menu | Create a Patent Report to access the Invention Report Search - Search for iEdison Invention Report page.
    2. Search for the invention report you want to associate the patent with as described in Search Invention Reports.
    3. Click Add Patent Report. The Create New Patent Report - Patent Report Form is displayed.
    OR
    To modify a patent report, search for and select the patent report as described in Search Patent Reports. The Modify Patent Report - Patent Report Form page is displayed.
  2. Enter or edit patent report information, noting the following:
    • Fields with an asterisk (*) are required.
    • Additional keywords may be added via the Add/Edit Keywords button. See Add/Edit Keywords.
    • Additional inventors may be added via the Add/Edit Inventors button. See Add/Edit Inventors.
    • Additional foreign filings may be added via the Add/Edit Foreign Filings button. See Add/Edit Foreign Filings.
    • Government Support Clauses and Confirmatory Licenses may be added as follows:
      • For PDF or TIFF, select the appropriate document type, click Browse, and select the file or type the file location in the appropriate file location field.
      • For Paper, select Paper as the document type, and mail or fax the document.
    • Government Support Clauses and Confirmatory Licenses may be modified as follows:
      • For PDF or TIFF, select the appropriate document type, click Browse, and select the file or type the file location in the appropriate file location field.
      • For Paper, select Paper as the document type, and mail or fax the revised version of the document.
    • Government Support Clauses and Confirmatory Licenses may be viewed as follows:
      • Select the View Current Document hyperlink next to the appropriate field (Current Government Support Clause or Current Confirmatory License). Note: For help viewing PDF or TIFF versions of the government support clause or confirmatory license documents see Troubleshooting: Viewing PDF/TIFF Documents.
  3. Click Submit to enter the information. The patent report is updated and the Create Patent Report - Patent Report Verification or Modify Patent Report - Patent Report Verification page is displayed depending on whether you are adding or modifying the patent report.
  4. Click Submit to accept the information as it is displayed on the verification page OR click Modify Patent to return to the previous screen and modify the patent report.
  5. The Create Patent Report - Patent Report Confirmation or Modify Patent Report - Patent Report Modification Confirmation page is displayed confirming the patent report was saved to the database and allowing you to add or modify another patent report.

  Field Definitions
Invention Report Number

The Invention Report number identifies the invention report for which the patent report is added. This number is assigned by the iEdison system when a new Invention Report is created.

DOE "S" Number

The DOE "S" number is unique to grantee or contractor organizations receiving awards from the Department of Energy. Such DOE award recipients should make reference to the DOE "S" number of their award in all correspondence with DOE.

If DOE is indicated as the primary agency, iEdison automatically generates a DOE "S" number for the associated Invention Report.

Grantee/Contractor Organization

The grantee or contractor organization name is automatically generated by the iEdison system using the organization information associated with the account of the user logged on to the system. If the organization name is missing or does not match your organization, the on-line session should be terminated immediately and the iEdison User Support notified as soon as possible at edison@od.nih.gov, (301) 435-1986, or toll-free (866) 504-9552.

Patent Docket Number

The Patent Docket Number field is provided for the convenience of iEdison users as a unique identifier to help keep track of the associated patent report. Since multiple patents can evolve from a single invention, it is required that a unique patent docket number be provide to identify each patent report.

Any combination of numbers and letters may be used to define the patent docket number. If a patent docket number is not provided, the iEdison system generates one automatically. The iEdison user may change this assigned number.

Provisional Patent Application Number (60 or 61 or 62/###,###)

The provisional patent application number is used to uniquely identify a provisional patent application. The format for this field is 60 or 61 or 62/###,###.

The provisional application provides a mechanism whereby applicants can quickly and inexpensively establish an effective filing date in a patent application that establishes a constructive reduction to practice for any invention described in the provisional application. This date protects the invention worldwide. The filing also provides up to twelve (12) months to further develop the invention, determine marketability, acquire funding, or seek licensing. A provisional patent application will go abandoned by law one year after filing. To continue protection the application must be converted to a non-provisional application. The filing of a provisional patent application DOES NOT fulfill requirements in 37 CFR 401.14 (c)(3) for submission of an initial patent application within one year of election of title. Compliance with this regulation requires submission of a non-provisional patent application as stated in 37 CFR 401.2(n).

Filing Date of Provisional Patent Application [required if Provisional Application number supplied]
(mm/dd/yyyy - cannot be before June 8, 1995)

The filing date of the provisional patent application identifies the date provided by the Patent and Trademark Office indicating when the provisional application was filed. The format for this field is mm/dd/yyyy and may not be before June 8, 1995.

The filing date of a provisional patent application does not trigger the start of the 20-year patent term.

PCT Patent Application Number (PCT/AA##/#####)

The Patent Cooperation Treaty (PCT) patent application number is used to uniquely identify a PCT type patent application. The PCT patent application number format can be PCT/AAYY/##### or PCT/AAYYYY/##### or PCT/AAYY/###### or PCT/AAYYYY/######, where AA is a two-character country code, YY is a two-digit fiscal year, YYYY is a four-digit fiscal year, ##### is five digits and ###### is six digits. When the Filing Date of the PCT application is greater than or equal to 01/01/2004, the PCT Application format must be PCT/AAYYYY/######. When the Filing Date of the PCT application is less than 01/01/2004, the format of the PCT Application Number may be PCT/AAYY/##### or PCT/AAYYYY/##### or PCT/AAYY/###### or PCT/AAYYYY/######. Examples of PCT application numbers are PCT/US95/12345, PCT/US03/123456, PCT/US2003/12345, PCT/US2005/123456.

The PCT offers the advantage of one international patent application that seeks patent protection for an invention in a large number of countries. The PCT application has the effect of a national patent application in those PCT contracting states designated in the application. The filing of a PCT DOES NOT fulfill requirements found in 37 CFR 401.14 (c)(3) for submission of an initial patent application within one year of election of title, unless US is designated at the national phase of prosecution.

Filing Date of PCT Patent Application (mm/dd/yyyy)

The filing date of the Patent Cooperation Treaty (PCT) application identifies the date provided by the International Patent and Trademark Office indicating when the application was filed.

The format for this field is mm/dd/yyyy.

In a PCT application priority may be claimed, under the Paris Convention, of an earlier provisional application for the same invention for up to twelve (12) months after the filing of the provisional application. If priority is not claimed from an earlier application, the binding filing date will be the filing date of the PCT application.

Non-Provisional Patent Application Number
(06 or 07 or 08 or 09 or 10 or 11 or 12 or 90/###,### or PV####### or PV######### )

The non-provisional patent application number is used to uniquely identify a non-provisional patent application. In the change in U.S. Patent law in 1996, the non-provisional application number was referred to as the patent application serial number.

The format for this field is 06 or 07 or 08 or 09 or 10 or 11 or 90/###,### or PV####### or PV#########. Note: The non-provisional patent application number field is only modifiable when the parent invention report of the selected patent report has an invention status equal to "ELECT TITLE". Also, the PV numbers are only valid when the Type of Application is set to 'PVP'. In all other cases this field is read-only.

Unlike the provisional patent application, the non-provisional application contains information that is reviewed and serves as the basis for which the terms of patent protection are measured. The filing and reporting of a non-provisional patent application DOES fulfill requirements in 37 CFR 401.14 (c)(3) and (f)(6) for submission of an initial patent application within one year of election of title.

Filing Date of Non-Provisional Patent Application
[required if Non-Provisional Application number supplied]
(mm/dd/yyyy)

The filing date of the non-provisional patent application identifies the date provided by the Patent and Trademark Office indicating when the non-provisional application was filed or the U.S. national stage commencement for a patent report that derives from a PCT filing.

The format for this field is mm/dd/yyyy.

In a non-provisional application, priority may be claimed, under the Paris Convention, of an earlier provisional application for the same invention for up to twelve (12) months after the filing of the provisional application. If priority is not claimed from an earlier application, the binding filing date will be the filing date of the non-provisional application.

Patent Number

The patent number uniquely identifies the patent issued by the U.S. Patent and Trademark Office.

See Help with Formats - Patent Number for valid patent number formats.

Patent Issue Date
[required if Patent number supplied]
(mm/dd/yyyy)

The patent issue date is the date cited on the upper right-hand corner of the issued patent.

The format for this field is mm/dd/yyyy.

Patent Expiration Date (mm/dd/yyyy)

The patent expiration date is the date the patent is going to expire.

The format for this field is mm/dd/yyyy.

The General Agreement on Tariffs and Trade (GATT) Uruguay Round agreement provides that the term of protection for a patent begins at the date the patent is granted and expires 20 years from the filing date of the application for the patent. If priority of an earlier provisional application is claimed, the 20-year period is measured from the date of the earliest of such earlier applications.

The 20-year patent term may be extended for a maximum of 5 years for delays in the issuance of the patent due to interferences, secrecy orders, and/or successful appeals to the Board of Patent Appeals and Interferences or the federal courts.

Type of Patent Application

The type of patent application identifies the patent application type for the associated patent report. Select the appropriate type from the list.

CIP indicates a continuation in part. The application usually includes part of the material from the parent application, but the remainder of the application represents newly added subject matter disclosed for the first time to the Patent Office. A CIP application establishes a parent/child relationship between patent records in the iEdison system from the lead patent through which all subsequent patent reports are submitted, and secondary patents that together create the scope of claims described in the CIP application.

CON indicates a continuation application. This is a re-filing of a previously filed application (parent application), wherein all amendments that have been made to the specifications and claims of the parent application through prosecution in the Patent Office are incorporated.

CPA indicates a continuing prosecution application type of patent report. This involves a new patent application that extends the previous non-provisional patent application and shares the same non-provisional patent application number as another patent application within the same grantee or contractor institution. Once created, a chain of CPA patent records is formed, and lower patent records in the chain (sharing the same patent application serial number) may not be modified. CPA has been discontinued in favor of the Request for Continuing Evaluation (RCE).

DIV indicates a divisional application. A divisional is filed when the Patent Office declares the application claims more than one patentably distinct invention.

FWC indicates a file wrapper continuation and was discontinued for patent applications filed after December, 1997. It is employed when the Patent Office has decided to make a new patent application serial number, yet continue prosecution of a particular patent application..

ORD/UTIL indicates an ordinary patent application, often referred to as a "Utility application." It corresponds to the first application filed in the Patent Office that discloses and claims the invention.

PROV indicates a provisional patent application. The reporting of provisional applications is supported in iEdison, even though they are not considered real "types" of application because when a provisional application is made the applicant does not yet have to declare a regular type to the PTO. In case a federally funded provisional application is not pursued, even though it would not ordinarily constitute fulfillment of the Bayh-Dole obligation to pursue patent prosecution to an initial (non-provisional) patent application, the government has the right to continue prosecution on its own. Therefore the iEdison system supports PROV reporting to facilitate the most efficient method to notify the government (with the required 30 day lead time) of a decision to not pursue the prosecution of a federally funded patent application.

PVP indicates "Plant Variety Protection" which is provided for under the Bayh-Dole Act. The Plant Variety Protection Act (PVPA) provides legal intellectual property rights protection to developers of new varieties of plants that are sexually reproduced (by seed) or are tuber-propagated. Bacteria and fungi are excluded. A Certificate of Protection is awarded to an owner of a variety after an examination shows that it is new, distinct from other varieties, and genetically uniform and stable through successive generations. While the PVPA is administered by the United States Department of Agriculture, plant patent applications for asexually reproduced plants are administered by the U.S. Department of Commerce

RCE is a Request for Continuing Evaluation, and replaces the CPA application type. This involves a new patent record that extends the previous non-provisional patent application and shares the same non-provisional patent application number as another patent application within the same grantee or contractor institution. Once created, a chain of CPA patent records is formed, and lower patent records in the chain (sharing the same patent application serial number) may not be modified

Current Government Support Clause iEdison system allows users to view the most recent government support clause document associated with a patent report. The current government support clause field is only displayed when a government support clause exists for the patent report. Once a government support clause is uploaded, the "View Current Report" hyperlink is used to access the document. Note: If the government support clause was submitted via paper, the following text will appear in the window that opens: "This document was submitted in paper form".

Government Support Clause Document Type

The government support clause document type indicates the type of document provided for the government support clause.

Note: The grantee or contractor organization should be aware that only documents submitted as PDF or TIFF will be able to be viewed through the iEdison user interface. Documents submitted in paper will be entered into the iEdison database by iEdison staff, but will not be available for viewing. Select the appropriate document type from the list.

PDF - Indicates a PDF version of the government support clause is provided (attached/uploaded within iEdison.)

Paper - Indicates a paper version of the government support clause was faxed or mailed.

TIFF - Indicates a TIFF version of the government support clause is provided (attached/uploaded within iEdison.)

To ensure compliance with 37 CFR 401.14 (f)(4) the agency requires that the page of the patent application citing the federal support clause be submitted.

Government Support Clause File Location The government support clause file location field enables the iEdison user to specify the location of the patent application to be uploaded into the system for the associated patent report when the patent document type equals "PDF" or "TIFF". The file name may be entered directly into the field or selected using the "Browse" button.
Government Support Clause Receipt Date

The government support clause receipt date identifies the date the government support clause was received by the government either via paper or electronic upload in the iEdison system as a PDF or TIFF document.

The government will verify that the document has been received before setting this date.

Current Confirmatory License iEdison system allows users to view the most recent confirmatory license document associated with a patent report. The current confirmatory license field is only displayed when a confirmatory license exists for the patent report. Once a confirmatory license is uploaded, the "View Current Report" hyperlink is used to access the document. Note: If the confirmatory license was submitted via paper, the following text will appear in the window that opens: "This document was submitted in paper form".
Confirmatory License File Location The Confirmatory License File Location field enables the iEdison user to specify the location of the confirmatory license to be uploaded into the system for the associated patent report when the confirmatory license document type equals "PDF" or "TIFF". The file name may be entered directly into the field or selected using the "Browse" button.

Confirmatory License Document Type

The confirmatory license document type indicates the type of document provided for the confirmatory license.

Note: The grantee or contractor organization should be aware that only documents submitted as PDF or TIFF will be able to be viewed through the iEdison user interface. Documents submitted in paper will be entered into the iEdison database by iEdison staff, but will not be available for viewing. Select the appropriate document type from the list.

PDF - Indicates a PDF version of the confirmatory license is provided.

Paper - Indicates a paper version of the confirmatory license was faxed or mailed.

TIFF - Indicates a TIFF version of the confirmatory license is provided.

A confirmatory license is required by 37 CFR 401.14 (b). The confirmatory license is usually provided for the original patent application and confirms rights to any and all patents and re-issues granted thereon.

Confirmatory License Receipt Date

The confirmatory license receipt date identifies the date the confirmatory license document was accepted by the government either via paper or electronic upload in the iEdison system as a PDF or TIFF document.

The government will verify that the document meets requirements for recordation at the U.S. Patent and Trademark Office before setting this date.

U.S. Patent Title

The U.S. patent title indicates the exact title of the U.S. patent or patent application listed in the patent report. To minimize the possible duplication of effort, the iEdison system automatically defaults the U.S. patent title to the title provided for the associated Invention Report. If the title has changed, please modify it accordingly so that it conforms to the most recent patent report listed in the patent report. Both upper and lower case letters are acceptable.

Patent Keyword(s)

The Patent Keyword field enables the government to categorize patent reports when requested to provide Congress and other Federal Agencies with statistical information regarding areas of scientific interest to which extramural support is provided.

The iEdison system allows up to 12 keywords to be associated with a patent report. The main screen allows entry of the first keyword. Additional keywords may be added using the "Add/Edit Keywords" button.

Inventor(s)

First Name

Middle Name

Last Name

The inventor fields reflect the full name of each inventor associated with the patent filing. To minimize the possible duplication of effort, the iEdison system automatically defaults the inventor fields to the names of the inventors listed in the related Invention Report. If different or additional inventors are involved, please modify the information accordingly. Both upper and lower case letters are acceptable.

The iEdison system allows up to 12 inventors to be associated with a patent filing. The main screen allows entry of the first inventor. Additional inventors may be added using the "Add/Edit Inventors" button.

Explanatory Notes

The Explanatory Notes field is provided to record information regarding the patent application or patent report.

The iEdison system records the date the note was added as well as the name of the individual who added it.

Other Related Inventions

Enter Invention Report Numbers

The Other Related Inventions field identifies other Invention Reports related to the associated patent report.

The iEdison system allows up to four Invention Reports to be associated with a patent report. The Invention Report number for each applicable Invention Report must be provided as the unique identifier.

This is an informal relation for informational purposes only. In and of itself it has no bearing on invention and patent reporting regulations as other functions, such as incorporating one report wholly into another.

Patent Status

The patent status describes the legal status of the associated patent filing as of today's date.

Select the most appropriate value from the list. If "Assign to Third Party" is chosen, the third party name field indicates the name of the party to which the patent filing was assigned or is pending assignment.

Assign to Inventor(s) - The inventor(s) has the right to request title to an invention/patent if the grantee or contractor institution chooses to not elect title. Under these circumstances the inventor(s) also assume the responsibility to comply with the Bayh-Dole Act as specified in 37 CFR 401.9. A waiver by the Government Agency is required if the grantee or contractor is a nonprofit organization.

Assign to Third Party - Nonprofit organizations have special provisions specified in 37 CFR 401.14 (k)(1) that require approval by the agency before assignment of title to a subject invention can be made to a third party. Justification must be sent to the agency when assignment to a third party is indicated in this field. Assignment may be made without agency approval to organizations which have as a primary function the management of inventions.

Institution Retains Rights - The extramural institution retains the rights in the patent, subject to the limited rights granted to the Government in 37 CFR 401.

Waive to Government - According to 37 CFR 401.14 (f)(3), contractors and grantees must notify the government if they intend to discontinue a patent prosecution, fail to pay maintenance fees or abandon a patent. This notifies the government that the grantee or contractor has no interest in pursing the patent any further. Such notification must leave the government 30 days in which to make a decision whether to elect title to the patent or patent application.

 

Third Party Name
[required if rights assigned to Other Party]

 

Third Party Name - The third party name indicates the party to which the patent report was assigned. This field is provided only if the patent status equals "Assign to Third Party".

Foreign Filings

Country

Patent Prosecution Status

Foreign Filing Action Date (mm/dd/yyyy)

 

Foreign Filings - The Foreign Filings fields are used to record information (country, status, and action date) regarding any foreign filings associated with the patent report.

The iEdison system allows up to 12 foreign filings to be associated with a patent report. The main screen allows entry of the first foreign filing. Additional foreign filings may be added using the "Add/Edit Foreign Filings" button.

There are no government regulations requiring that foreign patent applications be filed. However, the agency must be notified if there will be no foreign filing in order to give the government agency time to make such a filing on its own if it chooses to do so.

The government realizes the time constraints encountered by grantee institutions prior to foreign filing deadlines and will allow users to indicate where a foreign application has been filed ten months after a U.S. patent application has been filed on a particular Invention Report.

Country - The country indicates the country in which the patent application was filed.

Select the appropriate country from the list and note or update changes in patent status for that country.

Patent Prosecution Status - The patent prosecution status indicates the status of the foreign filing for each country where the patent application has been filed.

Select the appropriate status from the list.

Foreign Filing Action Date - The foreign filing action date is the date of the most recent action for each country where patent prosecution is taking place.

The format of this field is mm/dd/yyyy.

The date field should contain the date of that status (i.e. active or abandoned) for each country in which a patent has been applied.

Parent Patent Docket Number

The parent patent docket number identifies the docket number for the parent patent report, if applicable. This field is used to support patent linking within the iEdison system.

Patent "linking" is designed so that iEdison may correctly reflect the patent prosecution's application history and collect only a single confirmatory license to the U.S. Government for each patent prosecution.

Parent Patent Organization Code

The parent patent organization code identifies the organization code for the parent patent report, if applicable. To minimize the possible duplication of effort, the iEdison system automatically defaults the parent patent organization code to the organization code associated with the Invention Report for this patent report. If a different organization is related to the parent patent, please modify the information accordingly.

This field is used to support patent linking within the iEdison system. Patent "linking" is designed so that Edison may correctly reflect the patent prosecution's application history and collect only a single confirmatory license to the U.S. Government for each patent prosecution.

Child Patent Docket Number

The child patent docket number identifies the docket number for the child patent report, if applicable. This field is used to support patent linking within the iEdison system.

Patent "linking" is designed so that Edison may correctly reflect the patent prosecution's application history and collect only a single confirmatory license to the U.S. Government for each patent prosecution.

Child Patent Organization Code

The child patent organization code identifies the organization code for the child patent report, if applicable. To minimize the possible duplication of effort, the iEdison system automatically defaults the child patent organization code to the organization code associated with the Invention Report for this patent report. If a different organization is related to the child patent, please modify the information accordingly.

This field is used to support patent linking within the iEdison system.

Patent "linking" is designed so that Edison may correctly reflect the patent prosecution's application history and collect only a single confirmatory license to the U.S. Government for each patent prosecution.

Organization Code for Other Organizations to View this Patent

The organization code for the Other Organizations to View this Patent field enables iEdison users to grant other organizations the ability to view this patent report.

Final Invention Rights Determination

The final invention rights determination identifies the status assigned to the patent report by the government. The default status is "institution retains rights." Others are used when an action is taken by the government, either on behalf of the grantee or contractor organization ("institution"), or on its own initiative (e.g., Inventor or Third Party Waiver Processing, March-In Proceeding, etc.)

Select the appropriate status from the list.

Last Modified Date

The last modified date indicates the date and time the Patent Report was last modified within the iEdison system.

 

    See Also

Add/Edit Foreign Filings
Add/Edit Grant/Contract Numbers
Add/Edit Inventors
Add/Edit Keywords
Add/Edit Subcontractor Details
Add/Modify Invention Reports
Add/Modify/View Utilization Reports
Generate Confirmatory License
Help with Formats - Grant/Contract Number
Help with Formats - Patent Number
Invention Overview
Invention Report: Duplicate Title
Suppress Messages
Troubleshooting: Viewing PDF/TIFF Documents
Upload Invention/Patent Report Datastreams
View Messages

 

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