The Basics of

Intellectual

Property

Reporting

Presenters:

Sharon Lumpkin and

Tekila Gray

Topics

• Overview of Bayh-Dole Act

• NIFA’s Use of IP Data

• Bayh-Dole Reporting Requirements

• The Reporting Tool – iEdison.gov

• Rights in Data and Trademarks

• NIFA Federal Assistance Guidance

NIFA Patent Reporting FY

2017

3

iEdison Special Request

Institution A 0 18

Institution B 0 5

Institution C 0 2

Institution D 4 8

Overview of Bayh-Dole Act

Overview of the Bayh-Dole Act

• Purpose:The Bayh-Dole Act serves to promote commercialization of

federally funded inventions, including those funded with

capacity and non-capacity funds. While ensuring that

inventions are used in a manner that promotes free

competition and enterprise for the benefit of the public. This

legislation also protects the public against nonuse and

unreasonable use of Federally-funded inventions.

Overview of the Bayh-Dole Act

• Technology Rights:– It allows the recipient of a federal research contract, grant, or

cooperative agreement to retain rights to any resulting inventions so

long as the recipient complies with certain conditions and procedures.

– One of the most important principles of the Bayh Dole Act is that it

reserves USDA’s royalty-free, nonexclusive, and irrevocable license

to practice or have practiced for or on behalf of the United States

throughout the world.

Overview of Bayh-Dole

• Ownership of the invention may go to the Federal

government if the recipient –

– Does not comply with the Bayh-Dole Act

– Does not take advantage of its rights to an

invention in a timely way or

– Waives its rights to an invention

Overview of Bayh-Dole Act

• An institution may not simply transfer their own

rights to a third party (such as the inventor or a

corporation);

– It must ask the Federal government for

permission to transfer its rights to a named third

party (37 CFR 401.9)

Reporting Requirements of Bayh-Dole

• As a condition of being able to retain rights to

inventions, the Bayh-Dole Act requires institutions to

report on the invention to the granting agency

through Interagency Edison (iEdison.gov). These

requirements apply regardless of whether a patent is

actually sought for the invention.

Bayh-Dole Reporting Requirements

10

Time Patent and PVP

Requirement

Regulation

2 months after the

institution learns of an

invention

Submit invention

disclosure

37 CFR Part

401.14(c)(1)

2 years after the

disclosure of an

invention

Notify agency

whether electing title

37 CFR Part

401.14(c)(2)

Election of title or

when reporting a PVP

application

Confirmatory license 37 CFR Part

401.14(f)(1)

Bayh-Dole Reporting Requirements

11

Time Patent and PVP

Requirement

Regulation

I year after the

election of title

(inc. support clause)

File patent

application, notify

agency

37 CFR Part

401.14(c)(3)

Issuance

(inc. support clause)

Notify agency upon

issuance of patent

grant

37 CFR Part

401.5(f)(4)

If requested by

agency

Utilization reports(not required by NIFA)

37 CFR Part

401.14(h)

Final Invention

Statement and

Certification

Email to Tekila and

Sharon

37 CFR Part

401.14(f)(5)

Final Invention ReportDD Form 882

Acknowledging Federal Support

• Government Support Clause:

“This invention was made with support under

(cite the grant number) awarded by the National

Institute of Food and Agriculture, USDA. The

government has certain rights to the invention.”37 CFR Part 401.14(c)

This statement must be inserted into Exhibit E, block

designated “Additional explanation of ownership” of the

PVP application.

Where do institutions report

inventions?

• All NIFA Bayh-Dole invention reporting must be

submitted through Interagency Edison (iEdison)

– www.iedison.gov

• Research, Education & Extension

Project Online Reporting Tool

(REEport)

Overview of iEdison

• Secure, interactive web-based system

for Bayh-Dole policy and reporting

compliance

• Created and operated by National

Institutes of Health (NIH)

• NIFA has required the use of iEdison for

all invention reporting since 1999

Overview of iEdison

• The iEdison system was designed to

support the reporting of patents for

Bayh-Dole information. It has been

minimally modified to accommodate

reporting of PVP information.

How to Obtain an iEidson Account

• If your organization does not have an existing

iEdison account, you will need to create one:

– Go to http://www.iEdison.gov to create an

account

• The registration request will be processed by

the NIH staff in a timely manner. If you have

any questions, the NIH staff may be emailed

at edison@nih.gov.

The Importance of Reporting

• Failure to follow the various conditions and

procedures of the Bayh-Dole Act may result in an

institution’s loss of rights to the invention.

Intangible Property Reporting

(Trademarks, Copyrights, etc.)

• Intangible property/Copyrights (2 CFR 200.315)

• Rights in data (2 CFR 200.315 (d))

Trademarks and Intangible Property

Reporting

• iEdison does not support Trademarks, software,

modules, and other intangible property reporting.

• Email all supporting documentation to NIFA

(tgray@nifa.usda.gov or slumpkin@nifa.usda.gov)

Rights in Data and Copyrights

• Rights in Data

– Grantees own the rights in data. Unless the

special terms and conditions of the award

indicate alternative rights.

– Copyrightable materials (publications, data,

etc.) developed under a NIFA grant may be

copyrighted without NIFA approval. Except as

otherwise provided in the terms and conditions

of the award.

Rights in Data and Copyrights

• Rights in Data and Copyrights

– However, NIFA reserves a royalty-free,

nonexclusive and irrevocable right to

reproduce, publish, or otherwise use the work

for Federal purposes, and to authorize others to

do so when data has been developed by an

educational institution with NIFA support (2

CFR 200.315).

NIFA Federal Assistance Guidance

• The NIFA Federal Assistance Policy Guide

• NIFA Research Terms and Conditions

https://www.nsf.gov/pubs/policydocs/rtc/agency

specifics/nifa_617.pdf

• Website: NIFA Intellectual Property Reporting

Bayh Dole Act

NIFA Federal Assistance Policy Guide

The Policy Guide

– describes the statutory and regulatory

responsibilities of NIFA grantees.

– a single resource for information formerly

provided by a variety of grantee manuals.

Additional Information

• Annual Invention Statement (37CFR401.5(f)(3))

• SBIR -To the extent authorized by 35 U.S.C.

205, USDA will not make public any information

disclosing a USDA-supported invention for a

four-year period to allow the grantee a

reasonable time to file an initial patent

application.

Additional Information, Cont.

• SBIR technology developments

– SBIR Program Coordinator

Scott Dockum

Email: sdockum@nifa.usda.gov

Phone: 202-720-6346

FUN, FUN, FUN – Questions

•Name the Senators who sponsored the Bayh-

Dole Act.

- Birch Bayh and Bob Dole

•True or False – If an invention is funded by

capacity funds it is exempt from Bayh-Dole

reporting requirements?

- False

More Fun – Questions

• If an institution decides it no longer wishes to retain

rights, can the institution simply transfer its rights to the

inventor?

- No. The institution must notify the federal

government for permission to transfer its rights to a

third party.

• How many years after election of title does an institution

have to file a patent application?

- One year. The institution may ask the federal agency

to grant an additional year.

More Fun – Questions

• What are three NIFA Federal Assistance Guidance

resources?

– NIFA Federal Assistance Policy Guide

– NIFA Research Terms & Conditions

– NIFA Intellectual Property website

• If the guidance in the NIFA Policy Guide differs from

your award Research Terms and Conditions, which

one supersedes?

- NIFA Research Terms and Conditions

REPORT IT

Contact Information

NIFA’s Intellectual Property

• Web Address: https://nifa.usda.gov/intellectual-property-

reporting

NIFA’s Intellectual Property Staff

Sharon Lumpkin Tekila Gray

slumpkin@nifa.usda.gov tgray@nifa.usda.gov

202-401-0162 202-401-0951