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
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
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: [email protected]
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
[email protected] [email protected]
202-401-0162 202-401-0951
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