Presenters Sharon Lumpkin and Tekila Gray Topics Overview of BayhDole Act NIFAs Use of IP Data BayhDole Reporting Requirements The Reporting Tool iEdisongov NIFA Federal Assistance Policy Guide ID: 661340
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Slide1
The Basics of Intellectual Property Reporting
Presenters:
Sharon Lumpkin and
Tekila GraySlide2
Topics
Overview of Bayh-Dole Act
NIFA’s Use of IP DataBayh-Dole Reporting RequirementsThe Reporting Tool – iEdison.govNIFA Federal Assistance Policy GuideRights in Data and Trademarks
Additional InformationSlide3
Overview of Bayh-Dole ActSlide4
Overview of Bayh-Dole Act
Was adopted in 1980Is codified at 94 Stat.
3015 and in 35 U.S.C. §200 – 212Is implemented by 37 C.F.R. 401 Slide5
Overview of the Bayh-Dole Act
Purpose:
To facilitate and accelerate the transfer of technologies and other such products resulting from federally-funded research into public use, taking advantage of the market-based incentives of the patent and plant variety protection processes.
(P.L. 96-517 D
ecember
12
1980)Slide6
Overview of the Bayh-Dole Act
How does it do this?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. Note that capacity funds
are legally a type of grant and all laws regulations that apply to grants in general, including the Bayh-Dole Act, apply equally to formula funds.Slide7
Overview of the Bayh-Dole Act
What is an Invention?
Generally, an invention is anything which could receive patent and/or plant variety protection (35 USC 201(d))Slide8
Overview of the Bayh-Dole Act
T
o federal funding recipientsTo the federal government
What ownership rights are granted?Source: 35 USC 202(c)(4)Slide9
Overview of Bayh-Dole
Ownership of the invention may go to the Federal government if the recipient –
Does not comply with the Bayh-Dole ActDoes not take advantage of its rights to an invention in a timely way orWaives its rights to an invention Slide10
Overview of Bayh-Dole Act
Therefore, 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 over to a named third party (37 CFR 401.9) Slide11
NIFA’s Use of IP
Data
Patents
Plant Patents
Plant Variety Protections
FY 2013
33
3
7
FY 2014
32
1
10
FY 2015
32
0
9
FY 2016
23
2
5Slide12
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. These requirements apply regardless of whether a patent is actually sought for the invention.
Slide13
How Bayh-Dole Requirements are Applied to Patents and PVPs***
Time
Patent Requirement
PVP Requirement
2 months after the
institution learns of an invention
Submit invention disclosure
Submit invention disclosure
2 years after the disclosure
of an invention
Notify agency whether electing title
Notify agency whether electing title
Election of title or when reporting a PVP application
Confirmatory license
Confirmatory
license
***This is not a complete listing, consult 37 CFR Part 401***Slide14
How Bayh-Dole Requirements are Applied to Patents and PVPs***
***This is not a complete listing, consult 37 CFR Part 401***
Time
Patent Requirement
PVP Requirement
I year
after the election of title
(
inc.
support clause)
File patent application, notify agency
File PVP
application, notify agency
Issuance
(
inc.
support clause)
Notify agency upon issuance of patent grant
Notify agency upon issuance of PVP certificate
If requested by agency
Utilization reports
Utilization reportsSlide15
Acknowledging Federal Support
The institution must include within the specification of any United States patent application and any resulting patent the following statement:
“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.Slide16
Where do institutions report inventions?
All NIFA invention reporting must be submitted through Interagency Edison
www.iedison.gov Slide17
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 1999Slide18
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.Slide19
How to Obtain an
iEidson Account
If your organization does not have an existing iEdison account, you will need to create one:Go to https://s-edison.info.nih.gov/iEdison
/ to create an accountThe 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.Slide20
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.
Slide21
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.Slide22
NIFA Federal Assistance Policy Guide
Intellectual Property Guidance
Awards ManagementResearch DataPatents and Inventions Rights in DataSlide23
NIFA Federal Assistance Policy Guidance
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. Slide24
NIFA Federal Assistance Policy Guidance
Rights in Data
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. (7 CFR 3019.36 – Intangible property). Slide25
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
)Slide26
Additional Information
Final
Invention ReportsUtilization Reports 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.Slide27
FUN
, FUN, FUN – Questions
Name the Senators who sponsored the Bayh-Dole Act.Birch
Bayh and Bob DoleTrue or False – The federal government has to elect title (rights) to an invention?
- FalseSlide28
More Fun – Questions
When does an institution have to disclose an invention to the federal government?
- 2 months after the institution learns of the invention
What year did NIFA start requiring the use of iEdison for all invention reporting?- 1999Slide29
Additional Information, Cont.
Intangible
property/Copyrights (7 CFR 3019.36)NIFA’s Policy Guide (https://nifa.usda.gov/regulations-and-guidelines)SBIR technology developments
SBIR Program Coordinator – Scott Dockum (sdockum@nifa.usda.gov) Phone: 202-720-6346Slide30
REPORT ITSlide31
Contact Information
NIFA’s Intellectual
Property Web Address: https://nifa.usda.gov/intellectual-property-reporting
NIFA’s Intellectual Property StaffSharon Lumpkin Tekila Grayslumpkin@nifa.usda.gov
tgray@nifa.usda.gov
202-401-0162 202-401-0951