The Basics of Intellectual Property Reporting. Presenters: Sharon Lumpkin and Tekila Gray

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1 The Basics of Intellectual Property Reporting Presenters: Sharon Lumpkin and Tekila Gray

2 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

3 NIFA Patent Reporting FY 2017 iedison Special Request Institution A 0 18 Institution B 0 5 Institution C 0 2 Institution D 4 8 3

4 Overview of Bayh-Dole Act

5 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.

6 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.

7 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

8 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)

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.

10 Bayh-Dole Reporting Requirements Time 2 months after the institution learns of an invention 2 years after the disclosure of an invention Election of title or when reporting a PVP application Patent and PVP Requirement Submit invention disclosure Notify agency whether electing title Confirmatory license Regulation 37 CFR Part (c)(1) 37 CFR Part (c)(2) 37 CFR Part (f)(1) 10

11 Bayh-Dole Reporting Requirements Time Patent and PVP Requirement Regulation I year after the election of title (inc. support clause) File patent application, notify agency 37 CFR Part (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 (h) Final Invention Statement and Certification to Tekila and Sharon 37 CFR Part (f)(5) 11

12 Final Invention Report DD Form 882

13 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 (c) This statement must be inserted into Exhibit E, block designated Additional explanation of ownership of the PVP application.

14 Where do institutions report inventions? All NIFA Bayh-Dole invention reporting must be submitted through Interagency Edison (iedison) Research, Education & Extension Project Online Reporting Tool (REEport)

15 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

16 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.

17 How to Obtain an ieidson Account If your organization does not have an existing iedison account, you will need to create one: Go to 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 ed at edison@nih.gov.

18 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.

19 Intangible Property Reporting (Trademarks, Copyrights, etc.) Intangible property/copyrights (2 CFR ) Rights in data (2 CFR (d))

20 Trademarks and Intangible Property Reporting iedison does not support Trademarks, software, modules, and other intangible property reporting. all supporting documentation to NIFA or

21 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.

22 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 ).

23 NIFA Federal Assistance Guidance The NIFA Federal Assistance Policy Guide NIFA Research Terms and Conditions specifics/nifa_617.pdf Website: NIFA Intellectual Property Reporting Bayh Dole Act

24 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.

25 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.

26 Additional Information, Cont. SBIR technology developments SBIR Program Coordinator Scott Dockum Phone:

27 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

28 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.

29 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

30 REPORT IT

31 Contact Information NIFA s Intellectual Property Web Address: NIFA s Intellectual Property Staff Sharon Lumpkin Tekila Gray slumpkin@nifa.usda.gov tgray@nifa.usda.gov