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
NIFA Federal Assistance Policy Guide
Rights in Data and Trademarks
Additional Information

3. Overview of Bayh-Dole Act

4. Overview of Bayh-Dole Act
Was adopted in 1980
Is codified at 94 Stat and in 35 U.S.C. §200 – 212
Is implemented by 37 C.F.R. 401

5. 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 December )

6. 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.

7. 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))

8. Overview of the Bayh-Dole Act
What ownership rights are granted?
To federal funding recipients
To the federal government
Source: 35 USC 202(c)(4)

9. 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

10. 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)

11. Plant Variety Protections
NIFA’s Use of IP Data
Patents
Plant Patents
Plant Variety Protections
FY 2013 33 3 7
FY 2014 32 1 10
FY 2015 9
FY 2016 23 2 5

12. 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.

13. 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
2 years after the disclosure of an invention
Notify agency whether electing title
Election of title or when reporting a PVP application
Confirmatory license
***This is not a complete listing, consult 37 CFR Part 401***

14. How Bayh-Dole Requirements are Applied to Patents and PVPs***
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
Notify agency upon issuance of patent grant
Notify agency upon issuance of PVP certificate
If requested by agency
Utilization reports
***This is not a complete listing, consult 37 CFR Part 401***

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

16. Where do institutions report inventions?
All NIFA invention reporting must be submitted through Interagency Edison

17. 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

18. 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.

19. 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

20. 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.

21. 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.

22. NIFA Federal Assistance Policy Guide
Intellectual Property Guidance
Awards Management
Research Data
Patents and Inventions
Rights in Data

23. 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.

24. 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 – Intangible property).

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

26. Additional Information
Final Invention Reports
Utilization 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.

27. FUN, FUN, FUN – Questions - False
Name the Senators who sponsored the Bayh-Dole Act.
Birch Bayh and Bob Dole
True or False – The federal government has to elect title (rights) to an invention?
- False

28. 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?
- 1999

29. Additional Information, Cont.
Intangible property/Copyrights  (7 CFR )
NIFA’s Policy Guide (
SBIR technology developments
SBIR Program Coordinator – Scott Dockum Phone:

30. REPORT IT

31. Contact Information
NIFA’s Intellectual Property
Web Address:
NIFA’s Intellectual Property Staff
Sharon Lumpkin Tekila Gray