Invention Reporting

Overview

In return for the right to retain title to federally-funded inventions, grantees and awardees are required by the Bayh-Dole Act (37 CFR 401) to report government funded inventions to the federal agency who made the award. Section 5.13 of the SBIR and STTR solicitations require awardees to report inventions to the awarding agency within 2 months of the inventor's report. Reporting may be accomplished by submitting paper documentation to the awarding agency or submitting electronically through iEdison at www.iedison.gov for those agencies that participate in iEdison. Subcontractors retain rights to their inventions and have the same reporting responsibilities as prime contractors.

Bayh-Dole Act

Enacted on December 12, 1980 The Patent & Trademark Act (Public Law 96-517) created a uniform patent policy among Federal agencies that fund research. Bayh-Dole enables small businesses and non-profit organizations, including universities, to retain title to materials and products they invent under Federal funding. Subsequent amendments created uniform licensing guidelines and expanded the law's purview to include all Federally-funded contractors (Public Law 98-620) and was extended to large businesses by the 1983 Presidential Memorandum.

The Bayh-Dole Act encourages researchers to patent and market their inventions by guaranteeing first rights to a patent for an invention fully or partially funded by a Federal agency to the awardee organization. To obtain these benefits, however, the inventor and the organization have several reporting requirements that protect the rights of the Government. The government benefits because it must be granted a "nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world" (37 CFR 401.14.6.b). The Government does not get a share of the royalties, but the public does benefit if a useful invention is developed, reaches the market, and becomes accessible to those who need it.

• Invention disclosure within 2-months of the inventor's initial report to the organization. Inventions should be reported in writing prior to publication or presentation at any open meeting, since failure to do so may result in loss of the rights to the awardee organization, inventor, and the Federal government in the invention.
• Election or Non-election of title to invention within 2-years period of the disclosure. The awardee has two years to determine if it wants to take title and file a patent application. If the awardee does not choose to elect title, it must notify the Federal agency which then has the option to take title. The Government evaluates the invention to determine whether patenting and further development is in the public interest.
• Patent application -- within one-year of election of title or publication, whichever is earlier, provision to the Federal agency of the confirmatory license and the page of the patent application that contains the Federal support clause
• Issued patent -- provision to the Federal agency of the patent number and issue date at time of issuance of the patent
• Annual utilization report -- every year subsequent to filing a patent

IEdison and Participating Federal Agencies

iEdison (which stands for Interagency Edison) provides a single interface for government grantees and contractors to report details of inventions and patents for a number of federal agencies, including AFRL/IF, AHRQ, Army/MRMC, Army/SMDC, Army/SSC, ATSDR, CDC, DOD/DMEA, DOE, EPA, FDA, HIS, Navy/ONR, NIH, NIST, NOAA, NSF, USAF/AFOSR, USAF/ESC, USAID, USDA/ARS, USDA/CSREES, and USDA/FS. For a complete list of participating agencies and points of contact go to https://s-edison.info.nih.gov/iEdison/contactlist.jsp. In order for SBIR/STTR awardees to report inventions and patents through iEdison, their awarding agency must be a participating federal agency within the iEdison system.

How to Report Invention and Patent Information as a SBIR/STTR Awardee

1. Check if the agency supporting the SBIR/STTR effort that resulted in an invention or patent is one of the participating federal agencies, listed on the right side of www.iedison.gov. If it is not one of the participating agencies, contact the technical monitor of your contract and ask for that organization's procedures for submitting paper documentation for invention reporting. Federal agencies have the responsibility to provide guidance on invention reporting to awardees to ensure compliance with the law.

2. If the agency is listed on the iEdison website, then proceed with registering as a user and then reporting your invention following the steps below.

Register Firm in iEdison:

• In order to report your firm's invention through the Edison Invention Reporting System, you must first register as a user on www.iedison.gov.
• Begin the registration process by clicking this link: Register Institution to use iEdison, which is located on the left side. You will be asked to enter a federal contract number that your small business has received, as well as the issuing agency, so have the contract number handy.
• Refer to the directions at the top of the page, as well as the detailed Help (at the top of the page) and field definitions (available by clicking on the ? link, located to the right of the "Grantee/Contractor Organization Name").
• Please note that the Grantee/Contractor Organization refers to your small business name. The OTT, or Office of Technology Transfer, refers to the office or point of contact within your small business that handles technology transfer-related matters. The Extramural Technology Transfer Administrator, is the person who will manage accounts for your small business.
• After entering all required information, click the Submit button at the bottom of the page. The "Request to Register iEdison Organization - Step 2" page is displayed.
• Click Continue to access the Interagency Edison Registration Form. You will need Adobe Acrobat Reader to display the printable version.
• Print the Interagency Registration Form and close the window.
• Click Return to iEdison Home Page. The "Request to Register iEdison Organization - Confirmation" page is displayed.
• Click Return to iEdison Home Page. The "Welcome to iEdison" page is displayed.
• You must sign and fax the fax form to 301-480-0272. Your account will be authorized and you will receive an email confirmation.

Report your invention:

• To add a new invention report, select Main Menu | Create an Invention Report to access the Create New Invention Report - Invention Report Form page
  OR
  To modify an invention report, search for and select the invention report as described in Search Invention Reports. The Modify Invention Report - Invention Report Form page is displayed.
• Enter or edit invention report information, noting the following:
  • Fields with an asterisk (*) are required.
  • Additional keywords may be added via the Add/Edit Keywords button. See Add/Edit Keywords.
  • Additional inventors may be added via the Add/Edit Inventors button. See Add/Edit Inventors.
  • Additional grant or contract numbers may be added via the Add/Edit Grant/Contract Numbers button. See Add/Edit Grant/Contract Numbers.
  • Subcontractors can be added via the Add/Edit Subcontractor Details button. See Add/Edit Subcontractor Details.
  • Invention Disclosure documents can be added as follows:
    • For PDF or TIFF invention disclosure documents, select the appropriate document type, click Browse and select the file or type the file location in the invention disclosure file location field.
    • For Paper invention disclosure documents, select Paper as the document type, and mail or fax the invention disclosure document.
    • For Text invention disclosure documents, select Text as the document type, click Browse and select the file or type the file location in the invention disclosure file location field OR cut and paste the text in the invention disclosure text field.
  • Invention Disclosure documents may be modified as follows:
    • For PDF or TIFF invention disclosure documents, select the appropriate document type, click Browse, and select the file or type the file location in the invention disclosure document file location field.
    • For Paper invention disclosure documents, select Paper as the document type, and mail or fax the revised version of the invention disclosure document.
    • For Text invention disclosure documents, select Text as the document type, click Browse and select the file or type the file location in the invention disclosure file location field OR cut and paste the text in the invention disclosure text field.
  • Invention Disclosure documents may be viewed as follows:
    • Select the View Current Document hyperlink next to the Current Invention Disclosure field. Note: For help viewing PDF or TIFF versions of the government support clause or confirmatory license documents see Troubleshooting: Viewing PDF/TIFF Documents.
• Click Submit to enter the information. The invention report is updated and the Create Invention Report - Invention Report Verification or Modify Invention Report - Invention Report Verification page is displayed, depending on whether you are adding or modifying the invention report.
• Click Submit to accept the information as it is displayed on the verification page OR click Modify Invention Report to return to the previous screen and modify the invention report.
• The Create New Invention Report - Invention Report Confirmation or Modify Invention Report - Invention Report Modification Confirmation page is displayed confirming the invention report was saved to the database and allowing you to add or modify another invention report.