OER Grants: Intellectual Property Policy
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Intellectual Property Policy

Division of Extramural Inventions & Technology Resources (DEITR) in the NIH Office of Extramural Research

Regulations

Inventions arising from federally funded research projects are required to be reported to the government agency that funded the project, per the Bayh-Dole Act (the Patent and Trademark Law Amendments Act). The Act permits businesses (large and small) and nonprofits (including universities) to retain ownership of the inventions made under federally funded research and contract programs, while also giving the government the license to practice the subject invention. In turn, the organizations are expected to file for patent protection and to ensure commercialization upon licensing for the benefit of public health. Read the regulations at Bayh-Dole Act (37 CFR 401).

Key Provisions

The contractor or grantee or cooperative agreement awardee (i.e. the funding recipient) is required to:

  • Report each new invention to the federal funding agency within two months of the invention being reported to the funding recipient
  • Decide whether to retain ownership of the technology and notify the agency of any decision to retain title within two years of the date of disclosure (i.e. elect to own the invention)
  • File for patent (or plant variety protection, in the case of plants), within one year of electing to retain title.
  • Provide a license to the government to also practice the subject invention
  • Keep government informed of progress in patenting or commercializing the invention
  • Report any commercialization, licensing efforts, or other efforts to bring the technology to practical applications (utilization)
Invention Reporting System
  • Interagency Edison (iEdison) - A system for the electronic reporting of inventions and patents to the federal funding agency. iEdison is used by more than 30 federal agencies for invention and patent reporting.
  • Edison Report-Lite (ERL) - A tracking feature of iEdison for agency staff to view reported inventions and monitor compliance
Resources
  • Timeline for Reporting - Chart detailing the responsibilities of the organizations for complying with extramural invention reporting.
Notices

Policy Resources

NIH Guide Notices

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This page last updated on April 7, 2014
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