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Expectations By Funding Sources
1. Federal Government
If the invention was the result of a federal grant, the federal government has rights and expectations in the invention process. Under the Bayh-Dole Act, the University has an obligation to disclose inventions made with federal funds to the funding agency within two months of receiving a written disclosure of the invention. We then have a further two years to elect title to the invention, less if the invention has been published and the period for filing a patent application is coming to an end.
a) Credit for Inventions
The criterion for attributing an invention to a federal grant is if the invention was:
“first conceived of or first actually reduced to practice with federal funds.”
This means that a conceptual invention that resulted from writing a grant (and hence wasn’t federally funded) can become federally funded if the grant is awarded and the idea works out. We will need to review the status of the invention periodically during patent prosecution.
If either or both of these conditions pertain, the government expects to see its funding noted at the top of a patent. The patent should state:
“This invention was made with government support under [e.g. U.S. Department of Energy] Grant No. ___________. The Government of the United States of America has certain rights in the invention.
b) Compliance Process
The government expects prompt filing of necessary reports with the funding agency. This is the responsibility of the Office of Technology Transfer, but we need you to supply the appropriate information
c) Government Rights
If federal funds were used in the invention, the government has certain rights in the invention:
- A non-exclusive, royalty-free license to use the patent for its own purposes;
- It can grant a license in the public interest.
There are also certain implications for the University and the licensee.
In practice, neither of these requirements detracts from the ability to grant exclusive rights to federally funded inventions and secure the necessary investment to develop them.
2. Foundations
Some foundations impose conditions on licensing inventions they have funded. You need to tell us of the foundation funding so that we can get a copy of the terms and conditions from the Office of Sponsored Programs or the Office of Research Administration.
3. Commercial Sources
If an invention was made under an industrially sponsored research agreement, the sponsor will generally have an option to license any inventions that result.
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