Intellectual Property and iEdison Invention Report Requirements
NIH understands that securing proper intellectual property (IP) rights are a key step along the path of commercialization, and will help your small business comply with the Bayh-Dole Act and invention reporting requirements through iEdison. The NIH SBIR and STTR programs help achieve many of the goals of the Bayh-Dole Act by promoting the utilization of inventions arising from federally supported research.
Bayh-Dole Act Background
The Bayh–Dole Act is US legislation dealing with intellectual property arising from federally funded research. This Act encourages researchers to patent and market their inventions by guaranteeing patent rights. This Act automatically grants 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. For more information on the Bayh-Dole Act and NIH’s Role, please read Guide Notice NOT-95-003.
Principal Features of the Bayh-Dole Act
Organizations are required to establish a written agreement with all employees to disclose promptly each subject invention made under a federally sponsored program and to execute all papers necessary to file patent applications. By its acceptance of an NIH award, a grantee or contractor organization agrees to obtain written agreements from its employees and:
- Promptly report inventions to the NIH.
- Elect, in writing, within two years, whether or not to retain title.
- File a patent application within one year of electing title.
- Acknowledge government support in the patent application and send page of application containing federal support clause.
- Provide the government with a royalty free license to the invention; the confirmatory license should be sent to the Office of Policy for Extramural Research Administration (OPERA), NIH.
- Make reasonable efforts to attract small business licensees.
- Provide annual reports on the utilization of the invention, including date of first commercial sale or use and gross royalties received.
- Agree that exclusive licensee will manufacture the invention substantially within the US, if it is to be used or sold in the US.
Invention Reporting though iEdison
All inventions made using NIH supported research must be reported in iEdison (Interagency Edison). You can use iEdison to learn about the law and regulations, and report an invention or patent funded by any of the participating federal agencies.
It’s important to remember that invention reporting data is confidential and the government license in no way allows the government to compete with the grantee/contractor for licensing of the invention. All inventions should be reported prior to any publication or presentation of the invention at an open meeting.
Questions about iEdison?
If you have any questions about iEdison or your invention reporting requirements, please contact:
Director, Division of Extramural Inventions & Technology Resources (DEITR)
Office of Policy for Extramural Research Administration (OPERA)
National Institutes of Health (NIH)
6705 Rockledge Drive, Suite 310, MSC 7980
Bethesda MD 20892-7980