iEdison is an electronic system for grantees and contractors to report inventions arising out of federally funded research to the government agency that issued the funding, as required by the Bayh-Dole Act. See the iEdison overview.
This is all so new to me. Do you have any webinars or instructional-type videos posted on the Internet that will guide me through the invention reporting process?
So glad you asked. As a matter of fact, we do. The NIH has an NIH Grants channel on YouTube! Here you'll find videos on topics ranging from the NIH Grants Process, Peer Review, eRA, and of course Extramural Inventions & Technology Resources (which also covers contracts). We have webinars that will help you better understand Confirmatory Licenses, Government Support Clauses, and Invention Disclosures. And stay tuned. There's more to come.
Each Invention Report in the iEdison system must have a designated primary agency.
Awarding Federal Agency
The federal government agency that made an award that was used to support the conception of the invention or its first actual reduction to practice.
Commercial Name of Product
The name of the product that was developed.
Current Invention Disclosure
The most recent invention disclosure document associated with an invention report. Once an invention disclosure is uploaded, the View Current Document hyperlink is used to access the uploaded document.
Date of First Publication, On Sale, or Public Use
The date of first publication, on sale, or public use (disclosure) initiates the one year statutory period wherein valid patent protection can still be obtained in the United States. May take the form of public presentation, on sale (offer for sale), or use. The format for this field is mm/dd/yyyy.
Explanatory notes may be used to note information about an Invention Report or Patent Report. Explanatory notes should not be used for data that is provided by other iEdison data fields. No notification is sent to the Primary Agency when an explanatory note is added to an Invention Report or Patent Report. It is not intended to be a means of bringing an issue to the attention of an Agency. It is not a substitute for notification by proper means such as a letter, e-mail or telephone call.
Extramural Invention Report (EIR) Number
This number is automatically generated by the iEdison system for a new Invention Report after data has been submitted, checked for errors, and verified. It is unique for each reported invention and cannot be duplicated, modified, or reused.
Filing Date of the Non-Provisional Patent Application
This field is used for either the filing date of the non-provisional patent application with the U.S. Patent and Trademark Office (USPTO) or to indicate the date of the U.S. national stage commencement for a patent filing derived from a PCT filing. An Elect Title must be entered in the Invention Report before for the Non-Provisional Patent Application Number or the Filing Date of the Non-Provisional Patent Application fields can be entered. The format for this field is mm/dd/yyyy.
Filing Date of the Provisional Patent Application
This field is used for the filing date of the U.S. provisional patent application with the USPTO. The format for this field is mm/dd/yyyy and cannot be before June 8, 1995.
Funding Agreements & Agency Designation
Funding Agreement - The funding agreement is identified and reported in two parts, the Agency Designation (the acronym for the Federal Agency name) and the grant or contract award number corresponding to that Agency that contributed to the invention. The main screen allows entry of the first funding agreement. Additional funding agreements may be added using the Add Grant/Contract Numbers button.
Agency Designation - For Agency Designations see the Agency Office Contacts hyperlink at the iEdison Home screen.
Funding Agreement Number
This field in the registration form requests that the federal funding agreement number be composed of the federal agency code and the grant or contract number for a supporting agency. It is used during the initial iEdison registration and not for invention reporting.
For each supporting agency, the corresponding grant or contract number. The format of the grant or contract number is specified by the associated agency. The iEdison system enforces the grant or contract number format for each participating iEdison agency. Up to 12 funding agreements may be associated with each Invention Report.
Grantee/Contractor Organization Name
The official name of the Grantee or Contractor Organization responsible for compliance with the provisions of the Patent Rights Clause and related terms and conditions in the Funding Agreement.
Grantee/Contractor Organization Code
The unique code is assigned to the reporting organizations. This code is the same as the Institutional Profile File number in the eRA Commons if that Institution receives NIH Grants or Agreements. For information about the Institutional Profile File number, please refer to the Institutional Profile File topic in the Commons online help.
A written description of the invention.
Invention Disclosure Document Type
The invention disclosure document type is used to indicate the type of document submitted. iEdison allows the electronic submission of the Invention Disclosure document containing the written description of the invention, a signed copy of the government confirmatory license, and the government support clause which is in a patent or patent application. Any of these documents may be submitted through the iEdison interface as either a PDF or TIFF document type. Alternatively, the user may submit plain ASCII text by inserting it in the text box provided.
Invention Disclosure File Location
The Invention Disclosure File Location field enables the iEdison user to specify the location of the Invention Disclosure to be uploaded. The path and file name may be entered directly into the field or selected using the Browse button.
Invention Disclosure Text
The Invention Disclosure Text field can be used to provide a written description of the invention when the document type equals Text. There is a maximum of 20 pages.
Invention Docket Number
The Invention Docket Number field is a grantee/contractor internal reference number to help track a reported invention(s). Any combination of numbers and letters may be used for an Invention Docket Number. If no Invention Docket Number is entered when an Invention Report is created, the system adds the last 6 digits of the Invention Report Number, as the Invention Docket Number. The Invention Docket Number can be modified.
Invention Disclosure Receipt Date
The date the Invention Disclosure is reviewed and accepted by the government.
Invention Disclosure Reject Date
The date the Invention Disclosure was reviewed and rejected by the government.
The Invention Keyword field is optional. It enables the grantee/contractor organization to designate key terms for searching for Invention Reports. Up to 12 keywords (maximum 30 characters each) can be added in each Invention Report.
Invention Report Date
The Invention Report Date is the date that the inventor discloses the subject invention in writing to the recipient institution. The recipient institution must disclose the subject invention to the federal awarding agency within 2 months from the date the institution was notified by the inventor. 37 CFR 401.14 (a)(c)(1). The format for this field is mm/dd/yyyy.
The Invention Status reflects the current status of the title to rights in the reported invention. Invention Report statuses that (name of roles) can select are:
Under Evaluation (Initial State);
Licensed as an Unpatented Biological Material or Research Tool (If allowed by the Primary Agency for EIR);
Not Elect Title - Waive to Government;
Not Elect Title - Waive to Inventor;
Not Elect Title - Waive to Third Party.
The Invention Title is the title of the invention as it appears in the Grantee/Contractors employee's Invention Report. Invention Titles can be modified.
Latest Stage of Development of Any Product
The stage that the product is in.
Commercialized - The invention is being used in any capacity commercially (e.g., drug screening, quality control, in manufacturing) and/or is a product on the market;
Licensed - The invention is under license or option to one or more companies;
Not Licensed - The invention is not under any license or option.
Name of Third Party to Which Title is Waived
In an Invention Report or Patent Report, the name of a proposed third party to which the nonprofit grantee/contractor wants to assign rights. The third party would assume the invention patent rights and reporting obligations if the waiver is approved.
Non-Provisional Patent Application Number
This field is for the non-provisional patent application number. The Invention Status selected must be Elect Title before a Non-Provisional Patent Application Number can be added.
Unlike the provisional patent application, the non-provisional patent application contains information that is examined and serves as the basis for which the terms of patent protection are measured.
The filing and reporting of a non-provisional patent application fulfills requirements in 37 CFR 401.14 (c)(3) and (f)(6) for submission of an initial patent application within one year of election of title.
Not Elect Title "Other" Reason
If the Invention Report status or Patent Status selected is Not Elect Title and the Not Elect Title Reason selected is Other, this field is for a clear description of the other reason for not electing title. The size limit is 4 kilobytes.
Not Elect Title Reason
This field is for the grantee/contractor to select the reason for choosing to Not Elect Title or retain Title in an Invention Report. In the Invention Report the following values can be selected:
Low Commercial Potential;
Non-Patentable (Not Novel);
Non-Patentable (Not Useful);
One Year Extension to File Initial Patent Application
According to 37CFR Section 401.14(a)(c)(3) the grantee/contractor may request an extension of time to the one year period to file an initial patent application.
Organization Code for Other Organizations to View Invention and Related Patents
A maximum of three additional iEdison registered organizations may be granted view-only access to an Invention Report.
The Data Universal Numbering System (DUNS) number provided by Dun & Bradstreet that identifies the grantee/contractor. Entry of a DUNS number is required for new registration submissions and must pass a system validation check. For an individual person, a DUNS number is not required.
Parent Invention Report Number
Used when an invention is combined into another invention.
Enter the Parent Invention Report Number. Alternatively, new intellectual property (i.e., a second invention) could contribute to form a CIP derivative patent application. Under such circumstances, one invention must be designated the parent. The parent invention is defined as the invention through which all associated patents and utilization data, if required, are reported.
Secondary inventions that contribute to such patents are defined in this relationship as “Child inventions.” Child inventions may not have associated patents.
Patent Docket Number
Internal grantee/contractor organization reference number of to help track a reported patent(s). The field can be used for a unique identifier designated by the organization to help track a reported Patent record internally. Any combination of numbers and letters may be used for the Patent Docket Number. If no Patent docket number is provided, the iEdison system creates one using the last 6 digits of the Invention Report Number followed by a hyphen and a 2 digit serial number.
The Patent Docket Number can be modified by the User.
Patent Issue Date
The patent issue date located on the upper right-hand corner of the issued US patent. The format for this field is mm/dd/yyyy.
The Patent Number uniquely identifies the patent issued by the U.S. Patent and Trademark Office. The Patent Number is located in the patent document.
In the Patent Report form, select one of the following patent statuses:
Institution Retains Rights;
Waive to Government;
Assign to Inventor(s);
Assign to Third Party.
PCT Patent Application Number
The PCT (Patent Cooperation Treaty) Patent Application Number is used to uniquely identify a PCT type patent application.
The format for this field is PCT/AA####/###### (where AA#### is a two character country code followed by a four digit year of filing). The PCT application has the effect of a national patent application in those PCT contracting states designated in the application when pursued at the national stage.
An example of a PCT application number is PCT/US1995/012345.
A Primary Agency must be designated for each Invention Report in iEdison. Select the Primary Agency acronym from the dropdown list. NOTE: Selecting “Other” as the Primary Agency, while included in the list, is not a valid designation.
Provisional Patent Application Number
The Provisional Patent Application Number is the unique identifier for a provisional patent application created upon filing at the USPTO. The format for this number is 60, 61 or 62/###,###.
In the Utilization Report, the Reporting Year is the year for which each utilization report being submitted. This year must be entered to generate the Utilization Report Form.
Research Tools Guidelines Agreement Accepted
The government considers the sharing of unique research resources to be an important way to enhance the value of government-sponsored research. Sharing research tools is standard term and condition of NIH awards. The Research Tools Guidelines Agreement Accepted field indicates whether the sharing of research tools has been agreed to in principle by the grantee or contractor organization for the associated invention. This indicator is applicable only when the invention status is set to “Licensed as an Unpatented Biological Material” or “Research Tool.” This indicator also applies to these agencies: NIH, USDA/FS, USDA/ARS, and USDA/NIFA.
The Bayh-Dole Act provides for flow down of invention rights. The subcontractor may retain rights, but is obligated to comply with reporting requirements to the same extent as the grantee or contractor organization. iEdison allows reporting of subcontractor inventions directly.
In addition to the subcontract number to identify the subcontractor, iEdison allows the subcontractor to identify the prime contractor: name, city, state and country. This information allows the government to track the flow down provisions of the law. The iEdison system allows up to four subcontracts to be associated with an invention.
Subcontractor information can be added using the “Add/Edit Subcontracts” button on the “Create New or Modify Invention Report” screen. The following fields appear on the Add/Edit Subcontractor Details screen.
Prime Contractor Name;
Prime Contractor City;
Prime Contractor State;
Prime Contractor Country;
Prime Contractor DUNS - Enter the nine-digit number Data Universal Numbering System (DUNS) number provided by Dun & Bradstreet that uniquely identifies the grantee/contractor.
Numbering System (DUNS) number provided by Dun & Bradstreet that uniquely identifies the grantee/contractor.
Any invention of the contractor that is conceived or first actually reduced to practice in the performance of work under a funding agreement.
Title Election Date
The Title Election Date is the legally binding date that the grantee/contractor elected to retain title to an invention. The date is not editable. This date begins the one-year period during which the initial patent application must be filed if a one year extension has not been requested. The format for this field is mm/dd/yyyy.
Title Extension Years
The number of Title Extension Years indicates the additional time after the default of two years for which an extension to elect title has been requested.
Upload Other Document
Up to 20 other documents may be uploaded in either an Invention Report or a Patent Report. The size of each document is limited to 25 MB. Documents uploaded in this field must not be Invention Disclosures, Confirmatory Licenses, or Government Support Clauses. Once uploaded a document cannot be deleted by the Inventor role. The TTO Administrator and TTO User role can delete an uploaded document.
U.S. Patent Title
In the Patent Report the U.S. Patent Title field is for the exact title of the U.S. patent or patent application as submitted by the Institution to iEdison or to the USPTO. This field is automatically populated when the Confirmatory License is generated. If the title has changed during prosecution of the patent, the U.S. Patent Title field must be modified. Both upper and lower case letters can be used in the field.
From the Welcome to iEdison page, select Register Institution to use iEdison to access the Request to Register iEdison Organization page.
Enter the registration request information, noting the following:
Fields with an asterisk (*) are required.
The Organization DUNS number is optional. However, all entered values must pass a system validation check.
Address information is not required. However, if you supply one field, all fields with a carat (^) are required.
Providing any federal funding agreement number that the grantee or contractor organization has received at anytime in the past will facilitate making a positive identification of the grantee or contractor organization.
The username has a 6-character minimum and a 20-character maximum. This is a unique name that must be assigned to one and only one user.
The password has a 6-character minimum and a 20-character maximum.
The username and password fields are case sensitive.
Click Submit to enter the registration information. The Request to Register iEdison Organization - Step 2 page is displayed.
Click Continue to access the Interagency Edison Registration Form. Note: You'll need Adobe Acrobat Reader to display the printable version.
Print the Interagency Edison Registration Form and then 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.
A DUNS number is required for registration in iEdison as of Jan. 31, 2014 for grantee and contractor organizations. An individual inventor with an invention from the organization that has waived the rights to that invention does not need a DUNS number to register in iEdison.
You can find the number by clicking on the View/Update Your Organization's Profile link under the Accounts Administration section on the Main Menu. If the profile has been updated by the organization, the DUNS number will be there.
The user name and password can be any combination of letters and numbers and must be between 6 and 20 characters. If you select a user name that already exists, the system will prompt you to select a different name.
If I have forgotten my password, or have been locked out due to failed log-in attempts, what should I do?
Users who have forgotten their password can request to reset their password. Select the Forgot Password/Unlock Account? link on the iEdison home page, and enter your User ID and email address in the required fields. Submitting this request generates a new, temporary password, which is sent to the email address listed in your user profile (Personal Profile). This temporary password will allow you to log in to iEdison, where you can create a new password of your choosing. See the iEdison Online Help for more information about logging into the system.
What if the email address associated with my account is no longer valid, and I can't reset my password?
Individuals with the Technology Transfer Office (TTO) Admin role at your institution can reset your password, or you can contact eRA's iEdison Help Desk.
How can I find out who has a TTO Admin role at my institution?
My attempts to log in are resulting in an error message that says I don't have an iEdison account. What should I do?
It's likely that all you'll need to do is change your password. iEdison log-in passwords expire every 90 days and must be reset. (If your password is about to expire, a message appears when you log in. If your password expires, the system will prompt you to select a new password the next time you attempt to log in.) In addition, individuals with the TTO Admin role at your institution can reset your password, or you can contact eRA's iEdison Help Desk.
How do I change my password once I'm logged in to the system?
I see a new Personal Profile Summary screen in iEdison. Do I need to update my Personal Profile?
It is highly recommended that you update your Personal Profile (see screenshot on this page). with your name, ID and email so that you do not miss important communications from iEdison (such as a link to reset your password), which are sent to the email address listed in your Personal Profile.
I'm trying to link a Continuation Patent Application to a Parent Patent record but I get the following message, "The Parent Patent Docket Number does not match that of the Parent Patent Organization Code." Why am I getting this error message?
You are likely entering the Invention Docket Number rather than the Patent Docket Number as the Parent Patent Docket Number. These numbers are distinct and one agency's Invention Docket Number can be another agency's Patent Docket Number. This would cause the error message. Verify that you are entering a Patent Docket Number and not an Invention Docket Number.
What information is required to report a subject invention?
The invention disclosure must include the following information:
-Either the EIR Number, Invention Docket Number, or both.
-Names of all of the inventors and the institutions with which they are associated
-Invention Report Date
-Description of the Invention that must meet the standards set forth per 37 CFR Sec. 401.14 (a)(c)(1):
“. . . be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention.”37 C.F.R. 401.14(a)(c)(1)"
-Primary Funding Agency
-All funding agreement numbers and names of the funding agencies
- Any publication, on sale or public use of the invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication at the time of disclosure
Do I need to put an EIR number on my Invention Disclosure before uploading it to iEdison?
No. You do not need an EIR number on your Invention Disclosure before uploading it to iEdison. Your EIR number is generated when you upload your Invention Disclosure.
Does my Invention Disclosure have to be signed by my institutional official or the inventor(s) in order for it to be accepted in iEdison?
No. Your Invention Disclosure does not have to be signed by your institutional official or the inventor(s) in order for it to be accepted in iEdison. However, it certainly will not be rejected if it is signed.
When should the Date of First Publication, Sale, or Public Use be added to the Invention Report?
If the uploaded Invention Disclosure contains a date of first publication, the date should be added to the Invention Report when the Invention Report is created and the Invention Disclosure is uploaded.
If a manuscript is pending publication at the time the Invention Report is created, the Invention Report should be modified to add the Date of First Publication as soon as it is available.
If I upload a patent application, can that patent application satisfy the Invention Disclosure Report requirement?
Yes, so long as the EIR Number or Invention Docket Number is included on the submission, the patent record containing the patent/patent application number has been reported in iEdison, and you upload proof that the patent application was filed with the USPTO, e.g., a USPTO submission receipt.
What should a grantee/contractor do if a subject invention hasn’t been reported to the awarding agency within the required 2 month period?
Always report the invention, even if it is late. The invention report date should be the date the inventor notified the awardee institution of the subject invention. Provide an explanation in the "Explanatory Notes" section of the invention record.
Oh No!! I accidentally waived the rights to an invention. What do I do now?
First, take a deep breath. Then, please submit a written request to firstname.lastname@example.org to have the subject invention status changed. The request must include in the subject invention status the reason(s) for the change. Please promptly inform us when you realize you accidentally waived the rights to an invention.
How do I link patents to other patents to create a family of patents?
I received a notification message indicating that the provisional Filing is due to expire and either a non-provisional or a PCT patent application must be filed.
I have many messages like this for provisional patent applications for which non-provisional applications have been filed. Why am I receiving these messages and what do I need to do?
You are likely getting this message because your non-provisional patent record is not linked to your provisional patent record. As far as the NIH and iEdison are concerned, these are two separate patent applications filed under one invention. You must link the non-provisional record as a child to the provisional record.
Open the non-provisional patent record (Patent Docket Number 2)
Scroll down to the "Parent Patent Docket Number" field.
Enter the provisional patent record's EIR (Patent Docket Number 1)
Submit the change.
You'll see that the patent tree has changed so that the two patent records are not side by side (like siblings on a family tree) but rather one is linked below to the other on top.
After you do this, the notification message should disappear.
What are the Annual Utilization Report Questions? (12/08/2016)
The utilization questions, since 1995, are:
Please indicate the latest stage of development of any product arising from this invention, according to the following categories: (Choose One): Commercialized, Licensed, Not Licensed
If any product arising from this invention has reached the market, what was the calendar year of the first commercial sale?
In the designated reporting period, what was the total income received as a result of license or option agreements? Do not include specific patent costs reimbursement.
In the designated reporting period, did the grantee organization/contractor or any of the exclusive licensees request a waiver of the U.S. manufacturing requirements?
If yes, how many such waivers were obtained?
Please provide the commercial name of any FDA-approved products, utilizing this invention, that have first reached the market during the designated reporting period.
In the designated reporting period, how many exclusive licenses and/or options are active?
Number of Domestic Manufacturing Licenses
In the designated reporting period, how many non-exclusive licenses and/or options are active?
In the designated reporting period, how many licenses and/or options of any type to small businesses (<500 employees) are active?
Total Gross Sales
When is the utilization report due?
Utilization reports are due annually, when required by agencies. Not all agencies require invention utilization reports. When in doubt, the organization should consult the lead agency on the invention in question. For NIH, the grantee/contractor establishes a 12-month reporting cycle beginning in the month of the grantee/contractor's choosing. See the Invention Reporting Timeline.
Why can't I access the Non-Provisional Patent Application data fields on the Patent Report Form?
In order to access these data fields, an institution must first "Elect Title" to the invention. Select "Elect Title" from the Invention Status drop-down menu and enter the "Title Election Date" in the invention record.
Try as I may, I cannot include the Non-Provisional Patent Application Data in the Provisional Patent record. What do I do?
Change the "Type of Patent Application" from PROV (Provisional) to ORD/UTIL (Non-provisional). That should do it.
Whoa! I just found out that Provisional, Non-Provisional, and PCT patent applications should all reside under the same Patent Report Form. I've been filling out a new form each time. Can I somehow link these report forms and eliminate these notification messages?
You're in luck! You can establish Parent/Child linkages between related Patent Records. Enter the Patent Docket Number of the preceding Patent Record into the "Parent Patent Docket Number" field of the Child Patent Record. Once that is done, Voila!, the Child is linked under the Parent record.
In the online Invention Report and uploaded Invention Disclosure, what identifying information do you need about the inventors?
We need each inventor's First Name and Last Name. iEdison has an optional field to enter and inventor’s Middle Name, if used.
Other personally identifiable information (PII) should not be entered, e.g., inventors' Social Security numbers, addresses and phone numbers. We never need Social Security numbers. If we need an address or phone number we will locate that information or request the information from the institution. If non-required PII is in an institutional form, please redact it before uploading it into iEdison.
Occasionally I learn of additional or unknown funding AFTER a patent has issued (in some cases -- well after issuance). Is it necessary to file a correction to the issued patent to add the additional funding information?
If a new Award is noted after a Patent has issued from a Subject Invention you must add the Award into the EIR document and to iEdison, then obtain a certificate of correction for the issued patent and a new confirmatory license with all of the Award numbers for recordation at the PTO.
My invention disclosure was rejected because it didn't have enough information. I uploaded a publication, patent application, or patent and it was still rejected. What happened?
Please read the Reasons for Rejection. Most likely you uploaded a publication, manuscript, patent application, or patent and did not populate the Date of First Publication, Sale, or Public Use field in the Invention Record and/or create a patent record.
What is a Government Support Clause and what are its requirements?
The Government Support Clause (GSC), whether contained in a provisional patent application, non-provisional patent application, or if a GSC is included (not necessary to include) in a Patent Corporation Treaty application (PCT) patent application, it must match exactly the following statement with the appropriate contract/grant numbers and Federal agency(s) identified)
“This invention was made with government support under (identify the contract) awarded by (identify the Federal Agency). The government has certain rights in the invention.” 37 CFR 401.14(f)(4)
To satisfy the Government Support Clause requirements, the Government Support Clause must be uploaded within the full Patent application along with the USPTO Filing receipt.
The Government Support Clause for my EIR 9876543-22-1111 was recently rejected because the grant number on the GSC does not match the grant number in iEdison. But, the grant number in iEdison (DK012345) matches the grant number in the The GSC (DK12345). Why was the Government Support Clause was rejected?
You indicate that the grant number in iEdison (DK012345) matches the grant number in the Government Support Clause (DK12345). However, that is not the case. The leading zero is relevant and material. It is no different than any of the other numbers. If the 1 or 2 or 3 or 4 or 5 were omitted then the GSC would be rejected for the same reason.
The grant number DK012345 is not analogous to a real number or a dollar figure such as 0.12345 or $012,345.00 where the zero is superfluous.
An NIH grant number comprises the two letter NIH Institute designation (DK) and a six digit numerical identifier (012345). (See, http://grants.nih.gov/grants/glossary.htm#GrantNumber) for the definition of a grant number. Many times the first number is a 0. Many times it is not. All six digits identify the grant number that funded the invention. Without all six numbers, one could not assume the missing number was a leading zero. The missing number could be somewhere in the middle. For example, it could be DK123945. We see that frequently.
You must correct the Government Support Clause and file the correction with the USPTO.
Can a nonprofit Grantee/Contractor transfer ownership of a subject invention to an inventor or any other third party without the government's prior approval?
Not for NIH. NIH's approval is necessary and the approval of any transfer to an inventor or third party will normally be finalized with a set of terms and conditions. Please see the Bayh-Dole Act at 37 CFR 401.14(k). Also see the NIH GPS at Part I, Chapter 8.2.4 Inventions and Patents, Exhibit 8. Extramural Invention Reporting Compliance Responsibilities.
2. Click the "NIH" link from the list of agencies on the right side of the screen.
3. Under the "NIH Policies, Procedures, and Forms" section, click the "License to the U.S. Government" link.
4. This will generate the License form. Enter the data requested and then hit "Submit."
5. A PDF form of the License should then appear. You can save this document and then upload the file into the patent record for agency review.
1. Go into the patent record after logging in to iEdison.
2. Without changing any of the information on the page, click on the “Submit” tab on the top or bottom of the page.
3. Click “Yes” at the following prompt, “Click yes to validate this record and save your changes.”
4. A grey tab marked "Print Confirmatory License" will be displayed at the top and in the bottom right hand corner next to the “Edit Patent” tab. Please click this "Print Confirmatory License" tab and the Confirmatory License will generate with the patent information.
5. Please complete all the fields on the page before uploading the document into the patent record.
I am trying to use the iEdison.gov form to generate confirmatory licenses. I can’t enter the signatory’s name before she signs, I can’t save the document that is generated. What’s wrong?
Try accessing iEdison using Firefox rather than Chrome or Internet Explorer. That should work. If it doesn't then contact the iEdison Help Desk.
May I electronically sign my Confirmatory License and will the USPTO & iEdison accept it?
Yes you may. And yes the USPTO & iEdison will accept it! You must have a full version of Adobe Acrobat. Also, you must have or create in Adobe Acrobat a "digital signature."