iEdison - Invention Reporting Timeline

Please click on the gray boxes below to see a chart outlining the responsibilities of the recipient organizations for complying with extramural invention reporting (Also see an Invention Reporting Timeline: At a Glance (PDF - 308 KB)).

  • Grantee / Contractor Organization

    Grantee employees working under the funding award (e.g. PD/PI) must sign an agreement with the employee to abide by the terms of the Bayh-Dole Act as it relates to intellectual property rights.

    When At the time of employment -- term of employment
    Discussion Grantee/contractor organizations and consortium participants must have policies in place regarding ownership of intellectual property, including conflict of interest issues.
    37 CFR Reference 401.14(f)(2)

    The grantee/contractor must submit a report of any "subject" invention. This includes a written description (the so called invention disclosure) of the invention that is complete in technical detail.

    When Within 2 months of inventor's initial report to the grantee / contractor organization.
    Discussion

    No single format for disclosing the invention to the federal government.  The report must identify:

    • inventor(s)
    • NIH grant number
    • date of any public disclosure
    37 CFR Reference 401.14(a)(2)
    401.14(c)(1)
    Notes

     

    Grantee/contractor organization must notify the federal agency sponsor of its decision to retain or waive title to invention and patent rights.

    When Within 2 years of the initial reporting of the invention to the lead federal agency sponsor. (Earlier, if disclosed publicly)
    37 CFR Reference 401.14(b)
    401.14(c)(2)
    401.14(f)(1)
    Notes

     

    For each invention, the grantee/contractor organization must provide a user license to the lead federal agency sponsor for each invention.

    When When the initial non-provisional patent application is filed.
    37 CFR Reference 401.14(f)(1)

    Notes

     

    Grantee/contractor organization must notify the federal sponsor that it will not retain ownership of an invention.

    When Within 2 years of reporting to federal agency sponsor. (Earlier, if disclosed publicly.)
    37 CFR Reference 401.14(c)(2)
    401.14(d)

    Notes

    Handled electronically through iEdison, otherwise a signed hard-copy request is required.

    The grantee/contractor must inform the government of the the filing of any non-provisional patent application. The patent application must include a government support clause.

    When Within 1 year after election of title, unless there is an extension.
    Discussion

    Initial patent application must be defined as a non-provisional application. The patent application number and filing date must be provided. The following language is to be used on a patent application: "This invention was made with government support (identify the funding award) awarded by (identify the institute and federal agency). The government has certain rights to the invention."

    37 CFR Reference 401.14(c)(3)
    401.2(n)
    401.14(f)4

    Notes

     

    The grantee/contractor must notify the federal agency sponsor that a patent has been issued.

    When When the patent is issued.
    Discussion The patent issue date, number, and evidence of the federal government support clause must be provided
    37 CFR Reference 401.5(f)(2)

    Notes

     

    An extension of up to two years may be requested for election of title, or up to one year for filing a patent application.

    When As needed.
    Discussion Request for extension of time must be made. Such requests are preapproved
    37 CFR Reference 401.14(c)(4)
    Notes  

    If required by agencies; Information requirements defined in iEdison.

    When Annually, when required by agencies.
    Discussion The grantee must submit information about the status of commercialization of any invention for which title has been elected.
    37 CFR Reference 401.14(h)
    Notes

    This report gives an indication of whether the objectives of the law are being met. Specific reporting requirements can be found in iEdison (http://iEdison.gov)

    Grantee/contractor must notify federal agency sponsor of changes in patent status.

    When Grantee/contractor must notify federal agency sponsor of changes in patent status, at least 30 days before any pending patent office deadline
    Discussion This notification allows the lead federal agency sponsor to consider continuing the patent action
    37 CFR Reference 401.14(f)(3)
    Notes

     

     

    When The grantee must indicate annually any inventions made during the previous budget period on all grant awards
    Discussion Part of all competitive applications and non-competing continuation progress reports
    37 CFR Reference  
    Notes The information is requested as a checklist item on the PHS 398 application and on the non-competing continuation progress report.

    The grantee/contractor must submit a summary of all inventions made during the entire term of each grant/contract award. The report is to be submitted to the awarding unit for grants or the contracts management office.

    When Due within 90 days after the project period (competitive segment) ends.
    Discussion Required information is specified on the HHS 568 form. If no inventions occurred during the award period, a negative report must be submitted.
    37 CFR Reference 401.14 (f) (5)
    Notes For grants, submitted via eRA Commons
    • Employee Agreement to Disclose All Inventions   
    • More details...
    • Invention Report    
    • More details...
    • Election of Title to Invention   
    • More details...
    • Confirmatory license   
    • More details...
    • Nonelection of Title to Invention:   
    • More details...
    • Patent Application   
    • More details...
    • Issued Patent   
    • More details...
    • Extension of Time to Elect Title or File Patent   
    • More details...
    • Invention Utilization Reports:   
    • More details...
    • Change in Patent Application Status   
    • More details...
    • Annual Invention Statement   
    • More details...
    • Final Invention Statement and Certification   
    • More details...
  • Sub-contractor

    Subcontractors retain rights to their subject inventions

    When Same reporting responsibilities, obligations and time frames as prime grantee/contractor organization
    Discussion Prime grantee/contractor organization cannot receive rights to subcontractor's subject invention(s) as a condition of awarding a grant or contract to subcontractor
    37 CFR Reference 401.14(g)(1)
    401.14(g)(2)
    Notes Invention disclosure, confirmatory license, and proof of government support clause may be submitted electronically through iEdison.
    • Rights to Inventions on Subcontracts   
    • More details...
  • Third Party

    If the grantee/contractor is a non-profit organization, it must ask for approval from the federal agency sponsor to assign invention or U.S. patent rights to any third party, including the inventor (s).

    When As needed
    Discussion Specific procedures to request third party assignment may vary between agencies. Consult lead agency prior to initiating request. For NIH, all communications for such requests must be sent to the Office of Extramural Research. The NIH Office of Technology Transfer serves in an advisory capacity to OER for the processing of such assignment requests.
    37 CFR Reference 401.14(k) for non-profits.
    Notes Grantees that are for-profit entities (including small businesses) do not need to ask approval, but ongoing reporting remains a requirement for each invention.
    • Assignment of Rights to Third Party   
    • More details...
  • Employee / Inventor

    The inventor may request assignment of invention rights. Agencies support requests of this type. In all cases, documentation is required when a grantee/contractor organization waives rights to the invention and the inventor(s) wishes to retain the invention rights.

    Discussion

    First, the grantee/contractor organization must elect not to retain rights in the invention. Second, the inventor must request the assignment of rights, agree to all terms associated with invention reporting as detailed in 37 CFR 401, and must pursue commercialization of the invention through patent filing or licensing as a research tool. Specific procedures for any agency should be determined prior to initiating the request.

    37 CFR Reference 401.14(k)(1) non-profits
    Notes