Terms and Conditions of ARS Awards Pertaining to Patents, Inventions, & Copyrights
The central point of contact within the U.S. Department of Agriculture for questions and issues pertaining to patents and inventions (this does not include questions and issues regarding Interagency Edison) is:
Deputy Assistant General Counsel for Patents
Research and Operations Division
Office of the General Counsel, USDA
1400 Independence Avenue, S.W.
Washington, D.C. 20250-1415
Invention Disclosure and Related Information Requirements
37 CFR Part 401.14 requires the disclosure of each subject invention to the Federal Agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters. Invention disclosure statements pursuant to 37 CFR Part 401.14(c) shall be made in accordance with the following instructions by (1) electronic submission to Interagency Edison, or (2) paper submission via facsimile or U.S. Mail.
Electronic submission Via Interagency Edison Web Interface
To access Interagency Edison for the purpose of electronically reporting patents and inventions: Get into Netscape or any SSL (secure socket layer) web browser. Once in an SSL browser, go to the URL: http://www.iedison.gov (Interagency Edison Home Page) and access the instructions component. Requests for detailed instructions or other questions regarding Interagency Edison should be directed to:
Division of Extramural Inventions and Technology Resources
National Institutes of Health
6701 Rockledge Drive, Room 3175, MSC 7750
Bethesda, Maryland 20892-7750
Telephone: (301) 435-1986
Facsimile: (301) 480-0272
After the disclosure of the invention is reported electronically through the Interagency Edison Web interface, a signed copy of the invention disclosure must be submitted to the Division of Extramural Inventions and Technology Resources (DEITR), National Institutes of Health (NIH) within 2 months of the electronic submission. The signed disclosure should contain a brief description of the original invention including the Title, Inventor(s) Name(s), and source of Federal support used (e.g., Agency Award Number). The awardee may fax the signed disclosure to the facsimile number identified above (it is not necessary to mail the original to DEITR). After the disclosure is received by DEITR and acknowledged in the Interagency Edison System, a copy of the disclosure will be sent to ARS.
Paper Submission Via U.S. Mail
If access to Interagency Edison is unavailable, the invention disclosure should be sent directly to the DEITR at the above address. After the disclosure is received by DEITR, it will be entered into the Interagency Edison database prior to being sent to ARS.
Other Invention, Patent, and Utilization Reporting Information
Electronic Submission Via Interagency Edison Web Interface
The Interagency Edison is to be used to exact any changes to the disposition of the invention,
including title election or non-election, assignment of rights to third parties, patent application(s), domestic manufacturing waiver and invention utilization reports.
Even if information is submitted via Interagency Edison, hard copies of several documents must be submitted to DEITR.
1. Once a patent is applied for and an application serial number is available, a confirmatory license to the Government must be submitted. Such a license must also be submitted in instances where the invention has been licensed but not patented (as is the case of biological materials).
2. Commensurate with patent application or patent issue the awardee organization must submit a copy of the portion of the patent that contains the "Government Support Clause," offering proof of formal acknowledgment of Government support of the patent's underlying invention.
3. Requests for assignment of rights to third parties (e.g., the inventor) must include certification of the inventor. The certification process is defined and can be carried out through the Interagency Edison web site. The signed certification must be submitted to DEITR via facsimile (preferable) or U.S. Mail.
4. Requests for waiver of domestic manufacturing must be received in hard copy including a detailed justification. Once the relevant information is received by DEITR and entered into the Interagency Edison system, copies of the correspondence will be forwarded to ARS.
Paper Submission Via U.S. Mail
If access to Interagency Edison is unavailable, any changes to the disposition of the invention, including title election or non-election, assignment of rights to third parties, patent application(s), domestic manufacturing waiver and invention utilization reports should be sent directly to the DEITR at the above address. After such actions are received by DEITR, they will be entered into the Interagency Edison database prior to being sent to ARS.
? Within two years of an invention disclosure, a recipient may elect to file for a patent(s). After the two-year election period, the recipient must either file for a patent(s) within one year, or notify this agency of its intentions pursuant to 37 CFR Part 401.14(c)(2) and (3). If the recipient fails to either 1) notify the Government of its intentions or 2) exercise its option to file for a patent within the specified time periods, then the Government may exercise its right of ownership pursuant to 37 CFR Part 401.14(d)(1) and (2).
? The Government shall not be entitled to publicly disclose or publish research results except under any one of the following circumstances:
(1) The award recipient publicly discloses or gives permission for publication; or
(2) The award recipient does not elect to file for a U.S. patent on such results, pursuant to 37 CFR Part 401.14(c)(2) and (3); or
(3) After the award recipient files for a U.S. patent pursuant to 37 CFR Part 401.14(c)(3).
"Publications" include publicly accessible data bases such as Genbank; and "research results" include genome maps and sequences.
See 7 CFR Part 3019.36