Transfer of Rights to the Inventor
Employee-inventors may request to retain title their inventions which have not been elected by the grantee/contractor subject to certain conditions set forth by the regulations appearing in 37 CFR 401.9. To ensure that inventors who are permitted to retain title to inventions made with funding from the United States Department of Agriculture (USDA), understand their obligations to the government to file for patent protection and carry out other responsibilities set forth by 37 CFR 401.9, USDA requires that an inventor certification be completed by the inventor(s) before USDA will consider an inventor's request to retain title to an invention. It is USDA policy that its approval of the inventors' request to retain title is equivalent to election of title to the invention by the grantee/contractor. Among the responsibilities under 37 CFR 401, the inventor(s) has one year from the date of approval by USDA to seek patent protection as set forth by 37 CFR 401.14 (c )(3). Rights to the invention will revert back to the government after one year unless an extension of time is requested. An extension of time will normally be approved if there is clear evidence that additional time is required to file a patent application on the invention.
Inventors who wish to retain title to their invention(s) should complete the inventor certification. The responsible official at the grantee/contractor organization should then complete and sign the lower portion of the certification. The completed certification and a summary of the invention disclosure must then be faxed to USDA/ARS at (301) 504-5060.
The inventor certification is available as a PDF file, which can be completed online and then printed. Adobe Acrobat Reader is required and is available for free at http://www.adobe.com/products/acrobat/readstep.html.