NIH EXTRAMURAL INVENTION REPORTING --- 20/20 VIEW NIH GUIDE, Volume 24, Number 33, September 22, 1995 P.T. 34 Keywords: Grants Administration/Policy+ National Institutes of Health The National Institutes of Health (NIH) is providing guidance to increase awareness of and compliance with the requirements for extramural invention reporting to the NIH. The Bayh-Dole Act [35 U.S.C. 200-212 (1994)] was enacted in part to promote the utilization of inventions arising from Federally supported research and to promote collaboration between commercial concerns and nonprofit organizations, including universities. See 35 U.S.C. 200 (1994). Toward this goal, the party to a contract, grant, or cooperative agreement with a Federal Agency (awardee organization) for the performance of Federally supported experimental, developmental, or research work may elect to retain title in a subject invention provided certain conditions are met. 37 CFR 401.14(a) requires awardee organizations to: 1) disclose each subject invention to the funding Agency within two months after the inventor discloses the invention in writing to the awardee organization. 2) elect in writing whether or not to retain title to any such invention within two years from the date of disclosure to the funding agency. 3) file an initial patent application on a subject invention to which title has been elected within one year after election of title or prior to the end of any statutory period that may bar obtaining valid patent protection in the United States after a publication, sale, or public use. With respect to any invention in which the awardee organization elects rights, the funding agency shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world. If the awardee organization fails to disclose or elect title within the times specified above or elects not to retain title, the awardee organization may be required to convey title to the subject invention to the Government. If the awardee organization does not elect title, the Government may elect title in the subject invention if obtaining patent protection is in the public interest. If an awardee organization does not elect to retain title to a subject invention, the funding agency may consider and, after consultation with the awardee organization, grant requests for retention of rights by the inventor subject to the provisions of the Bayh-Dole Act and regulations promulgated under the Act. See 37 CFR Part 401 (1993). All awardee organizations are to use Form HHS-568 ("Final Invention Statement and Certification") to closeout a grant or contract. The notice with twenty frequently asked questions and a glossary of 20 terms entitled, "A 20-20 View of NIH Extramural Invention Reporting," is available in the electronic edition of this issue of the NIH Guide for Grants and Contracts. INQUIRIES For additional information about the reporting requirements of inventions developed with funding from the NIH, visit the EDISON system at http://www.nih.gov/grants and contracts/edison or contact: Ms. Sue Ohata Office of Policy for Extramural Research Administration National Institutes of Health Building 31, Room 5B62 Bethesda, MD 20892 Telephone: (301) 402-0850 FAX: (301) 402-6012 Email: Sue_Ohata@nih.gov .
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Office of Extramural Research (OER) |
National Institutes of Health (NIH) 9000 Rockville Pike Bethesda, Maryland 20892 |
Department of Health and Human Services (HHS) |
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