IMPLEMENTATION OF INVENTOR CERTIFICATIONS FOR INVENTIONS WAIVED TOTHE INVENTOR UNDER THE BAYH-DOLE ACT

 

NIH GUIDE, Volume 26, Number 11, April 4, 1997

 

P.T. 34



Keywords:

  Grants Administration/Policy+ 

 

National Institutes of Health

 

A.  Purpose

 

This notice sets forth the National Institutes of Health (NIH) policy

and procedure for allowing the inventor(s) to take title to

inventions in which the grantee/contractor organization and the

government has not elected title under the Bayh-Dole Act.

 

B.  Policy

 

It is the policy of the NIH that employee-inventors may request to

retain title their inventions which have not been elected by the

grantee/contractor and the government 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 the NIH funding understand their obligations to file for patent

protection, notify the government,  and carry out other

responsibilities set forth by 37 CFR 401.9, NIH is requiring that an

inventor certification be completed by the inventor(s) before NIH

will consider an inventor's request to retain title to an invention.

It is the NIH policy that its approval of the inventors' request to

retain title is equivalent to election of title to the invention by

the grantee/contractor. Thus, consistent with 37 CFR 401.14 (c )(3),

the inventor(s) has one year from the date of approval by NIH to seek

patent protection.  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.

 

D.  Procedures

 

1.  Inventors who wish to retain title to their invention(s) should

complete the inventor certification found on the Edison Home Page

(http://era.info.nih.gov), bullet entitled "Inventor Waivers."

 

2.  The responsible official at the grantee/contractor organization

should sign the certification confirming that the grantee/contractor

has no objection to release of rights to the inventors and send it to

NIH.

 

3.  While it is not required that an inventor certification accompany

the notification of non-election of title by the grantee/contractor,

a more expedient review of the inventor's request can be expected if

this procedure is followed.

 

4.  Grantee/contractor organizations will be notified electronically

through Edison of NIHs determination.

 

5.  Inventors will be notified by e-mail.

 

F.  Effective Date

 

The policies and procedures set forth in this notice are effective

immediately.

 

INQUIRIES

 

For additional information on this notice, contact:

 

Ms. Sue Ohata

Division of Extramural Inventions and Technology Resources

National Institutes of Health

6701 Rockledge Drive - MSC 7750

Bethesda, MD  20892-7750

Telephone:  (301) 435-1986

FAX:  (301) 480-0272

Email:  [email protected]

 

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