Bayh-Dole Webinar – Government Support Clauses

Bayh-Dole Webinar – Government Support Clauses



good morning my name is Scott Cooper I work for the division of extramural inventions and technology resources in the office of extramural research at NIH the purpose of this aya dicin webinar series is to educate the NIH extramural research community about the invention reporting requirements of the bayh-dole act and using the IEEE Edison system to comply with those requirements this is one in a series of brief presentations about bayh-dole act reporting I'd like to start off with a brief analogy this is rocket science this is not rocket science this is the government support clause we'll be discussing today so kick back take off your shoes put your feet up on your desk and enjoy the show our agenda and learning objectives today it's a basic introduction to the government support clause we're gonna start off with the definition of an invention then bayh-dole government support Clause requirements acceptable and unacceptable government support Clause documents acceptable and unacceptable government support clauses and finally available resources for you in case you have any questions issues or concerns so what is an advent and invention under the bayh-dole act 37 CFR section 401 defines an invention as any invention or discovery which is or may be patentable or otherwise protectable under the u.s. code a subject invention means any invention of the contractor conceived or first actually reduce to practice in the performance of work under the grant or contract now the federal or government support clause this is a statutory requirement 37 CFR 401 provides that the contractor agrees to include within the specification of any u.s. patent application and any patent issuing thereon covering a subject invention the following statement now the terms contract and grant and cooperative agreement are interchangeable for the purposes of this presentation same goes for contractor grantee and awardee now note the quotation marks surrounding the government support statement this invention was made with government support under identified grant number awarded by identify NIH the government has certain rights in the invention okay the initial patent application for the GSC it's really just to fill in the blank exercise this is not a time for creative writing it's very simple we fill in the blanks so if there are leading zeroes in your grant number include them so when you see identify the contract and the government support clause include those leading zeros this is an example for you on the screen remember zeros are numbers to identify the federal agency this is the awarding federal agency not the Institute or division within that agency for example we wouldn't use the National Cancer Institute we would use the National Institutes of Health it may sound simple but it can get confusing so here's a tip if you're unsure which agency is your awarding agency just look at your notice of award now we're going to move on to acceptable documents that should contain the government support clause submitted to the US Patent and Trademark Office provisional and non provisional for utility applications continuations a continuation is a second application for the same invention claimed in a prior non provisional application and filed before the first application becomes a bandit or patented continuations in part the CIP is an application filed during the lifetime of an earlier non provisional application and divisional applications which is a later application for an independent or distinct invention disclosing and claiming only a portion of and only subject matter disclosed in the earlier or parent application all patent applications containing the GSC must be uploaded along with and this is important the USPTO filing receipt the filing receipt is an official document from the PTO letting us know that they received the application from you why do we need that we must be able to determine whether what you provided in IEEE Edison is the same thing that you provided to the US Patent and Trademark Office so what are some unacceptable government support Clause documents single sheets of paper that contained only a government support clause they don't look like they were submitted to the USPTO in connection with any invention whatsoever and they look like they were simply typed on a computer printed and uploaded secondly documents that contain no evidence of submission to the US Patent and Trademark Office one example that I've seen recently is a 33 page document it looks like a patent application but there's no cover sheet nothing to indicate submission to the USPTO no date stamps no filing receipt so if the document looks like it was simply typed into a word processing application and printed and uploaded and we don't have any evidence that it was submitted to the US Patent and Trademark Office it will be rejected unacceptable government support Clause documents in clause to include documents which do not contain anything resembling a government support clause and these are real examples a published article or manuscript with an acknowledgement of federal funding but not a government support clause an invention disclosure a confirmatory license a receipt from a retail warehouse store with a date and a recipe for chicken paprikash all right maybe those two weren't real examples but you get the idea acceptable government support Clause is an acceptable patent application that contains the following language with the appropriate and accurate information inserted where indicated in place of the parentheticals and I'm gonna read this to you because it's very important quote this invention was made with government support under identify the grant of contract awarded by identify a federal agency NIH in this case the government has certain rights in the invention again this is a fill-in-the-blank exercise and remember the quotation marks surrounding the clause there's no wiggle room adding additional words such as may or might or could have or may have been in part a few they're unacceptable don't be creative this is the language that's required for the government support Clause some unacceptable government support clauses it must contain the grant numbers that match the grant numbers and I Edison if it doesn't match the grant numbers in I Edison we will reject the government support clause for example if Edison has for grant numbers and your government support Clause that you uploaded only has 2 then we will reject the government support clause and conversely if the GSC has four grand numbers and I Edison only has two we will reject your government support clause and if the grant numbers in the government support clause do not match what we have in IEEE Edison we will reject your government support clause okay now we're gonna go into some examples of unacceptable government support clauses notice what's highlighted in red and underlined this invention was made and here it is in part there's that conditional language with government support under grant number hl0 0 2 3 4 5 awarded by the National Institutes of Health the government has certain rights in the invention this is where some creative writing came in and the fill-in-the-blank rule was not followed another example this invention was made in whole or in part traditional language with government support under grant number HL 0 1 2 3 4 5 awarded by the National Institutes of Health and the app alphabet soup foundation the alphabet soup foundation to my knowledge is not a federal agency so we would keep that out the government has a few rights in the invention third this invention may have been made with government support under grant number MH zero zero two three four five awarded by the National Institute for mental health notice that the Institute is inserted where the federal agency should be so it should be the National Institutes of Health rather than the National Institute for mental health a few more examples this invention was made in part with government support under and there's the grant number awarded by the federal government as opposed to the National Institutes of Health the government may have certain rights in the invention again no conditional language the government does have certain rights in the invention not may have the government has certain rights in the invention now we're getting really creative this invention may or may not have been made in whole or in part with partial support under grant number MH two three four five notice them missing leading zeros in the grant number awarded by the National Institute for mental health the government may have rights in the invention and finally this invention could have possibly been invented with or without full or partial support under a grant made by the Department of Transportation the government may or may not have partial rights in the invention now the event the example the last example is the Department of Transportation is the federal agency that would be okay if it also listed the National Institutes of Health and the grant numbers so you get the idea no creative writing finally this is your resource page if you have any questions about government support clauses or any I Edison related issue here's where you go thank you for taking the time to view this webinar and we hope it will be a valuable resource for you

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