Small Business Innovation Research (SBIR) Small Business Technology Transfer (STTR)

Invention Reporting

Overview

In return for the right to retain title to federally-funded inventions, grantees and awardees are required by the Bayh-Dole Act (37 CFR 401) to report government funded inventions to the federal agency who made the award. Section 11.16 of the SBIR and Section 10.6 of the STTR BAAs require awardees to report inventions to the awarding agency within 2 months of the inventor's report. Reporting may be accomplished by submitting paper documentation to the awarding agency or submitting electronically through iEdison at www.iedison.gov External Link for those agencies that participate in iEdison. Subcontractors retain rights to their inventions and have the same reporting responsibilities as prime contractors.

Bayh-Dole Act

Enacted on December 12, 1980 The Patent & Trademark Act (Public Law 96-517) created a uniform patent policy among Federal agencies that fund research. Bayh-Dole enables small businesses and non-profit organizations, including universities, to retain title to materials and products they invent under Federal funding. Subsequent amendments created uniform licensing guidelines and expanded the law's purview to include all Federally-funded contractors (Public Law 98-620) and was extended to large businesses by the 1983 Presidential Memorandum.

The Bayh-Dole Act encourages researchers to patent and market their inventions by guaranteeing first rights to a patent for an invention fully or partially funded by a Federal agency to the awardee organization. To obtain these benefits, however, the inventor and the organization have several reporting requirements that protect the rights of the Government. The government benefits because it must be granted a "nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world" (37 CFR 401.14.6.b). The Government does not get a share of the royalties, but the public does benefit if a useful invention is developed, reaches the market, and becomes accessible to those who need it.

Contractor Responsibilities:

  • Invention disclosure within 2-months of the inventor's initial report to the organization. Inventions should be reported in writing prior to publication or presentation at any open meeting, since failure to do so may result in loss of the rights to the awardee organization, inventor, and the Federal government in the invention.
  • Election or Non-election of title to invention within 2-years period of the disclosure. The awardee has two years to determine if it wants to take title and file a patent application. If the awardee does not choose to elect title, it must notify the Federal agency which then has the option to take title. The Government evaluates the invention to determine whether patenting and further development is in the public interest.
  • Patent application -- within one-year of election of title or publication, whichever is earlier, provision to the Federal agency of the confirmatory license and the page of the patent application that contains the Federal support clause.
  • Issued patent -- provision to the Federal agency of the patent number and issue date at time of issuance of the patent.
  • Annual utilization report -- every year subsequent to filing a patent.

IEdison and Participating Federal Agencies

iEdison (which stands for Interagency Edison) provides a single interface for government grantees and contractors to report details of inventions and patents for a number of federal agencies. In order for SBIR/STTR awardees to report inventions and patents through iEdison, their awarding agency must be a participating federal agency within the iEdison system. See the iEdison Agency Contact List External Link for a complete list of participating agencies and points of contact.

How to Report Invention and Patent Information as a SBIR/STTR Awardee

  1. Check if the agency supporting the SBIR/STTR effort that resulted in an invention or patent is one of the participating federal agencies, listed on the right side of www.iedison.gov External Link. If it is not one of the participating agencies, contact the technical monitor of your contract and ask for that organization's procedures for submitting paper documentation for invention reporting. Federal agencies have the responsibility to provide guidance on invention reporting to awardees to ensure compliance with the law.
  2. If the agency is listed on the iEdison website, then proceed with first registering as a user and then reporting your invention. For assistance registering your firm or reporting your invention, refer to the iEdison help system or contact Edison@nih.gov External Link.