Transfer of Rights to the Inventor
Subject to certain conditions set forth by the regulations appearing in 37 CFR 401.9, employee-inventors may request to retain title to their inventions to which the grantee/contractor does not elect to retain title. USDA requires that an inventor certification be completed by the inventor(s) before NIFA will consider an inventor's request to retain title to an invention. This is to ensure that inventors who are permitted to retain title to inventions made with funding from NIFA understand their obligations to the government to file for patent protection and carry out other responsibilities set forth by 37 CFR 401.9 and to initiate USDA consultation with the grantee/contractor. It is USDA policy that its approval of the inventor's request to retain title is equivalent in effect 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 to the government after one year unless an extension of time is requested from NIFA following the procedures on NIFA’ Intellectual Property web page.
Inventors who wish to retain title to their invention(s) should complete the inventor certification. The responsible official at the grantee/contractor organization must 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/NIFA at (202) 720-7714. Only a fully completed form, including both the inventors and the institutional authorizing official’s signature, will be accepted by NIFA for review and action. Review of a transfer of rights to the inventor request can take several months. Both the inventor and the grantee/contractor will be notified in writing regarding NIFA’ decision on the request.
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 the Adobe Web site.
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