Topic List (click to go to topic):
- Treatment of Intellectual Property: How the CNST treats proprietary information and intellectual property rights.
- Proprietary Versus Non-proprietary Projects: How the Department of Commerce defines proprietary and nonproprietary research and how information from each is shared.
- Types of Facilities Use Agreements: Description of the facilities use agreements the NanoFab uses for proprietary and non-proprietary research.
- Review Process Criteria: Guidance for applicants describing essential information about the review process and criteria, including the scoring.
- NanoFab Access: How to gain access to the NanoFab and to the NIST campus.
- Renewing, Modifying, or Closing NanoFab Projects: Steps for changing or ending a NanoFab project.
Note that this is a complex topic and the following is provided as general information only. We recommend that you consult an attorney if you have questions or concerns about intellectual property or trade secrets.
As a user of a federal facility, it is important to distinguish between proprietary information and intellectual property. Proprietary information is information that is not public knowledge (such as certain financial data, test results, or trade secrets) and that is viewed as the property of the holder. With a few exceptions, information held by the federal government is considered non-proprietary. Proprietary versus non-proprietary projects are discussed in more detail below.
Intellectual property is knowledge or ideas that have commercial value and are protectable under copyright, patent, service mark, trademark, or trade secret laws. Intellectual property includes brand names, discoveries, formulas, inventions, knowledge, registered designs, software, and art, literary, or musical works. Within the NanoFab, patents and patent rights are of the most significance.
A patent is a property right granted by the government to an inventor, who may assign his or her rights to others. Note that the determination of who the inventors are is different than the determination of who has the rights to an invention. An inventor is any person who conceived some or all of the invention; for something invented during the course of a NanoFab project, depending upon the circumstances that may or may not include a NanoFab staff member or other NIST employee. The inventors are not determined by the type of project, only by who was involved in conceiving the invention. The only way to ensure that only a specific set of people may become inventors on a project is to confine all work on that project to that group of people.
NIST does not claim any inherent rights to inventions made in the course of a NanoFab project. The ownership rights will generally be determined by the employment status and any intellectual property assignments agreed to by the inventors. Most employers retain the rights to inventions by their employees. NIST (the federal government) generally retains the rights to inventions made by NIST employees. In addition, both Domestic and Foreign Guest Researchers at NIST, in signing agreements with NIST, grant NIST certain rights to inventions made during their work with NIST (please consult the agreements for specific details).
An external user of the NanoFab who signs a Non-proprietary Facility Use Agreement does not assign any patent rights to NIST. Therefore, unless one of the inventors is a NIST employee or guest researcher, NIST will not have any rights to that invention. The rights will be determined by any intellectual property agreements the inventors may have with their employer(s) or other parties. If a user co-invents something with a NIST employee in the NanoFab, NIST will jointly own that invention, and the sharing of those rights will need to be negotiated between all the rights holders.
An external user of the NanoFab who signs a Non-Collaborative Proprietary Facility Use Agreement also does not assign any patent rights to NIST. Because in signing such an agreement the external users commit to performing all work themselves (without the involvement of NIST employees), there should be no risk of co-inventions with NIST employees that would complicate any patent rights. As discussed below, such an agreement does not preclude having the NanoFab staff assist with non-proprietary process development and tool training, which can be done as part of a separate, non-proprietary project.