A: The Bayh-Dole regulations can be found at 37 CFR Part 401. The “standard patent rights clause” of the Bayh-Dole regulations which is incorporated into federal funding agreements can be found at 37 CFR § 401.14.
A: There are user guides, demonstration videos, and information about upcoming training videos available at www.nist.gov/iedison to help you learn how to use iEdison.
A: Agencies who are participating or have participated in iEdison are listed on the Agency Contacts List available HERE. Agencies who are not currently participating in iEdison are marked as "Inactive". If an agency is inactive, your previously reported inventions reported to that agency will remain in iEdison. However, you will be unable to report any new subject inventions or patents to that agency in Edison and you will be unable to update any existing iEdison records (they will be in read-only status). If one or all of your funding agencies are not active in iEdison, you should contact that agency(ies) to determine how they want you to fulfill your Bayh-Dole related reporting obligations.
A: Currently, your iEdison notifications from an inactive agency will remain. NIST is considering how to proceed with notifications from agencies who will be inactive for an extended period of time.
A: You should contact your funding agency to determine the manner in which they want their forms, such as Final Invention Statements or DD882s, reported.
A: Because all iEdison reporting begins with the reporting of a subject invention, there is not a way to report to funding agencies that no inventions or patents have resulted from a specific funding award within iEdison. However, you can either search for inventions and/or patents by award number in iEdison and can run a report on the inventions and/or patents entered in iEdison by award number. You should talk to your funding agency regarding how they should submit “negative” or “null” reports, indicating there were no inventions/patents. They may (though they are not required to) allow an iEdison screenshot or report indicating there were no inventions/patents reported as supporting evidence.
A: iEdison does have an API functionality available for use. If your IP database utilizes this API, then you should be able to do a lot of your iEdison reporting through the API. Talk to your IP database about this function if you are unsure. Additional information about setting up an API with iEdison are available HERE.
A: If a file is too large, it is recommended that you first try to save it on your device as a “Reduced Size PDF.” If it is still more than 25MB, you can break it up into two documents and upload one under the original destination (invention disclosure, govt. support clause, etc.) with a note that the remainder is uploaded under “other documents,” and then upload the remainder in “other documents.”
A: You can enter a “%” in the search fields to act as a wildcard.
A: iEdison notifications are courtesy reminders of things that the iEdison system has flagged as being due, missing, rejected, etc. based on the standard Bayh-Dole regulations and circumstances based on what has been entered in iEdison. They should not be treated as a substitute for reviewing and following the Bayh-Dole regulations for subject inventions. iEdison notifications are just a tool, and notifications (or lack thereof) should not be considered an affirmative statement from the funding agency on the state of your Bayh-Dole compliance.
A: All existing organization profiles (and the active user accounts under each organization) were migrated into the iEdison system. If you are not sure if your organization has an iEdison account, email the iEdison Administrator at iedison [at] nist.gov.
A: Login to iEdison go to www.iedison.gov or www.nist.gov/iedison and click the “Login to iEdison” button. This will forward you to a Warning Notice with required OMB and Privacy statements, and you should click “continue.” Then, you will be redirected to Login.gov. After logging in to Login.gov (you are required to have a Login.gov account using the same email address that is associated with your iEdison account), you will be redirected back into the iEdison system.
A: If you have more than one iEdison account associated with your email address, then you will login normally. After logging in a pop-up box will appear asking what account you want to work under. Click the organization account you want to work under. If at anytime you want to work under a different organization account, go to the Settings Menu icon in the top right corner and click “Change Role.” The pop-up box will show up again and you click the next organization account you want to work under.
A: Yes, you can have multiple administrators for an organization, though it is recommended that you use discretion in providing this level of access, as the administrator can invite new users and update your organization profile.
A: Yes, you can use an existing Login.gov account for iEdison so long as it matches the email address used for your iEdison account.
A: The Bayh-Dole regulations address subcontracts under 37 CFR 401.14(g). This states that contractors will include their Bayh-Dole terms in all subcontracts. Additionally, it states “The subcontractor will retain all rights provided for the contractor in this clause, and the contractor will not, as part of the consideration for awarding the subcontract, obtain rights in the subcontractor's subject inventions.” Accordingly, if a subject invention is reported to the subcontractor, the subcontractor should report it in iEdison. If inventors from both the prime contractor and the subcontractor are considered inventors, resulting in joint ownership of a subject invention, it’s reporting should be treated like any other joint invention (see below).
A: Each subject invention should only be reported in iEdison once. If a subject invention is jointly owned with one or more other organizations, the organization who received the federal funding award should report in iEdison. If two or more joint owners received federal funding that resulted in the subject invention, then the joint owners who received federal funding should decide who will take the lead in iEdison reporting, but only one joint owner should report in iEdison. It is recommended that the reporting organization provide the non-reporting joint owners with view access to the record by adding them to the “Organization Code for Other Organizations to View Invention and Related Patents” data field.
A: Because each patent application number can only be entered into iEdison once, it is not possible for both owners to report the resulting patents in iEdison, and therefore one owner would always have notifications. Therefore, if two or more owners reported the subject invention in iEdison, the owners should decide who will maintain the iEdison reporting. They should first ensure that both Invention Reports reflect the same information and funding. Then, the non-reporting organization owner(s) should request to have any previously reported child inventions and patents associated with the subject invention transferred to the reporting organization (using the Request function in the Invention and/or Patent Reports). Finally, the non-reporting organization should request to have any duplicate Reports voided (also using the Request function in the Invention and/or Patent Reports).
A: If you invention says “barred” this means that you indicated in the iEdison record (as required under the regulations) that there has been a date of first publication, on sale, or public use of this subject invention, but you have not entered a patent application that was filed within one year of that first publication, on sale, or public use. Accordingly, under U.S. Patent Law, you are “barred” from receiving patent protection. Thus, the invention report in iEdison is also “barred” as you cannot proceed with patent protection for this subject invention.
A: If you are “barred”, you can “lift” the bar, by entering a patent application filed within one year of the date you entered in the “First Publication/Sale/Public Use Date” data field. If you have not filed a patent application within this time frame, there is no uniform way across the agencies to clear this notification at this time. However, if you have not filed a patent application within the required time frame, but you need to correct previously rejected documentation in iEdison (such as a government support clause), you can contact the funding agency to temporarily change the status of the invention so you can make a change to the record. Once re-set by the agency, the previous status will remain for one week before automatically becoming “barred” again.
A: If you don’t have an invention disclosure form for this invention, you can create a coversheet with the basic information about that patent (Docket Number, Title, Inventors, Funding, and Publication Information) and attach that to a sufficient description of the invention. The document uploaded just need to have information that matches what you entered in iEdison and fulfill the reporting requirements under 37 CFR § 401.14(c)(1).
A: The “Invention Report Number” is a unique identifying number assigned by iEdison after you officially submit an Invention Report. This number is generally in the following format ########-##-####. The first set of numbers is a unique code for your organization in iEdison, the second is the last two digits of the year in which the subject invention was disclosed to your office, and the last four are a sequential number based on the order it was reported in iEdison.
A: “Invention Docket Number” and “Patent Docket Number” are not required fields in iEdison, although they are HIGHLY recommended. If you leave either of these fields blank, iEdison will auto-populate a number for you. For an Invention Report, this auto-populated number is usually the last two sections of your Invention Report Number (##-####), and for a Patent Report, it us usually the last two sections of the Invention Report Number and then another sequential number (##-####-##).
A: A DRAFT Invention Report is a new feature in iEdison. It allows an organization to start creating an Invention Report even if they are not ready to submit it to the funding agency. As long as an “Invention Title” has been entered, an organization can save a DRAFT Invention Report, leave the system, gather additional information, and come back to complete and submit the report to the funding agency. A DRAFT report does NOT report your subject invention to the funding agency until it is officially submitted by clicking “Submit Invention Report” and confirmed.
A: Everyone within your organization can search for and view existing DRAFT Invention Reports in iEdison.
A: Go to the Sidebar Main Menu and select “Invention” under “Search/Manage Report”. Then in the search screen you can search for the DRAFT by Title or other field that you have completed in the DRAFT Invention Report. You can also search for all DRAFT Invention Reports, by select “Draft” in the “Title Election” field of the search screen. All DRAFT Invention Reports will list an Invention Report Number-like number that starts with a “D.”
A: Yes, listing an inventor as a federal employee in iEdison does not necessarily notify that agency. You need to contact them outside of iEdison as well to inform them that you might have a jointly owned invention.
A: The Primary Agency in iEdison designates the agency that is going to review your records. You must have a Primary Agency that participates in iEdison designated in each Invention Report before you can submit it in iEdison. If your subject invention was funded by multiple funding agreements from different agencies, you can choose which agency is the Primary Agency in iEdison. NOTE: “Other” cannot be selected as the Primary Agency in iEdison.
A: If your funding agreement was awarded after May 14, 2018, then the 2018 regulations apply. If it was awarded before May 14, 2018, the previous regulations may apply unless the terms and conditions of your award were updated by the funding agency to include the new regulations after May 14, 2018. If you aren’t sure if/when your funding agency updated the terms and conditions of your award, contact your funding agency.
A: iEdison will auto-select “2018” as the applicable regulation for all new inventions entered into the iEdison system and “original” for all inventions that were pulled into the iEdison system when it was transferred from NIH. If the regulation auto-selected by iEdison is incorrect for this Invention, you can change the regulation selected in iEdison yourself until you have reported your initial patent application. If you have already reported your initial patent application in iEdison and you want to change which regulations apply, contact your Primary Funding Agency and ask them to make this change to your invention report.
A: The “Title Election Date” in iEdison indicates the date you informed the funding agency of your title election decision. Allowing someone to back date this would be inaccurate unless you actually informed that agency on that date. If you did, in fact, notify the funding agency in writing prior to the date auto-populated by iEdison, then you should ask your Primary Funding Agency to change the “Title Election Date” in iEdison to reflect the date you informed the funding agency in writing of your title election decision.
A: You will receive a notification (Notification No. 10000) when a new communication is received. Additionally, under “My Profile” (which you can access through the Sidebar Main Menu), you can select to receive real-time emails when a new Discussion Comment has been received by your organization. This is done in the “Email Preferences” under “My Profile” – just ensure the box next to “New comment has been posted to invention discussion” is selected.
A: Discussions stay in the record as long as the Invention Report exists in iEdison.
A: No, all discussions must be entered in the Invention Report. If you want to start a discussion with the Primary Funding Agency about a Patent Report, send the discussion under the Invention Report and reference the “Patent Docket Number” in the Discussion Subject.
A: If the request was granted or denied in the previous iEdison system, it should show up in the Requests section of your Invention Report. However, if the request was submitted, but not answered, you should re-submit the request in the new iEdison system.
A: This is referred to as a “Non-Provisional Patent Extension” in iEdison. See the user guide instructions HERE or see the Demonstration Video on this topic.
A: When a patent application or patent reported into iEdison is published, then iEdison’s integration with the USPTO will auto-populate and auto-update the following information:
This information will update for 3 years from the filing date for provisional applications and 20 years from the filing date for non-provisional applications.
A: This is done by changing the “Patent Status” of the Patent Report from “Institution Retains Rights” to “Abandoned/Intent to Abandon.”
A: Yes. You just need to add both provisional applications as parents to the PCT or non-provisional. For information on how to link patents see the iEdison user guide HERE or our Demonstration Video on Linking Patents.
A: In this case, you should link the subsequent Invention Report(s) as child reports to the first reported subject invention (the “parent” report). For information on how to link parent-child inventions see the iEdison user guide HERE or our Demonstration Video on Parent-Child Inventions.
A: A Non-Provisional Patent Extension is an extension to the 10 month requirement under the 2018 Bayh-Dole regulations to file a non-provisional application after the filing of your provisional application if the provisional was your initial patent application.
A: If you have been granted a Non-Provisional Patent Extension, then you can file as many provisionals as you wish as long as you file a non-provisional application by the end of your extension period. If you need additional time beyond the original amount of time requested under your Non-Provisional Patent Extension, you will need to submit a second extension to get additional time.
A: Yes. A "patent application" as to which reporting requirements apply under the rule continues to include a provisional or nonprovisional U.S. national application for patent as defined in 37 CFR 1.9 (a)(2) and (a)(3), respectively, or an application for patent in a foreign country or in an international patent office. 37 CFR § 401.2(m).
A: Foreign patent applications are reported in the Foreign Filings section of the most similar corresponding PCT or U.S. Patent Report (normally the PCT Patent Report). You need only report the country, filing date, and status.
A: A confirmatory license is required for your first non-provisional application in iEdison.
A: As evidence of your government support clause, you can upload any of the following:
A: These notifications are handled on a case-by-case basis by the Primary Funding Agency. You should contact your Primary Funding Agency to ask how you should address these notifications.
A: Under the Bayh-Dole regulations a government support clause must be included “within the specification of any United States patent applications and any patent issuing thereon covering a subject invention[.]” 37 CFR § 401.14(f)(4).
A: Yes. You do not have to elect title in iEdison prior to the filing of a patent application. However, your title election decision must be entered in iEdison within the timeframe outlined in the Bayh-Dole regulations at 37 CFR 401 § (c)(2).
A: An international application filed under the Patent Cooperation Treaty as defined in 37 CFR 1.9(b) which designates the United States would satisfy the requirement under 37 CFR 401.14(c)(3) to file a corresponding non-provisional application, where the contractor had filed a provisional application as its initial patent application.
A: Under the Bayh-Dole Act, “Federal agencies are authorized to withhold from disclosure to the public information disclosing any invention in which the Federal Government owns or may own a right, title, or interest (including a nonexclusive license) for a reasonable time in order for a patent application to be filed. Furthermore, Federal agencies shall not be required to release copies of any document which is part of an application for patent filed with the United States Patent and Trademark Office or with any foreign patent office.” 35 USC § 205. Additionally, “any information on utilization or efforts at obtaining utilization obtained as part of a proceeding under section 203 of this chapter shall be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5.” 35 USC § 202(c)(5). However, communications between an agency and contractor may be subject to FOIA, and therefore, a report was developed to allow agencies to easily export discussions entered in an Invention Report to provide to their FOIA officers to determine whether or not they are required to be disclosed under a FOIA request.
A: Yes. This can be done by building a custom report in iEdison. For instructions see the iEdison user guide HERE.