iEdison Feedback Session FAQs (June 22, 2020)

IP Software Integration

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Q: Will IP databases be able to upload information into Sophia so that a lot of the information does not have to be manually entered?

A: IP databases will be able to connect with iEdison via an API so that they can upload information into the iEdison system. 

Q: When will we learn about API's for communicating with IP databases?

A: We will be scheduling a meeting with NIST developers and the IP software providers to discuss API considerations in the coming weeks.

Policy Related Invention Questions

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Q: How will BD & related policies be updated to address inventions which are unpatented or patenting doesn't make business sense (software, etc.)?

A: There are no current plans to change these definitions in the regulations.  If an invention is or may be patentable, it falls within the definition of Subject Invention and must be reported into iEdison. 

Q: Because of the nature of technology transfer, many research disclosures are early.  Will the new iEdison accommodate these early disclosures? 

A: If an early disclosure is too vague and early stage to determine if it is an invention, then it is too early to be reported into iEdison.  Once the technology transfer office is informed of enough information to substantiate an invention, then it should be reported into iEdison.

iEdison Invention Questions

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Q: Will there be a mechanism to delete a record if it has been created in error or will that have to be submitted through NIST for formal deletion?

A: You will be able to request to "void" invention or patent records within the iEdison system in the “Request” section of each record.

Q: When you add an inventor, is the information saved for future entries/inventions?

A: Inventor information will auto-populate from invention records to patent records.  However, we have not implemented a mechanism to auto-populate previously entered inventors on subsequent inventions.

Q: You mentioned the inventor name field will include an email address field. What is the purpose of that?  Also, will the email be required for the inventors?

A: The inventor email filled is not a required field, but we envision this field being used to contact inventor in case of an inventor waiver request or to contact co-owner inventors who are federal employees, if needed.

Q: We are under 60-day obligation to report invention disclosures. Is there talk on ways to differentiate inventions ready for submission versus not?

A: We are looking into the ability to save drafts of invention records without submitting to the agencies.  However, only the record will still need to be submitted to the agency within 60 days of the disclosure as required by the regulations.

Q: If you are able to add the feature where the system checks if a grant format is valid, can it also check the grant dates to see whether it falls under "new" BD?

A: This is not built into the current design, but we are looking into whether this might be possible and the implications of adding this feature.

Q: If a disclosure document has a public disclosure date agency sets a bar date. However, the inventors have no idea if the disclosure is enabling or not. We do not think the agency should set a bar date.

A: The institution should make the determination of whether they consider a publication to be an enabling public disclosure.  If an institution discovers after entering a publication date in iEdison that it was not enabling, they should contact the agency to explain that it was determined to not be enabling and the agency will remove the publication date from iEdison.

iEdison Patent Questions

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Q: Will there be an option to indicate Provisional or PCT status as Expired, as opposed to Abandoned, which implies an express abandonment.

A: We are still discussing the statuses for patents, so the ultimate decision has not been finalized.

Q: Will we be able to add multiple Provisionals and PCTs to a single Invention Record?

A: Yes. You will be able to add multiple provisionals and/or PCTs, as needed, into one invention record.

Q: What happens if the inventors don't match between an invention report and a patent report?

A: Inventors will be pre-populated but if inventors need to be added or removed, this can be done within the patent record.

Q: Can we list a CIP app under 2 inventions? The base tech will contain the original app, but a new invention record will contain the new info for the CIP app.

A: If the new invention record associated with the CIP contains the same funding as the original invention, then it can be linked as a child invention record to the original invention (the parent invention record) and the CIP will be associated with both inventions.  If the funding is different, the invention should be added as a separate invention and the CIP entered under the new invention record, separate from the original invention and the prior filings of the patent family. 

Q: Will the new system auto generate confirmatory licenses? Is there a way they can be generated and approved through the system?

A: You will still be able to generate Confirmatory Licenses within the iEdison system.  However, routing them to someone for signature within the system will likely not be available in the initial roll-out of the redesign.  However, we are considering similar features for later versions of the iEdison system.

Q: In the past, some agencies had their own preferred GSC language. Are all agencies moving toward the standard language now?

A: Using the language prescribed in the regulations at 37 CFR 401.14(f)(4) should be accepted by all agencies. 

Notifications and Rejections

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Q: Will there be a feature for iEdison to send a reminder email when a due date is approaching?  Will users be able to customize how to receive notifications and alerts (via weekly emails, digest notices, or within system only)?

A: While we are still working on this particular feature, we do plan to implement some opt-in/opt-out options regarding when and how to be notified of certain actions or notifications.

Q: Could you give the agencies a drop-down on rejection reasons, with another space for full description?  It might stimulate a better explanation.

A: We are considering building this feature into the system.

Q: Will there be a feature where more than one person can get the reminders?

A: While we are still working on this particular feature, we do plan to implement more flexibility by allowing individuals to opt-in/opt-out of receiving certain notifications.

Q: Sometimes a notification is a reminder rather than an error and cannot be completed if you are waiving, i.e. conversion.  Will that be taken into consideration?

A: Like the current system notifications will have a due date and can be separated into those notifications which are not yet due versus those that are due or overdue.

Q: Will users be notified when a particular notification is cleared, such as an extension being granted or a document accepted?

A: We are still working on this particularly feature, but it is one of the opt-in/opt-out options discussed above that we are considering.

Accounts and Access

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Q: Do users have log in based on their role. Such as a user for the institution versus a user for just inputting records or do all users have the same access?

A: There will be at least three tiers of access for institutions:  admin, user, and view only.

Q: For Universities with more than one campus, will we be able to link our campus accounts together? For the account, will it be at campus-level or institution?

A: Each institution/campus that registers for iEdison will have one account.  However, a user can be associated with multiple institutions/campuses, so if another institution/campus within your university system wants to give you access to their account, this can be accomplished.

Miscellaneous

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Q: Can all of the reports be exported to Excel?

A: Yes

Q: Institutions should only be required to complete utilization reports upon licensing, not for every invention and they should only have to do only one report for fully paid up licenses.

A: Pursuant to the current regulations, the individual funding agencies determine if and when they request utilization reports on subject inventions. Different agencies may need varying data points for metrics, so they are allowed to set their own utilization report requirements.