To Disclose or Not to Disclose? That is not the question!
January 11, 2021
Our university researchers, students and staff are innately innovative. There are always solutions being created to problems that arise, especially when dealing with novel research or Alaska’s unique work environment. Those innovations are often valuable, not only because they solve an immediate problem, but they could change the way others do research by incorporating your methods or technology. Amazing, right? Your laboratory contraption, biomedical drug, or computer program could even be a world-changer.
Whether to disclose or not to disclose your innovation isn’t really a question when it comes to federal grants and funding. Prior to 1980, universities and small businesses that produced intellectual property under federal grants automatically gave the rights to those innovations to the federal government. Just like that, your team’s innovation was now owned by the government.
Thanks to the Bayh-Dole Act, universities, businesses and nonprofit organizations that receive funding under a federal government agreement (e.g., a grant, contract, or cooperative agreement) can retain title to inventions or technology if certain disclosure obligations are met.
OK, then, what should be disclosed? Any invention or technology conceived or brought to physical fruition with the assistance of the federal funding (whether or not a patent was applied for by the university or company) is subject to the Bayh-Dole Act and should be disclosed.
Compliance with Bayh-Dole first starts with disclosure to personnel responsible for patent matters at the organization receiving federal funds (e.g., at UAF, it is the Office of Intellectual Property & Commercialization). The standard funding agreement further obligates a grantee or contractor to disclose each invention developed using government funds to the funding agency within two months after such disclosure by an inventor in writing to patent personnel.
iEdison, a government-established electronic system, was created for grantees and contractors to report inventions arising from federal funding and to make compliance with other ongoing reporting obligations much easier.
Disclosure through iEdison includes submission of a written description of the invention, i.e., an “Invention Disclosure Document,” and an “Invention Report Date,” which is defined as the “date that the inventor discloses the subject invention in writing to the recipient institution.” A disclosure report further includes the following: the applicable grant number(s), the inventor(s) and any publication, on sale or public use of the invention.
If a manuscript describing the invention was submitted and/or accepted for publication, it must also be reported. After disclosure, the institution must also notify the agency of the acceptance of any manuscript describing the invention for publication or any on sale or public use planned by the recipient.
The benefits of disclosing are numerous and potentially monetary. There are, however, consequences if you do not disclose. These can include loss of invention title rights, patent rights or grant renewal.
So, there’s really no question when it comes to disclosure. A university or business receiving federal funds is obligated to report subject inventions to the funding agency. OIPC is here not only to receive UAF disclosures and report them to the funding agency so that you remain in compliance, but we also serve as a resource to protect, license or commercialize your discoveries.
Please don't hesitate to contact us at UAF-OIPC@alaska.edu.