Intellectual Property Rights
at Joint NOAA-University Institutes
The rights to any invention made by an employee of a university or other nonprofit research organization (referred to as “University”) at an Institute under the cooperative agreement with NOAA are determined by the Bayh-Dole Act, PL 96-517, as amended, and codified in 35 USC 200 et seq.1 The specific rights and responsibilities are described in more detail in 37 CFR Part 401 and in particular, in the standard patent rights clause in 37 CFR 401.14. However, for the convenience of the parties, the following summary is provided.
- University - The University has the right to own any invention made (conceived or first reduced to practice) by its employees. The University may not assign its rights to a third party without the permission of the Department of Commerce (DOC) unless it is to a patent management organization which may include the University’s Research Foundation. The University’s ownership rights are subject to the Government’s nonexclusive paid-up license.
- Department - If the University elects not to own or does not elect rights or file a patent application within the time limits set forth in the standard patent rights clause, DOC may request an assignment of all rights, which is normally subject to a limited royalty free nonexclusive license for the University. DOC owns any invention made solely by its employees but may license the University in accordance with the procedures in 37 CFR Part 404.
- Inventor - If neither the University nor the Department is interested in owning an invention by a University employee, the University, with the written concurrence of DOC Patent Counsel, may allow the inventor to own the invention subject to certain restrictions as described in 37 CFR 401.9.
- Joint inventions - Inventions made jointly by a University employee and a NOAA employee will be owned jointly by the University and DOC. However, DOC may transfer its rights to the University as authorized by 35 USC 202(e) and 37 CFR 401.10 if the University is willing to patent and license the invention in exchange for a share of “net” royalties based on the number of inventors (e.g., 50-50 if there is one University and DOC employee). The agreement will be prepared by DOC Patent Counsel and may include other provisions, such as a royalty free license to the Government and certain other entities.
- CRADAs - Ordinarily, a University employee will not perform any research for NOAA under a cooperative research and development agreement (CRADA) with a third party. However, if such an employee is permitted to do so while located at a NOAA facility or laboratory, the University’s rights to any invention made by its employee under the CRADA may be limited to recognize the contribution of the third party. In particular, the University may be required to negotiate a license with the third party under which the third party would receive, as a minimum, the same rights as if the invention was made by a Government employee under the CRADA. If this requirement is imposed on a University, NOAA will make an “exceptional circumstances” determination in accordance with 37 CFR 401.3(e), which is appealable under 37 CFR 401.4.
- Reporting-Within 2 months of when its employee reports the invention to the University’s office responsible for patent matters, the University will send the invention disclosure to DOC Patent Counsel (HCB Room 4613, Washington, DC 20230: ph 202-482-8097) and the appropriate DOC program office.
- Electing-Within 2 years of reporting the invention to DOC, the University will notify DOC Patent Counsel of its decision whether or not it wishes to own the invention.
- Filing-Within 1 year of notifying DOC that it wishes to own the invention, the University will file a patent application (either a provisional or non-provisional) and promptly send a copy of the application to DOC Patent Counsel. Any foreign or international application must usually be filed within 10 months of the first filed application in the United States. The University will ensure that any U.S. application contains the required statement of Government support. The University will also promptly send the required confirmatory Government license to DOC Patent Counsel who shall record that license in the PTO. If the University decides to discontinue the prosecution of any patent application or not pay a maintenance fee or defend a reexamination, it shall notify DOC Patent Counsel of that fact in sufficient time (but not less than 30 days) for the Government to respond to any outstanding requirement or letter from a patent office. However, if the University is filing a continuing application, it needs only to notify DOC Patent Counsel of this and provide a copy of the continuing application with the appropriate confirmatory license. Upon issuance of any application, the University will promptly provide a copy of the patent to DOC Patent Counsel.
- Any request for an extension of time should be sent to DOC Patent Counsel in advance of the expiration of the time period. Such request will normally be granted. Of course, the University has other responsibilities and duties set forth in the standard patent rights clause, which have not been described. The University is expected to comply with all the requirements of this clause and 37 CFR Part 401.
Data, Databases and Software
The rights to any work produced or purchased under the cooperative agreement with NOAA are determined by15 CFR 24.34 and paragraph .36 of OMB Circular A-110, which is codified in 15 CFR 14.36. Such works may include data, databases or software.
The University owns any work produced or purchased under the cooperative agreement subject to NOAA’s right without further payment by or cost to NOAA to obtain, reproduce, publish or otherwise use the work or authorize others to receive, reproduce, publish or otherwise use the data for Government purposes. If the work is a database, the University is expected to make it widely available on a non-discriminatory basis.
The University may copyright any work produced under the cooperative agreement subject to NOAA’s royalty-free nonexclusive and irrevocable right to reproduce, publish or otherwise use the work or authorize others to do so for Government purposes. Works jointly authored by NOAA and University employees may be copyrighted but only the part authored by the University employee is protected because, under 17 USC 105, works produced by Government employees are not copyrightable in the United States. If the contributions of the authors cannot be separated, the copyright status of the joint work is questionable. On occasion, NOAA may ask the University to transfer to NOAA its copyright in a particular work when NOAA is undertaking the primary dissemination of the work. Ownership of copyright by the Government through assignment is permitted by 17 USC 105.
1 Rights to intellectual property developed under a cooperative research and development agreement are governed by the Federal Technology Transfer Act, as amended, 15 USC 3710 et seq. Such rights may vary significantly from those described herein. Please consult NOAA GCW or DOC Patent Counsel to ensure that intellectual property rights are being addressed appropriately.