August 24 -- The National Institute of Standards and Technology (NIST), Department of Commerce, invites public comments by October 24, 2021 regarding the redesign of the iEdison portal for federally-funded inventions under the Bayh-Dole Act.
The Bayh-Dole Act (35 U.S.C. 18) and its implementing regulations (37 CFR 401) allow for recipients of federal research funding (Contractors) to retain ownership of inventions developed under federal funding agreements. In exchange, the government retains certain rights to the invention, including a world-wide right to use by or on behalf of the U.S. government. The law also requires the Contractor to obtain permission for certain actions and fulfill reporting requirements including:
a. Initial reporting of invention.
b. Decision to retain title to invention.
c. Filing of patent protection.
d. Evidence of government support clause within patents.
e. Submission of a license confirming the government's rights.
f. Notice if the Contractor is going to discontinue the pursuit or continuance of patent protection.
g. Information related to the development and utilization of invention.
h. Permission to assign to a third party; and
i. Permission to waive domestic manufacturing requirements.
This information is used for a variety of reasons. It allows the government to identify technologies to which the government has rights to use without additional payment or licensing. This acts as a time and cost-saving mechanism to avoid unnecessary negotiating and payment. It also provides data for calculation of return on investment (ROI) from federal funding and identifies successful research programs. Thirdly, it allows the government the opportunity to timely protect inventions which the Contractor declines title or discontinues patent protection.
Historically, the National Institutes of Health (NIH) has collected this information via their on-line portal, iEdison; however, the responsibility for this data collection will be taken over by NIST. Agencies that do not register with iEdison are required to collect this information independently.
During NIST’s stakeholder discussions as a part of its Return on Investment (ROI) initiative, many comments were received discussing iEdison, including its difficulty to use and need for updating and modernization. For additional information on this topic, see Strategy 4 in the NIST green paper "Return on Investment Initiative for Unleashing American Innovation," April 2019 (https://nvlpubs.nist.gov/nistpubs/SpecialPublications/NIST.SP.1234.pdf
). After discussion of these comments, NIST and NIH mutually agreed for the system to be transferred to NIST particularly as NIST has been delegated authority over Bayh-Dole implementing regulations.
NIST indicates that changes that can be expected in the new iEdison system include:
Updates to reflect changes implemented in the 2018 regulations
Ability to communicate with the agency within the invention record in iEdison (thus, minimizing the use of email and creating a record of communications within the system)
Additional extension request capability (including domestic manufacturing waiver requests and assignment requests, allowing for agencies and organizations to better track and report on their requests)
Ability to indicate when an inventor is a federal employee
Integrations with USPTO and USASpending.gov so that certain information can be validated or updated
Current iEdison site at NIH: https://public.era.nih.gov/iedison/public/login.do
FR notice inviting public comment: https://www.federalregister.gov/documents/2021/08/24/2021-18196/agency-information-collection-activities-submission-to-the-office-of-management-and-budget-omb-for
Point of contact: Bethany Loftin, Interagency and iEdison Specialist, National Institute of Standards and Technology 301-975-0496, email@example.com