Patent Policy for Rights in Inventions Made by Government Employees
Please note: The official source of the content on this page are 37 C.F.R. and 38 C.F.R.
PATENTS
Government and Employee Rights and Responsibilities
Under Executive Order 10096 the Government has the right to obtain the entire right, title and interest in and to all inventions made by any Government employee (1) during working hours, or (2) with a contribution by the Government of facilities, equipment, materials, funds, or information, or of time or services of other Government employees on official duty, or (3) which bear a direct relation to or are made in consequence of the official duties of the inventor. See also 37 C.F.R. §501.6 and Kaplan v. Corcoran, et al.
In the case of a determination under this section,
the Agency shall promptly provide the employee with a signed and dated statement
of its determination and the reasons therefor, and a copy of 37 C.F.R. part
501.
37 C.F.R. §501.7.
INVENTIONS BY EMPLOYEES
I. Definitions:
For purposes of these regulations concerning inventions by employees of the VA:
- the term invention includes any art, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States. 38 C.F.R. §1.651.
- the term employee or Government employee means any officer or employee, civilian or military, of the VA. Part-time, without compensation (WOC) employees and part-time consultants are included. 38 C.F.R. §1.651.
II. Delegation of Authority:
The determination of rights to an invention as between the Government and the employee where there is no cooperative research and development agreement (CRADA) shall be made by the General Counsel, Deputy General Counsel, or the Assistant General Counsel for Professional Staff Group IV. 38 C.F.R. § 1.653 and 1.657.
Any invention owned by the Government under the criteria set forth in 37 C.F.R. §501.6 should be protected by an application for a domestic patent and other necessary documents executed by the employee inventor prepared by or through the General Counsel, Deputy General Counsel, or the Assistant General Counsel for Professional Staff Group IV. 38 C.F.R. §1.654. The VA may also elect to use outside counsel (or other means to be identified) if it is determined appropriate.
If it is determined that the employee inventor is entitled to full ownership under 37 C.F.R. §501.6, subject to a nonexclusive, irrevocable, royalty-free license in the Government, it shall be the duty of the employee inventor to notify the Office of the General Counsel of the status of the patent application, including the patent application number so that the VA may protect the interests reserved to the Government. 38 C.F.R. §1.655.
III. Information to be Submitted by the Inventor:
In the case of an invention or believed invention, the inventor will prepare a statement for submission to his/her supervisor. It will consist of two (2) parts:
(1.) a disclosure of the invention sufficient to permit the preparation of a patent applicant.
(2.) a statement setting forth the circumstances attending the making of the invention. It will include the full name and address of the inventor; the grade and title of his/her position; whether full time or part time; his/her duties at the time the invention was made; the facts pertinent to a determination whether the invention bore a direct relation to or was made in consequence of such official duties; whether there was, and if so the terms, of any special agreement or understanding with respect to use or manufacture of the invention; date of the invention, when and where it was conceived, constructed, and tested; whether it was made entirely during working hours; whether and to what extent there was a contribution by the Government of any of the following: facilities, equipment, materials or supplies, funds, information, time or services of other Government employees on duty. 38 C.F.R. §1.656.
The inventor's supervisor shall review the employee inventor's statement. [The file will then be submitted through the Program Manager, R&D Technology Transfer Section (122)] to the General Counsel. 38 C.F.R. §1.656.
APPEAL
Any Government employee who is aggrieved by an agency determination may obtain a review of the determination by filing, within 30 days, after receiving notice of such determination, two copies of an appeal with the Under Secretary of Commerce for Technology, c/o The Office of Federal Technology, Room 4837, United States Department of Commerce, Washington, DC 20230.
On receipt of a copy of an appeal, the agency shall furnish both the Under Secretary of Commerce for Technology and the inventor with a copy of a report containing the following information about the invention involved in the appeal:
(1.) a copy of the agency's statement specified in 501.7(c);
(2.) a description of the invention in sufficient detail to identify the invention and show its relationship to the employee's duties and work assignments;
(3.) the name of the employee and employment status, including a statement of official duties and responsibilities at the time the invention was made, and
(4.) a detailed statement of the points of dispute or controversy, copies of any statements or written arguments filed with the agency, and of any other relevant evidence that the agency considered in making its determination. 37 C.F.R. §501.8.