Frequently Asked Questions (FAQ)
Question: Who must disclose inventions to the VA?
Answer: Generally, all VA salaried employees and any individual performing research using VA resources must disclose inventions to the VA. Specifically, salaried employees, including individuals working under Intergovernmental Personnel Act assignments (IPAs), without compensation appointees (WOCs) having VA research responsibilities, VA personnel with appointments outside the VA (Dual Appointment Personnel - DAPs) and contractors performing work under Federal Acquisition Rule contracts for the VA, each must disclose their inventions to the VA. For contractors, disclosure of inventions is required for work performed within the terms of agreements with the VA.
Question: If I am a researcher with a paid or unpaid appointment at an outside institution, will disclosure of an invention to my outside institution satisfy my VA reporting requirements?
Answer: No. Disclosing an invention to any entity other than the VA does not satisfy obligations of disclosure to the VA. Under VA regulations and policies all inventions must be disclosed to the VA - VA employees should not assume external institutions or organizations have any responsibility to communicate with the VA concerning inventions.
Question: Who owns and how is ownership established in inventions I create while I am employed or have an appointment with an academic institution, non-profit organization or the federal government?
As an academic or non-profit appointee or employee, ownership of intellectual property rights created by the employee or appointee are generally governed and controlled by the intellectual property policy of that particular entity. Most, if not all, academic institutions and non-profit research organizations have invention reporting requirements. In most cases, by accepting employment or appointment, the inventor agrees to be bound by the entity’s intellectual property policy. As a rule of thumb, researchers should know and understand their employer’s intellectual property policy, so they are not in breach of their obligations. Academic and non-profit intellectual property policies vary – some require that the use of institution resources be demonstrated for ownership, others simply assert ownership over anything their employee/appointee makes.
For individuals required to report inventions to the VA, federal ownership in inventions is established in Presidential Executive Orders (dating back to the 1950’s) and the Code of Federal Regulations (periodically updated). As part of the invention disclosure process, the VA must evaluate the relationship of the invention to the inventor’s VA responsibilities and determine whether VA resources were used in the creation of the invention. If the invention bears a relationship to the inventor’s VA duties and/or VA resources were used in the creation of the invention, the VA has a basis for asserting an ownership interest in an invention.
Question: Can more than one institution or organization I am associated with claim ownership rights in inventions I create?
Answer: Yes. Other organizations may have a basis for independently asserting an ownership right in an invention that the VA also owns. Where patent applications are concerned, each entity has a joint ownership interest in the application.
Question: How are jointly owned inventions managed between institutions?
Answer: The VA Technology Transfer Program negotiates with co-owners of intellectual property to determine matters such as who has the right and obligation to manage patent prosecution, to market the invention, to grant licenses and how licensing royalties are split between the parties. The VA has entered into joint intellectual property management agreements with many (but not all) academic institutions affiliated with the VA. In the past, these agreements were termed Collaborative Technology Administration Agreements (CTAAs). Recently, the Technology Transfer Program has undertaken an effort to re-negotiate the terms of these agreements and to use a new agreement template form going forward. The new agreement form is termed an Invention Management Agreement and is available at the VA Technology Transfer intranet site.
Question: I don’t believe the VA made any contribution to my invention. Am I still required to submit a VA disclosure?
Answer: Yes, employees of the Federal Government are required to disclose all inventions, regardless of any VA contribution. Many employees believe that if an invention is not made during official working hours or without VA resource contribution, a disclosure of the invention is not necessary. Even if the inventor believes VA made no contribution towards an invention, a VA disclosure is still required.
Question: My invention is not patentable. Am I still required to submit a VA disclosure?
Answer: Yes, a disclosure is still necessary. The VA requires that affiliated personnel disclose potentially new and inventive subject matter, regardless of whether the inventor believes the subject matter is patentable. Patentability is a legal inquiry and determining whether something is patentable may not be straightforward for someone who does not have experience with Patent Law. The VA Technology Transfer Program has patent attorneys and works with external counsel to evaluate the patentability of subject matter. Ultimately, the United States Patent and Trademark Office determines patentability and has the authority to grant legal rights in inventions made in the United States. Please contact the VA Technology Transfer Program, if you have questions concerning the patentability of your creations and discoveries.
Question: Can the VA acquire equity in a company under a license agreement as consideration for conveying rights in intellectual property to the company?
Answer: No, the VA cannot hold or acquire equity in a company. However, under the terms of a CTAA or IMA, VA’s University partner may acquire and hold corporate equity on behalf of the VA. VA may receive a cash payment upon liquidation of the equity.
Question: Should inventors refrain from publishing papers or making oral disclosures before a patent application is filed? Why?
Answer: Inventors must take extreme care not to disclose information that would enable someone skilled in the technology to which the invention pertains to make and/or use the invention. Public disclosure could include talks, lectures, poster presentations, newspaper or newsletter interviews, all publications, public use, sale, or offer to sale of the invention. Disclosure of any information prior to filing appropriate paperwork with an authorized patent application Receiving Office under the international Patent Cooperation Treaty destroys the possibility of obtaining foreign patent rights. US patent rights cannot be obtained, if no patent application is filed domestically within one year of disclosure of invention information