�Ӱɴ�ý

The Bayh-Dole Act is a federal statute that created a uniform federal policy for the management of inventions and corresponding patents resulting from government-funded research.  This policy is implemented through a standard clause that is inserted into federal funding agreements with universities.  In general, under this clause, when the �Ӱɴ�ý receives a federal grant, the �Ӱɴ�ý may own the invention made under the award in preference to the government.  In return for �Ӱɴ�ý ownership, the �Ӱɴ�ý must, among other things, grant rights to practice the invention to the federal government, handle licensing in prescribed ways, provide a portion of the royalties to the inventors, and report to the government on inventions.  

Inventions made by faculty and staff are governed by the �Ӱɴ�ý’s Collected Rule and Regulation  (“CRR”) 100.020.  Similar to other universities, CRR 100.020.D.2.(1) requires employees to disclose inventions to the �Ӱɴ�ý.  Further, under CRR 100.020.D.1.a, our institution follows the tradition that an invention is owned by the �Ӱɴ�ý if made within the general scope of the employee’s duties for the �Ӱɴ�ý.  This includes inventions made or developed with the use of �Ӱɴ�ý facilities or financing, and thus includes inventions made through external grants. 

The �Ӱɴ�ý accepts both federal and non-federal grant money under contracts with the funding/sponsoring entity.  These contracts often condition the funding support upon ownership provisions or upon the �Ӱɴ�ý’s handling of intellectual property rights for inventions in a certain manner.  Importantly, changes in 2018 to the Bayh-Dole regulations for federally funded grants require institutions to have a written agreement in which certain employees (1) disclose promptly in writing to personnel identified as responsible for the administration of patent matters (which at the �Ӱɴ�ý is the campus technology transfer office) each invention made under the federal contract, (2) assign to the �Ӱɴ�ý the entire right, title and interest in and to each invention made under the federal contract, and (3) execute all papers necessary to file patent applications on inventions and to establish the government's rights in the inventions.  Thus, the document you are being asked to sign helps ensure that the �Ӱɴ�ý can comply with its obligations to the federal government for such inventions.     

Because employees are already required to disclose and assign inventions, the implementation of the written invention assignment agreement is largely one of timing.

Under the Bayh-Dole Act, institutions receiving federal awards are allowed to retain ownership of inventions upon the meeting of certain conditions. Assignment of the invention to the institution assures it can meet one of the conditions imposed by the Bayh-Dole Act in federally funded research agreements.

The written assignment obligation applies only to inventions that faculty and staff are already required to assign to the �Ӱɴ�ý under CRR 100.020.  This occurs whenever (1) your duties include research or investigation, and the invention arose in the course of such research or investigation and is relevant to the general field of an inquiry to which you have been assigned; or (2) the invention was in a substantial degree made or developed through the use of �Ӱɴ�ý facilities or financing, or on �Ӱɴ�ý time, or through the aid of �Ӱɴ�ý information not available to the public.  

The new Bayh-Dole regulations require persons working on the federal award “to execute all papers necessary to file patent applications on subject inventions and to establish the government's rights in the subject inventions.”  This type of clause is called a “further assurances” clause because it is asking the person signing to do further acts – specifically execute papers – involving the invention patent filing.  These types of documents may include oaths and declarations; however, it is difficult to provide a comprehensive list of documents that may be needed (especially if foreign patents are involved because the paperwork in each foreign country varies).  The written invention assignment agreement contains a further assurances clause (clause (3)) in order to comply with the Bayh-Dole Act. 

These types of clauses are common in invention assignment paperwork.  For example, the �Ӱɴ�ý already includes a further assurances clause in the “Invention Disclosure Form” (a form that has been  approved by the �Ӱɴ�ý’s Patent Committee), which states:  “I hereby assign to The Curators of the �Ӱɴ�ý of Missouri all my rights in the invention disclosed herein, including any domestic and foreign patent applications related thereto, and I agree to sign such documents as may be required for this purpose, including but not limited to an assignment of the invention to the �Ӱɴ�ý in a form that may be recorded, a declaration as to inventorship, and power of attorney.” Likewise, the �Ӱɴ�ý requires inventors to provide further assurances in the patent assignment form that it records at the Patent Office. 

That depends on the nature of the document being requested and the reasons for the inventor refusing to sign the document.  However, it is important to understand all patentees, including the �Ӱɴ�ý, should not submit false or misleading information to the patent office.  If a patentee does so, an infringer can challenge the patent and render it unenforceable under a legal doctrine known as “inequitable conduct.”  Thus, if the �Ӱɴ�ý (typically through its outside patent attorney) asks an inventor to execute a document that the inventor believes is factually false or misleading (for example, the inventor believes the document does not properly state the results of an experiment), the inventor should contact the �Ӱɴ�ý technology transfer office and explain the issues with the document.  The inventor, the technology transfer staff, and outside patent counsel can then work together to correct the document so that it is factually accurate.

The requirement for �Ӱɴ�ý employees to assign their rights in inventions made within the scope of their duties to the �Ӱɴ�ý have been in place in CRR 100.020 for decades.  However, recent changes to the Bayh-Dole regulations now effectively require a written assignment to be in place before conducting any work on a federally funded project.  Thus, this written invention assignment agreement is an effort for �Ӱɴ�ý campuses to remain in compliance with its federally funded contracts and the Bayh-Dole regulations. 

The written invention assignment agreement has the added benefit of avoiding problems other institutions have had with conflicting agreements that come about from faculty consulting agreements, material transfer agreements and non-disclosure agreements with other parties.  Our faculty and staff are active with various collaborators, public and private, including those in industry.  Sometimes those third parties will ask �Ӱɴ�ý employees to sign agreements that could be in conflict with their obligations to the institution or in conflict with the �Ӱɴ�ý’s obligations to sponsors of research.  By having written assignments in place, the �Ӱɴ�ý reduces the problems that might occur when a researcher inadvertently assigns an invention by executing a non-disclosure agreement or consulting agreement that contains competing assignment language.  If the �Ӱɴ�ý does not have a written invention assignment agreement in place, that might result in the �Ӱɴ�ý being unable to meet its obligations to the federal government under the Bayh-Dole Act, losing its rights to an invention, and the inventor losing his or her rights to royalties under �Ӱɴ�ý policies.

No. As the result of a Supreme Court case involving a major research university, most research institutions have followed a similar approach, or are in process of changing their procedures.  See Stanford �Ӱɴ�ý v. Roche Molecular �Ӱɴ�ýs, Inc., 563 U.S. 776 (2011).

As noted above in FAQ 4, the �Ӱɴ�ý owns an invention whenever it is made within the general scope of the employee’s duties.  This includes whenever the invention was in a substantial degree made or developed through the use of �Ӱɴ�ý facilities or financing, on �Ӱɴ�ý time, or through the aid of �Ӱɴ�ý information not available to the public.  If the invention was conceived or first reduced to practice using federal funding, that would constitute �Ӱɴ�ý financing, among other things, such that the �Ӱɴ�ý should own the invention.     

However, in some cases, ownership of an invention is less clear.  If the inventor believes the invention was made outside the general scope of the employee’s duties, the inventor must first disclose the invention to the university, but may request that the Patent Committee determine the respective rights of the �Ӱɴ�ý under CRR 100.020.D.3.  Under CRR 100.020.E.2.c, the Patent Administrator refers the claim to the Patent Committee, where the employee-inventor has the opportunity to appear before the committee to present evidence.  The Patent Committee may also make an independent investigation of the claim.  Based on these findings, the Patent Committee makes an appropriate recommendation in writing to the President of the �Ӱɴ�ý for appropriate action.  Thus, the CRRs provide a mechanism to help resolve invention ownership disputes.  

The �Ӱɴ�ý will evaluate the reasons for refusal on a case-by-case basis.  Because CRR 100.020 forms a part of the employee’s employment contract with the �Ӱɴ�ý, the �Ӱɴ�ý would have contractual remedies available.  Depending on the circumstances, the �Ӱɴ�ý would likely not permit the employee to work on a federally funded project until an appropriate written invention assignment agreement were in place.