Invention and Patent Reporting

The Intellectual Property Law Division is responsible for assisting you in fulfilling the patent provisions of your agreement. Please contact our office if you have any questions regarding the intellectual property obligations of your award.

All Subject Inventions (conceived or first actually reduced to practice in the performance of your agreement) must be reported through the iEdison system at https://www.nist.gov/iedison within two (2) months after the inventor discloses the invention to you or six (6) months after conception or first actual reduction to practice, depending on the terms of your agreement. Invention reporting is required regardless of any patent protection sought.

iEdison accounts may be created by your local iEdison administrator. If your organization does not yet have an iEdison account, please register using the directions at https://www.nist.gov/iedison/iedison-organization-user-guide/getting-started/registering-yourorganization-iedison.

Please note DOE's recent U.S. Manufacturing policy requiring substantial U.S. manufacture, which are likely included in your award terms.

Failure to comply with the terms of your agreement may result in a loss of rights to Subject Inventions, including, but not limited to, forfeiture of retained rights.

Additionally, through iEdison you are required to promptly report the acceptance of any manuscript describing the invention for publication or of any on sale or public use planned for the invention. If your agreement requires prior DOE approval of publications (e.g. large businesses), our office should be contacted for assistance.

 

For assistance with iEdison, please contact the iEdison Administrator at: iedison@nist.gov.

If you have any questions regarding the patent and data provisions of your agreement, please contact our office at (630) 283-7117 or Chicago-IP@science.doe.gov.

FAQs

1. Where do I report an invention to DOE?
DOE requires all awardees to report inventions to DOE through the iEdison System. https://www.nist.gov/iedison
2. Where can I learn more about how to use iEdison?
There are user guides, demonstration videos, and information about upcoming training videos available at www.nist.gov/iedison to help you learn how to use iEdison.
3. What is an invention?
Please consult your award terms. Award terms typically include 37 CFR 401.14(a)(1) which states:
(1) Invention means any invention or discovery which is or may be patentable or otherwise protectable under Title 35 of the United States Code, or any novel variety of plant which is or may be protected under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).
4. Which inventions should be reported and when?
Please consult your award terms. Typically, award terms include 37 CFR 401.14 which require disclosure of each subject invention within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters. 37 CFR 401.14 (a)(2) states:
i.Subject invention means any invention of the contractor conceived or first actually reduced to practice in the performance of work under this contract, provided that in the case of a variety of plant, the date of determination (as defined in section 41(d) of the Plant Variety Protection Act, 7 U.S.C. 2401(d)) must also occur during the period of contract performance.
5. Do I have to report software inventions?
Yes, the term “subject invention” includes " any invention or discovery which is or may be patentable or otherwise protectable under Title 35 of the United States Code”.
6. What information should be included in an invention disclosure?
  • Title
  • Inventor(s)
  • Award number(s)
  • A summary of the invention that is not one-line description.
  • Any publication(s) that you can find the invention information on
  • i.e., magazine, poster, website, etc.
  • Any drawing(s)
7. I have reported filings to USPTO do I report to DOE?
Yes, all filings reported to USPTO need to be reported to DOE through the iEdison System.
8. What is the language needed on the Government Support Clause?
“This invention was made with government support under XXXX awarded by the U.S. Department of Energy. The government has certain rights in the invention.”
9. When is a Government Support Clause needed on a filing?
A Government Support Clause should be included in the specification of all United States patent applications, including Provisional, Non-Provisional, and PCT patent applications.
10. When is a confirmatory license required?
  • A confirmatory license is required when I non-provisional application is filed.
  • You will be able to print the template for the confirmatory license from iEdison once you report your non-provisional in iEdison.
11. Where are the legal requirements for federal funded inventions?
Please consult the patent clause of your award, usually 37 C.F.R. 401.14 or similar.
12. Who do I contact regarding iEdison issues, including registration and entry?
https://www.nist.gov/iedison or iedison@nist.gov
13. Who do I contact for help with reporting a DOE funding invention, patent or utilization report?
Maritza Rodriguez, maritza.rodriguez@science.doe.gov or 630-283-7117
14. Which subject inventions are subject to a Determination of Exceptional Circumstances (DEC) and how should they be reported?
Please consult the applicable award terms. Recent DOE funded inventions will likely be subject to DOE’s U.S. Manufacturing policy and DEC as described at https://www.energy.gov/gc/us-manufacturing. Subject inventions subject to a DEC should be identified in iEdison by selecting “Yes” to the question stating “Is this invention made under a funding agreement subject to a detrimental to have exceptional circumstances. “