As a NCI inventor, there are several key points you need to know:
- Record keeping: before submitting an EIR form, it is important to maintain your laboratory records documenting the conception of your invention and what you have done to reduce it to practice. Laboratory records can be used to prove inventorship. Sometimes, such records may also be required for FDA regulatory affairs. For details, please see Guide for Keeping Laboratory Records.
- Inventor’s assistance in patent process: when a decision of filing a patent application on your invention is made, you need to assist patent attorney at contract law firm with patent filing preparation and occasionally patent prosecution. During this patent process, inventors have a duty of disclosure to disclose to USPTO all information known to them to be material to the patentability of such invention (37 CFR 1.56).
- Inventor’s assistance in licensing agreement process: inventor’s input may be also required for the process of licensing an invention to a commercial entity.
- Invention update: if inventors make additional development of their technology being patented during the patent prosecution, it is important to keep NCI TTC informed of all new developments of such invention. In addition, there are times that a decision of no patent filing is made on invention because it is at very early stage of development and experimental data is not sufficient to support patent claims. In this situation, the already filed EIR can serve a purpose of documenting the stage of invention development; and therefore, an updated EIR will be required to be submitted when further development strongly supports the filing of a patent application.
- Inventor Royalty: inventors will receive royalties on patented invention or patent application when it is licensed to an outside organization. The royalties are calculated by standard NIH formula.
- For inventors leaving NIH: there are certain technology transfer obligations that must be clarified with NCI TTC when NCI inventors are departing from NCI.