As agencies of U.S. Government, NIH owns the rights to any patent to a discovery made by any NIH employee or personnel working at a NIH facility, or from a discovery that involves use of a NIH facility or use of government equipment. In general, NIH inventors must assign their rights to inventions they develop in their official duty, to the NIH. However, each NIH inventor is recognized as an inventor on any issued patent, and upon assignment of his/her rights to any invention to the NIH, such inventor will receive a share of any royalties obtained through licensing the invention, whether it is patented or not.
NIH employees and staff are required to report inventions in response to Federal laws and encouraged to help facilitate the commercial development of such discoveries, through further research and collaboration and then through patenting and licensing, in order to generate products and services that will benefit the public health.
Reportable inventions include:
- Compounds (or other compositions of matter);
- Methods of use; and
- Unique biological materials with commercial applications such as transgenic mice and cell lines.
A patentable invention must be:
- non-obvious to those trained in that area of research;
- novel; and
- have a practical use.
Timely reporting of discoveries is critical, because patent protection may be lost if an invention is publicly disclosed prior to filing a patent application.
A public disclosure may include:
- Talks, presentations, posters;
- Publications, including titles and abstracts posted on websites;
- Internet postings;
- Graduate student theses, job interviews; and
- Discussions with non-NIH personnel without a Confidential Disclosure Agreement (CDA) in place.