This is an update regarding changes to the Bayh-Dole regulations governing the election of title to subject inventions arising from federally funded research and is the result of conversations with the University Senate Research Committee on alternatives to the approach introduced by the University in August 2018.
The conversations with the Senate Research Committee are now complete, and the University is returning to a set of IP assignment options that closely resemble previous options while being compliant with the federal government’s May 2018 Bayh-Dole revisions. Specifically:
DO I NEED TO SIGN A NEW FORM IF I SIGNED:
No, provided the form is on file at the Innovation Institute.
No, provided the form is on file at the Innovation Institute.
THE INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT OFFERED AFTER AUGUST 1, 2018?
No, provided the form is on file at the Innovation Institute. However, you may replace that form with an Option 1, Option2, or Option 3 Bayh-Dole.
A PRE-2014 ASSIGNMENT FORM?
No, provided the form is on file at the Innovation Institute.
Yes.If you signed the Option 3 IP Acknowledgment form offered from October 2014 to August 2018, or you have no IP assignment on file, you need to sign Option 1, Option 2, or Option 3 Bayh-Dole (see FAQ 15 below).
BACKGROUND ON BAYH-DOLE REGULATIONS
The Bayh-Dole regulations implement the Bayh-Dole Act, passed in 1980 to allow non-profit organizations or small business firms receiving federal research funding to elect legal title to inventions created through use of federal funding. Prior to 1980, the federal government retained title to inventions created with federal funding. After Bayh-Dole, universities could elect title to this intellectual property (IP). This is how many ideas that arise from federal funding translate into commercial products, services, and new companies.
When the University of Pittsburgh or any other university or research institution accepts a federal research grant or contract, the University becomes a federal contractor and is required to comply with the Bayh-Dole regulations as a condition of accepting the funding for research activities.
The Bayh-Dole regulations are updated from time to time, and the most recent revisions were published in April of 2018, with an effective date of May 14, 2018.
Although several changes to the regulations impact the University’s obligations as a contractor/recipient of federal research funding, one change in particular relates to a new requirement for the University to have IP assignment agreements with its employees conducting research under the federal grant or contract:
“The contractor agrees to require, by written agreement, its employees, …. to assign to the contractor the entire right, title and interest in and to each subject invention made under contract,…”
37 CFR Section 401.14(f)(2)
The new language requires Pitt researchers who are employees to provide a written assignment, in the present moment, of intellectual property rights that will be created by future subject inventions under the federal funding agreement (this is called a “present assignment”).
The University was able previously to accept federal funding if Principal Investigators had made a present assignment to the University of their intellectual property rights by signing the Option 1 or Option 2 form offered under the 2014 update of IP compliance, any assignment prior to 2014, or if they had signed Option 3, an agreement to assign intellectual property rights in the future after inventions had been made. The Option 3 Acknowledgment Agreement from 2014 no longer complies with the requirements of the revised Bayh-Dole regulations.
The University has modified the Option 3 Acknowledgement form to include present assignment of Bayh-Dole subject inventions made during the course of federally supported research. A statement has also been added to this option reaffirming the ownership of copyright in Scholarly Works by University Authors under the University’s Copyright Policy. The other sections of the Option 3 Acknowledgment form remain the same. This modified Option 3 form is called Option 3 Bayh-Dole, and conforms with the revised Bayh-Dole regulations. The University will require employees to sign Option 3 Bayh-Dole, if they have not signed Option 1, Option 2, or another IP assignment form, before the University accepts funding in the form of a federal grant or contract.
Yes, an IP Assignment agreement will be required from all employees performing research activities under federal contracts or awards or renewals of federal contracts or awards effective on or after May 14, 2018.
No, the Bayh-Dole regulations do not apply to foundation awards or corporate agreements, but there may be an intellectual property term or IP ownership expectation in those agreements between the University and the foundation or corporation that would require an IP assignment agreement from employees or others supported by the foundation or corporation.
CURRENTLY ACCEPTABLE UNIVERSITY OF PITTSBURGH IP ASSIGNMENT AGREEMENT
The current IP Acknowledgement and Assignment agreement forms can be found at https://www.innovation.pitt.edu/intellectual-property-assignment/
No. You may replace the IP Assignment agreement offered on or after August 1, 2018 with an Option 1, Option2, or Option 3 Bayh-Dole, but the August 1, 2018 form is fully compliant with the revised Bayh-Dole requirements; you will not need to sign a new IP assignment form to participate in federally funded research provided your IP Assignment Form is on file at the Innovation Institute. This form is titled “University of Pittsburgh Intellectual Property Assignment Effective July, 2018.”
Yes, if you previously signed Option 1 or Option 2 Assignment Agreement Forms, an earlier assignment form, or the assignment form offered on or after August 1, 2018 (titled “Effective July 2018”), you will not need to sign a new IP assignment form to participate in federally funded research as long as your Assignment Form is on file at the Innovation Institute.
Yes. The forms are available at: https://www.innovation.pitt.edu/intellectual-property-assignment/. You can sign Option 1, Option 2, or Option 3 Bayh-Dole.
Option 1 and Option 2 offer simple approaches to IP assignment that will cover inventions made in the course of internally funded, corporate funded, or foundation funded research as well as federally funded research.
No. Effective May 14, 2018, the Option 3 Acknowledgment form will no longer be used or accepted by the University since the form is not a present assignment agreement and does not comply with the new Bayh-Dole assignment requirements.
If you previously signed an Option 3 Acknowledgement form and are conducting research as a staff or faculty employee supported on a current federal grant or contract, activated on or after May 14, 2018, you will be asked to execute the new IP Acknowledgment and Assignment agreement, called Option 3 Bayh-Dole, found at https://www.innovation.pitt.edu/intellectual-property-assignment/, so that your grant or contract remains in compliance.
All of the following are acceptable: Option 1 Option 2, Option 3 Bayh-Dole, pre-2014 assignment forms, and the Intellectual Property Assignment Agreement offered on and after August 1, 2018 (titled “Effective July 2018”).
WHO NEEDS TO SIGN IP AGREEMENTS?
All Pitt principal investigators and employees (other than clerical or nontechnical personnel) named on a federal contract or grant effective or renewed on or after May 14, 2018 will be required to have an Option 1, Option 2, a pre-2014 assignment form, the Intellectual Property Assignment Agreement offered on and after August 1, 2018 (titled “Effective July 2018”), or an Option 3 Bayh-Dole IP Agreement on file at the Innovation Institute. Pitt research personnel who must comply include, but are not limited to, principal investigators (PIs), investigators, research associates, postdoctoral associates, and research staff.
Graduate students, Postdoctoral Scholars, and undergraduates are not required to complete these IP assignment agreements to be supported on Federal grants or contracts.
Yes, if the principal investigator is named on any federal contract or grant effective or renewed on or after May 14, 2018, an IP Assignment agreement must be on file at the Innovation Institute.
A postdoctoral researcher with a transitional position preparatory to an academic or research career may hold an appointment as a Postdoctoral Associate or as a Postdoctoral Scholar The requirements for IP assignment agreements depend on the nature of the appointment. Specifically:
Yes, an IP assignment agreement must be on file at the Innovation Institute if a postdoc is employed as a Postdoctoral Associate and supported on any federal contract or grant effective or renewed on or after May 14, 2018.
No, an IP assignment agreement does not need to be on file at the Innovation Institute if a postdoc is appointed as a Postdoctoral Scholar supported by training grants, postdoctoral fellowships, or external funding not subject to Bayh-Dole.
For additional information on appointments as Postdoctoral Associates and Postdoctoral Scholars see: https://www.provost.pitt.edu/sites/default/files/GuidelinesForPostdoctoralAssociatesAndPostdoctoralScholars2018.pdf
Yes, a postdoctoral scholar can request to revoke the form by submitting the revocation form available at https://www.innovation.pitt.edu/intellectual-property-assignment/.
No, graduate students are not required to sign these IP assignment agreements to be supported on federal grants or contracts. They are still subject to the University Policy on Patent Rights and Technology and terms of other non-federal support that they may receive.
Yes, a graduate student can request to revoke the form by submitting the revocation form available at https://www.innovation.pitt.edu/intellectual-property-assignment/.
Yes, if the staff member is named on any federal contract or grant effective or renewed on or after May 14, 2018, an IP assignment agreement must be on file at the Innovation Institute, unless they are clerical or nontechnical personnel.
No, undergraduates are first and foremost students, even if they are compensated as student employees, and do not need to sign these IP assignment agreements to be supported on federal grants or contracts.
New research personnel added to a federally funded research project on or after May 14, 2018, who are employees, must complete an IP assignment agreement, and the agreement must be filed with the Innovation Institute.
Yes, you will need to sign both a University of Pittsburgh assignment form and a VA assignment form. For convenience, two page versions of the Option 1, Option 2, and Option 3 Bayh-Dole forms, with the VA form as the second page, are also available at https://www.innovation.pitt.edu/intellectual-property-assignment/
IP ASSIGNMENT PROCESS
Principal Investigators should work with their departments, schools, or centers to obtain IP assignment agreements on an ongoing basis from members of the research team supported by PIs’ federal contracts or grants.
Completed original IP Assignment agreements will be retained and tracked by the Innovation Institute. Schools or departments may already have a process for obtaining IP Assignment agreements from the personnel listed on federally sponsored awards/proposals; in that case follow the process that your unit has developed to route IP Assignment agreements to the Innovation Institute. Or, mail the signed original to:
Attention: Sandy Latini
1st Floor Gardner Steel Conference Center (GSCC)
130 Thackeray Avenue
Pittsburgh, PA 15260
A scanned, signed copy should also be emailed to IPAssignmentform@pitt.edu
A copy should be retained by your school/department as part of its IP Assignment agreement compliance process.
Completed IP assignment agreements may be submitted at any time to the Innovation Institute, even before a proposal for federal funding is submitted to the Office of Research.
IP assignment agreements must be submitted when a federal proposal is funded, because IP assignment agreements are required before a federal grant or contract can be activated.
IP ASSIGNMENT AGREEMENTS AND IMPACT ON SUBMITTING RESEARCH PROPOSALS
Yes. The Office of Research will not require that compliant IP assignment agreements be filed with the Innovation Institute before proposals for funding are submitted to federal agencies.
PIs are encouraged to submit completed IP assignments for all research personnel when the proposal is submitted to ensure that activation of a successful proposal is not delayed while required assignments are collected.
IP ASSIGNMENT AND ACTIVATION OF FEDERAL RESEARCH GRANTS AND CONTRACTS
No, an awarded or renewed federal grant or contract cannot be activated by the Office of Research until all the required research personnel listed on the project have a compliant IP assignment agreement on file at the Innovation Institute.
All research personnel named on federal awards (grants or contracts) activated, or renewed on or after May 14, 2018, who are employees are required to have an IP assignment agreement on file at the Innovation Institute. As emphasized above, a previously executed Option 3 Acknowledgement Agreement will not be considered a valid and compliant IP assignment agreement.
CONTACTS FOR QUESTIONS
Questions related to the IP assignment agreement submission process should be addressed to IPAssignmentform@innovation.pitt.edu.
Questions about these FAQs, suggestions for additions to these FAQs, or questions about IP in general should be addressed to IPQuestions@pitt.edu