University of Pittsburgh Required
Intellectual Property Assignment

Research is a critical way in which Pitt distinguishes itself among other institutions of higher education. Some of this research is made possible by U.S. federal grants and contracts. The outputs from these awards are generally referred to as “intellectual property,” or IP for short. In 1980, Congress passed the Bayh-Dole Act that permits universities to acquire the rights to this IP; this is how ideas and inventions funded by federal awards can be translated into new commercial products, services, and companies.

This spring, the government revised the regulations regarding these awards, and imposed the following requirement on the University (“the contractor”) as a strict condition of accepting all federal funding:

“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,…”

 To “assign” the rights to “each subject invention” means signing a short form that says that Pitt has rights to this intellectual property. Many of our peers – e.g., Michigan, Cornell, Yale, etc. – simply require an assignment form to be signed as a condition of employment, but for Pitt to comply with these revised federal regulations, we must obtain an assignment of IP rights from all research personnel involved in federally funded research. Examples of such personnel include principal investigators (PIs), investigators, post-doctoral co-workers, research staff, graduate students and compensated undergraduates working on the federally funded project. Note that if you previously signed an IP assignment agreement form titled “Option 1” or “Option 2,” this change will not affect you.

 

 

 

 

 

Intellectual Property (IP) Assignment FAQs

BAYH-DOLE REGULATIONS

1. What are the Bayh-Dole regulations?

The Bayh-Dole regulations implement the Bayh-Dole Act, passed in 1980 to allow recipients of 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.

2. Who must comply with the Bayh-Dole regulations?

When the University of Pittsburgh or any other university or research institution accepts a federal research grant or contract on behalf of one or more faculty investigators it becomes a federal contractor, and the University is required to comply with the Bayh-Dole regulations as a condition of accepting the funding for research activities.

3. When did the Bayh-Dole regulations change?

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.

4. Where can I find a copy of the revisions of the Bayh-Dole regulations?

The changes can be found at: https://www.federalregister.gov/documents/2018/04/13/2018-07532/rights-to-federally-funded-inventions-and-licensing-of-government-owned-inventions.

5. How do the revised Bayh-Dole regulations relate to IP assignments?

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 research personnel:

“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)

6. What is the impact of the new language?

The new language requires a written assignment by Pitt researchers, in the present moment, of intellectual property rights that will be created by future inventions created under the federal funding agreement (sometimes this is called a “present assignment”).

 7. How is the University responding to this particular change?

The University has created a new Intellectual Property Assignment form (IP Assignment) that conforms with the revised Bayh-Dole regulations, and will require all employees to sign the IP Assignment before the University accepts federal funding to support their research.

8. How does this affect previous University requirements?

 The University previously allowed researchers to apply for and accept federal funding if they signed an agreement to assign intellectual property rights in the future, after inventions had been made (Option 3 under the 2014 update of IP compliance). The Option 3 Acknowledgement Agreement Form no longer complies with the requirements of the revised Bayh-Dole regulations (37 CFR 401.14(f)(2)).

9. Do the revised Bayh-Dole regulations and the IP Assignment requirement apply to all federal grants and federal contracts?

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.

10. Do the revised Bayh-Dole regulations and IP Assignment requirement apply to non-federal grants and contracts such as foundation awards or corporate agreements?

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 the agreement between the University and the foundation or corporation that would require an IP Assignment agreement from employees supported by the foundation or corporation.

 

CURRENTLY ACCEPTABLE UNIVERSITY OF PITTSBURGH IP ASSIGNMENT AGREEMENT

1. Where can I find the new IP Assignment that I need to sign prior to engaging in federally funded research at the University of Pittsburgh?

The current IP Assignment agreement can be found here: IP Assignment Agreement

2. Are the former University of Pittsburgh Option 1 and Option 2 Assignment Forms still valid under the revised Bayh-Dole regulations?

Yes, if you previously signed Option 1 or Option 2 Assignment Agreement Forms you will not need to sign the new IP Assignment form to participate in federally funded research as long as your Option 1 or Option 2 Assignment Form is on file at the Innovation Institute.

3. Is the Option 3 Acknowledgement Form still valid?

No. Effective May 14, 2018, the Option 3 Acknowledgement Form will no longer be used or accepted by the University since the form is not a present agreement and will not comply with the new Bayh-Dole assignment requirements.

 If you previously signed an Option 3 Acknowledgement Form and are participating as a researcher on a current federal contract or award, activated on or after May 14, 2018, you will be asked to execute the new IP Assignment Agreement to ensure your grant or award remains in compliance.

 

PERSONNEL AFFECTED

 1. Who is required to have an IP Assignment agreement on file with the University?

All Pitt principal investigators and their research staff (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 a present IP Assignment agreement (not an Option 3 Acknowledgement Form) on file at the Innovation Institute. Pitt research personnel who must comply include, but are not limited to, principal investigators (PI), investigators, postdocs, research staff, graduate students, and compensated undergraduates.

2. Do principal investigators need to have an IP Assignment agreement on file at the Innovation Institute?

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.

3. Do postdocs need to have an IP Assignment agreement on file at the Innovation Institute?

Yes, if a postdoc 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.

4. Do graduate student researchers need to have an IP Assignment agreement on file at the Innovation Institute?

Yes, if the graduate student 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.

5. Do staff need to have an IP Assignment agreement on file at the Innovation Institute?

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.

6. Do undergraduates need to have an IP Assignment agreement on file at the Innovation Institute?

Yes, if the undergraduate 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.

7. What should I do if a new graduate student, post doc, or research staff member is added to a federally funded project?

New research personnel added to a federally funded research project on or after May 14, 2018 must complete an IP Assignment agreement and the agreement must be filed with the Innovation Institute.

 

IP ASSIGNMENT PROCESS

1. Who is responsible for obtaining the IP Assignment agreements for federally funded projects?

The Principal Investigator is responsible for obtaining IP Assignment agreements on an ongoing basis from members of the research team supported by the PI’s federal contracts or grants.

2. Where do I send my signed IP Assignment agreement?

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:

Innovation Institute
Attention: Sandy Latini
200 Gardner Steel Conference Center
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.

3. When do I submit signed IP Assignment agreements?

Completed IP Assignment agreements should be submitted to the Innovation Institute before a proposal for federal funding by NIH, NSF, DoD, DOE, or any other federal agency is submitted to the Office of Research.

 

IP ASSIGNMENT AGREEMENTS AND IMPACT ON SUBMITTING RESEARCH PROPOSALS

1. Will my federal grant or contract proposal be submitted to the sponsor if an individual on the budget does not have a compliant IP Assignment agreement on file at the Innovation Institute?

No. Going forward, the Office of Research will require that compliant IP Assignment agreements be filed with the Innovation Institute before proposals for funding are submitted to federal agencies.

Under exceptional circumstances (for example: family emergencies, limited availability of a few members of a large team), and only as approved by the Vice Chancellor for Research Operations, proposals may be submitted prior to completion of IP Assignment agreements for all named personnel, but no federal grants or contracts, including renewals, will be activated until there is full compliance.

  

IP ASSIGNMENT AND ACTIVATION OF FEDERAL RESEARCH GRANTS AND CONTRACTS

1. Will my new federal grant or contract, or federal grant or contract renewal, be activated by the Office of Research if any of the research personnel listed on the project do not have an IP Assignment on file at the Innovation Institute?

No. An awarded or renewed federal grant or contract will not be activated by the Office of Research until all of the required research personnel listed on the project have a compliant IP Assignment agreement on file at the Innovation Institute. No exceptions will be allowed. As emphasized above, a previously executed Option 3 Acknowledgement Form will not be considered a valid and compliant IP Assignment agreement.

2. What happens to my federal grant or contract, or renewal, that was activated on or after May 14, 2018?

 All research personnel named on federal awards (grants or contracts) activated, or renewed on or after May 14, 2018, 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 QUESTION

1. Who do I contact if I have questions about the IP Assignment agreement submission process?

Questions related to the IP Assignment agreement submission process should be addressed to IPAssignmentform@pitt.edu or 412-383-7664.

2. Who do I contact if I have suggestions about additions to these FAQs or questions about the revised Bayh-Dole regulations?

Questions or suggestions relating to the revised Bayh-Dole regulations should be addressed to N. John Cooper, Deputy Vice Chancellor for Research, at cooper@pitt.edu or 412-624-9019.