disclose disclose disclose

“Today, the Department of Veterans Affairs takes credit for the work our

researchers did in the past and will do in the future.”

Anthony J. PrincipiSecretary of Veterans Affairs

Disclose

Disclose

Disclose

Disclosure does not automatically Disclosure does not automatically mean “VA ownership.”mean “VA ownership.”

IMPORTANT:

• All VA employees must disclose.• Talk to appropriate staff.• Information available on www.vard.org.• VA receives appropriate credit.• Videos Available

REMINDER

New Report of Invention Form required on all invention disclosures submitted after

November 1, 2003

Under Executive Order 10096 when inventions are made by VA “salaried”

employees with “research” responsibilities and there was a “contribution” by the VA, then the VA may assert an ownership right

in the invention.

Without Compensation (WOC) Appointments

In Kornbluth v. VA it was held that WOC’s are not included in the

definition of “employees” under Executive Order 10096.

OGC developed the “VA-WOC Appointee Intellectual Property

Agreement”

»Who

»What

»When

Who?

WOC’s performing VA approved research ONLY!!!!

What?

WOC’s performing research must disclosure any and all inventions made

to VA.

When?

VA can assert ownership rights if certain criteria are met, which could result in

joint ownership with another organization.

Criteria to Assert Ownership

VA has made a significant contribution to the “making” of the invention.

(conception/reduction to practice)

Contributions

• Space• Equipment• Materials• Funding• Information• Time & Services of Other Employees

Other criteria

Cooperative Technology Administration Agreement (CTAA)

The VA recognizes that other organizations may also assert an

ownership right in the same invention, which results from their relationship

with the inventor.

Bayh-Dole Act

Intended to move Federally developed intellectual property to the market place by

authorizing non-profits and others the ability to assert ownership rights.

Under these circumstances if both organizations assert an ownership in the invention, joint ownership arises.

The Department of Commerce has acknowledged joint ownership may

arise for an invention made by a person who holds a joint appointment

with the Department of Veterans Affairs and a university.

The Department of Commerce has also adknowledged that the Bayh-Dole Act

does not preclude joint ownership.

What option is available when joint ownership occurs?

CTAA

What is the purpose of the CTAA (how does it work)?

1. Allows VA and the University to be joint owners of the IP

2. Defines terms3. Outlines the handling of intellectual

property4. Revenue split/royalty income5. Encompasses all existing and future IP

Allows VA and the University to be joint owners of the IP.

Defines terms:

• Dual Appointment Personnel (DAP)

• Significant Contribution

• Pooled Amount

• Administrative Fee

Outlines the handling of intellectual property.

Revenue Split

Royalty funds shared between VA and affiliates are pro rated based on the

number of employees; that is whether the inventor is full-time VA, full-time affiliate, or holds a dual appointment

(DAP) at both institutions.

Example One: 

Two employees jointly develop intellectual property where one inventor is full-time VA

and one inventor is full-time affiliate the royalty split would be 50% VA and 50%

affiliate. 

    100%/2 full-time employees = 50% per full-time employee

1 (full-time VA employee) x 50% = 50%

Example Two:

Five employees jointly develop intellectual property where four employees are full-time affiliate and

one is DAP the royalty split would be 90% affiliate and 10% VA.

100%/5 employee inventors = 20% per employee inventor

4 (full-time affiliate employees) x 20 % = 80%1 DAP x 20% = 20%/2 (DAPS are split 50/50) = 10%

80% + 10% = 90% to Affiliate

Royalty Income

Two Components:

• Personal

• Non-Personal

Personal royalty income is paid “directly” to the inventor.

Non-personal royalty income is money paid VA after the inventor has been paid and associated costs and other related expenses have been recovered. These funds are then distributed according to VA’s royalty policy.

What happens if there is no CTAA?

Any time VA asserts ownership a provisional patent application is filed. This provides up

to one year of protection while VA conducts technology assessment and future

IP management planning.

• VISN InitiativeVISN Initiative:The total number of inventions disclosed per facility/VISN and the total number of inventions disclosed to an affiliate but not to a VA per facility/VISN. VHA Strategy 29:VHA Strategy 29:Take full advantage of research-related intellectual property opportunities. VHA Objective 17:VHA Objective 17:Increase revenue and efficiency through private sector partnerships, technology, and improved business practices. 

SAMPLE REPORTSAMPLE REPORT 

VISN # 5, VA Capitol Health Care NetworkReporting Period: October 1 2002 – September 30, 2003Total number of inventions disclosed.

Name of Facility Number of Inventions

VA Maryland Health Care System 14

VAMC Martinsburg W.V. 1

VAMC Washington D.C. 3

Total for VISN 18

Total number of inventions disclosed Total number of inventions disclosed to an affiliate but not to a VA.to an affiliate but not to a VA.

Name of Facility Number of Inventions

VA Maryland Health Care System 3

VAMC Martinsburg W.V. 0

VAMC Washington D.C. 0

Total for VISN 3

Non Compliance Letters

• Issued when VA learns of non disclosed invention.

• Standard letter to ACOS with cc to COS requesting action within 30 days.

• If not resolved, standard letter to MCD with cc to VISN Director outlining circumstances/requesting action within 30 days.

If you receive such a letter it is essential that you resolve the issue within the time frame outlined. This will avoid involving your facility or VISN director.

If, at a later date, your facility receives a similar letter it is essential that you review your IP education efforts. Again, this will avoid involving your facility or VISN director.

• Cooperative Research and Development Agreement

(CRADA)• Material Transfer Agreement

(MTA)• Confidential Disclosure Agreement

(CDA)

CRADA

A CRADA is a legal agreement between VA and one or more non-Federal parties.

Purpose

A CRADA is used to establish a collaboration to conduct further R&D on inventions, whether VA

or privately owned.

Review and Approval

Negotiated by Facility

Pre-review by TTP

Final Review and Approval by OGC

Signed and Executed by Facility Director

IMPORTANT

CRADA’s involving foreign partners have additional requirements. Prior to entering such negotiations

please call the TTP office to discuss these additional requirements.

MTA

MTA’s are legal agreements between the VA facility and another party.

Purpose

MTA’s allow for the transfer and use of unique material from one party to another

for research purposes.

Review and Approval

• Negotiated by investigator/ACOS/facility

• Signed and Executed by ACOS/facility

CDA

CDA’s are legal agreements between the VA facility and another party.

Purpose

CDA’s allow for the exchange of confidential and/or proprietary information between parties.

Review and Approval

• Negotiated by investigator/ACOS/facility

• Signed and Executed ACOS/facility

HAVE QUESTIONS?

NEED ANSWERS?

• www.vard.org• Call TTP staff