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Invention Reports: Background
and Purpose
The Employee Invention Report (EIR) is a standardized PHS
form on which NIMH scientific personnel must report their
inventions to the NIMH Technology Transfer Office. Simple
to complete, the EIR enables the Office to evaluate an invention's
patentability and commercial potential. Submission of a completed
EIR is the first step toward securing important intellectual
property rights-namely, patents-for inventors.
What Is A Patent?
A patent is a legal document, analogous to a deed of land,
that memorializes the ownership of intellectual property rights
described in words. Patentability and the scope of the property
rights to which an invention may be entitled are judged in
the context of related research findings and information already
in the public domain.
Patent Criteria
In order to be patentable, a "claimed" invention
must demonstrate:
• novelty
• utility, and
• nonobviousness.
Novelty means that the exact invention has not previously
been known to exist in the public domain. Utility means that
the claimed invention has a demonstrated usefulness or function
(for example, treating a disease entity). Nonobviousness means
that the gap between what existed in the public domain (that
is, "prior art") and the claimed invention could
not reasonably have been bridged by the average skilled worker
in the same field of technology using existing means.
Timing Is Everything! "RUSH" and "EMERGENCY"
EIRs
The time to submit an EIR is whenever an individual NIMH employee
believes that there is sufficient data to warrant a public
disclosure of an invention through a presentation, talk, or
publication.
Routine processing of invention reports commonly takes at
least 90 days to ensure proper Institute review, including
referral to the NIH Office of Technology Transfer (OTT) for
filing of a US patent application, if appropriate. Accordingly,
NIMH technology transfer staff must receive an invention report
at least 90-120 days in advance of a disclosure. EIRs submitted
60 days prior to disclosure are designated "RUSH."
In turn, EIRs submitted only 30 days prior attain "Emergency"
status. As a practical matter, submission of an EIR should
therefore coincide with the first submission of any manuscript
or abstract to a journal or for any other public disclosure.
What Is Public
Disclosure?
Public disclosure includes talks, lectures, poster presentations,
newspaper or newsletter interviews, all publications, or any
other unrestricted disclosure of an invention (such as unrestricted
deposits of material in ATTC or sequences in GenBank), and
even oral conversations with others outside of NIMH.
It is important that no public disclosure be made on a potentially
patentable invention prior to filing of a patent application
with the US Patent and Trademark Office (USPTO). Public disclosure
of the invention more than a year before filing with the USPTO
creates an absolute bar to seeking patent protection at home
or abroad. If a need does arise for disclosure, then a Confidential
Disclosure Agreement must properly be in place.
EIR Filing Procedures:
What You Should Know
When a scientist believes that s/he may have a patentable
invention related to the subject matter of his or her employment
at NIMH, whether made at NIMH or not, then the following procedures
apply:
1. First, obtain an EIR form with cover sheet available on
this website.
2. Next, contact NIMH technology transfer staff to discuss
the particular aspects of the invention and obtain guidance
in completing the EIR.
3. Complete the EIR and attach any manuscripts and literature
that are relevant to the invention. Inventors must disclose
to the USPTO the most relevant "prior art" known
to them at the time of filing to avoid forfeiture of patent
rights.
4. Lastly, forward the completed EIR, with attachments, to
the NIMH Technology Transfer Office.
About Joint Inventorship
When an invention is made by two or more persons jointly,
they should apply for a patent jointly. Inventors may apply
for a patent jointly even though:
1. They did not physically work together or work simultaneously;
2. Their individual contributions to the invention are not
of the same type or scope; or
3. They did not each contribute to the subject matter of every
claim of the patent.
Final Processing Of EIRs By OTT
The NIMH Technology Advisory Committee (TAC) first evaluates
of an invention's patentability. This determination at the
Institute level may result in a recommendation and appropriation
of funds to file a patent application. The final determination,
however, is made by OTT. Not all inventions or discoveries
are patentable, and not all patentable inventions have commercial
potential
Because the investigator is an important source of information
regarding this decision, s/he is consulted as needed to clarify
the scope and content of the invention and to respond to any
queries arising from supporting documentation submitted with
the EIR. If OTT recommends patent prosecution, then the EIR
is forwarded to a patent attorney with expertise to understand
the invention and its importance as a scientific advance.
Royalties
Royalties can be earned from licensing both patented and non-patented
inventions. A portion is split among the inventors and additional
revenue goes to the Lab or Branch and to the Technology Transfer
program to cover costs such as patent prosecution and other
administrative expenses.
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