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Invention Disclosures
Paula Ousley in the PVAMC Research Service Office will
assist you with the disclosure procedure. Contact her
to begin the disclosure process.
Who Needs to disclose
to the VA?
VA regulations concerning the ownership
of inventions apply to all research that involves government
resources (VA facilities, equipment, employees, etc.).
The Veterans Health Administration requires that VA employees
report inventions to the VA Office of General Counsel
for a determination of ownership.
For the purposes of invention disclosures,
"VA employees" include:
- Regular salaried employees
- Employees hired under IPA (Intergovernmental Personnel
Agreement) contracts
- WOC (Without Compensation) appointees
- Employees with dual appointments with Oregon Health
& Science University (OHSU)
Any inventors with OHSU affiliations will also have to
make a formal disclosure to OHSU. Paula can assist with
that as well.
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Government and Employee
Rights and Responsibilities
Under Executive Order 10096 the Government
has the right to obtain the entire right, title and interest
in and to all inventions made by any government employee
(1) during working hours, or (2) with a contribution by
the Government of facilities, equipment, materials, funds,
or information, or of time or services of other Government
employees on official duty, or (3) which bear a direct
relation to or are made in consequence of the official
duties of the inventor. See also 37 C.F.R. 501.6 and
Kaplan v. Corcoran, et al., 545 F.2d 1073 (7th Cir. 1976).
Government employees are allowed by law
to receive royalties from their inventions. Royalty payments
are in addition to regular pay and continue after the
inventor leaves the laboratory or agency. See also 15
U.S.C. Section 3710.
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Disclosing
an Invention to the VA
At the beginning of The
Invention Pathway (VA Web Site, PDF), a Report of
Invention is prepared by the inventor and reviewed by
the Portland VA Medical Center ACOS/R&D and Director.
It is then sent to the VA Research and Development, Office
of Technology Transfer, for evaluation and recommendations
before being forwarded to the Office of General Counsel
for a determination of ownership rights. An official Determination
of Rights (DOR) letter is then sent to the inventor(s)
and PVAMC.
VA
Outline for Report of Invention (VA Web Site, MSWord)
VA
Intellectual Property Handbook 1200.18 (VA Web Site)
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VA/OHSU Joint
Inventions
The VA and OHSU have established a Cooperative
Technology Administration Agreement (135KB, PDF) or
CTAA. This document was previously known as an Inter-Institutional
Agreement or IIA. The document outlines what occurs when
at least one inventor on an invention is a "Dual Appointment
Personnel" (has an appointment with both VA and OHSU).
The agreement authorizes OHSU to have the exclusive right
to negotiate, execute, and administer any license agreement.
All joint inventions must still be disclosed to both OHSU
and the VA in a timely manner.
OHSU
Invention Disclosure Form (OHSU Web Site)
VA/OHSU
Royalty Agreement (67KB, PDF)
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Premature
Disclosure to the Public
Inventors must be extremely careful not
to disclose to the public the particulars of their invention
before filing the appropriate paperwork with the US Patent
and Trademark Office.
Lectures, poster presentations, even abstracts
at scientific meetings could be considered public disclosure.
Public disclosure can also include newspaper or newsletter
interviews, publications, public use, sale, or offer of
sale of the invention.
Disclosure of any information prior to filing
appropriate paperwork with the Patent Office voids
all international patent rights. Domestic US
patent rights are voided if appropriate paperwork is not
filed with the PTO within one year of disclosure
of pertinent invention information.
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