Research and Development Office

Inventions Frequently Asked Questions

The following provides advice to Reclamation and partner inventors on how to use Technology Transfer to move federally-funded research products and technologies into widespread use. For more information, please contact Reclamation's Technology Transfer Staff.

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Why is Technology Transfer important to the inventor?

Under these authorities, employees of the Federal Government who perform research, development, or engineering work are responsible for technology transfer and such responsibilities are to be considered in job descriptions:

• Steven-Wydler Innovation Technology Transfer Act and Federal Technology Transfer Act of 1986, as amended
• Executive Order 12591, Facilitating Access to Science and Technology

For researchers and technical employees, this means increased visibility and value for the research and technologies developed and demonstration of the relevance of an agency in meeting the needs of constituents.

Technology Transfer offers other benefits to the inventor including:

• Partnering with private sector companies, leveraging and optimizing resources, and sharing ideas in a protected environment
• Sharing intellectual property and obtaining royalties from patented and licensed technologies
• Accelerating the adoption and use of technologies

How does the Reclamation employee know if he or she has an invention?

An invention is the discovery or creation of a new material (either a new manufactured product or a new composition of matter), a new process, a new use for an existing material, or any improvements of any of these. Computer software may also be classified as an invention.

The United States patent law requires that an invention meet the following three criteria to be eligible for patent protection:

• Novelty: The invention must be differ from already available ideas, inventions or products (known as "prior art").
• Usefulness: The invention must have utility or application, or be an improvement over the existing products and/or technologies. It must solve a problem.
• Non-Obviousness: The invention cannot be obvious to a someone of "ordinary skill" in the field.

When should Reclamation employees report inventions?

Reclamation employees are responsible for reporting all inventions, whether or not related to their work, so that the rights of the employees and the government to the inventions may be determined. The inventor who thinks he or she have made, or are about to make, a new invention and has adequate performance data to prove that it works should submit an invention disclosure.

Any Reclamation employee who may have created an invention or has a novel idea is obligated to disclose the nature of the invention and provide background information and literature to the Technology Transfer Staff at Reclamation. An invention disclosure form should always be submitted prior to public disclosure.

What is an invention disclosure? How does an inventor submit an invention disclosure?

When an inventor believes that they have made something that qualifies as an invention, they need to disclose the information to the Technology Transfer Staff by completing a confidential invention disclosure form.

It is critical that the inventor complete every section of the disclosure in as much detail as possible or its processing can be delayed. Explanatory materials like drawings, graphs, photos, charts, etc. should be included, as needed, to fully explain and illustrate how the invention operates. The original invention disclosure form must be signed and dated by the inventor. The completed invention disclosure form should be stamped as confidential and can be mailed or emailed to the Technology Transfer Staff.

Who should be listed as inventors on the invention disclosure form or patent application?

Inaccurate listings of inventors on a patent application can result in the challenge and invalidation of the patent. All contributors to the ideas leading to the invention should be mentioned in the invention disclosure form, even if they're not Reclamation employees. An inventor should contact the Technology Transfer Staff if he or she has any questions regarding who contributed to the invention.

What is premature disclosure?

The premature disclosure of subject matter that may be patentable can result in the loss of certain patent rights. Unless a written confidentiality agreement is obtained beforehand, an invention's public disclosure may be by way of a printed publication. Publication may be embedded in a variety of vehicles such as: requests for quotations, interim reports, published abstracts, discussions with non-Reclamation participants, final reports, or handouts given at a conference or seminar.

Reclamation staff may need to provide confidential information to a non-Federal entity during the course of a project. If Reclamation staff must disclose confidential information to another party, it becomes necessary and in the best interest of Reclamation to require the other party to sign a confidentiality agreement. Under this agreement, the party receiving confidential information agrees to protect this information as confidential. Reclamation staff should complete and execute this confidentiality agreement before meetings or discussions with individual companies where information pertaining to a new invention or where other confidential information is disclosed.

Under U.S. patent law, if patentable information is publically released about an invention, a U.S. patent application must be filed within one year of the disclosure. If there is premature disclosure of patentable information in a publication, most foreign patent rights are lost from the date of first publication. Most foreign countries require that patents be filed before any printed publication is made available to the public. If an invention is to be, or has been publicly disclosed in a publication, the inventor should promptly notify the Technology Transfer Staff.

How should the inventor prevent premature disclosure?

If possible, there should be no disclosure until after a U.S. patent application has been filed. Reclamation researchers should consult with the Technology Transfer Staff before making public presentations or release of materials or technologies that may contain premature disclosure of patentable information. To prevent a possible premature disclosure and the loss of potential patent rights, inventors should NOT do any of the following until a U.S. patent application is filed:

• Publish subject matter or idea that may be patentable;
• Present enabling information at a conference or workshop;
• Discuss with others outside of your workgroup without a confidentiality agreement.

What rights to the federally developed invention do a Reclamation employee and government have?

Employee and government's rights for federally developed inventions are determined in accordance with 37 CFR 501 and the Department of the Interior Manual Chapter 453 DM 1, Employee Responsibilities and Conduct as summarized:

• The Government is entitled to the right, title, and interest of government inventions which bear a direct relation to or are made in connection with an employee's official duty.
• When the invention does not pertain to the employee's direct duties, but is conceived during working hours, or built or tested using government property, the Government is entitled to a non-exclusive, irrevocable, royalty-free license in the invention with the power to grant sublicenses, and the inventor may also retain title to and interest in the patent.
• If the patent was developed independent of government time and money and is not related to the Agency's objectives, the employee may retain the entire right and title to the invention. When the Government is not entitled to the invention, the employee can request that Reclamation file the patent application on the invention in return for a license to the Government. Reclamation may agree to do so when it appears to be in the Government's interest to do so (e.g. government procures large quantities of a device or product or material made by practicing the invention.).

If Reclamation employee inventor has factual reasons to believe he or she is entitled to retain ownership rights to their invention, the employee is responsible for preparing a request for a determination of rights decision. This request should be made as soon as possible in writing on DI form 1218 "Invention Rights Questionnaire." In the absence of a contrary rights determination, Reclamation is to proceed with actions that may lead to the filing of a patent application along with any accompanying assignment of rights from the inventor(s).

How should an inventor manage confidential information?

Reclamation researchers and technical staff who are engaged in research, development, and technology transfer activities may need to receive, transfer, or exchange confidential information with a non-Federal entity. Reclamation researchers and technical staff should only consider receiving or exchanging confidential information only if it's needed to conduct research, development and technology transfer activities. Confidential information under technology transfer agreements must be managed in accordance with 15 USC 3710a(Technology Transfer legislation) and 18 USC § 1905 (Trades Secret Act). An inventor should contact theTechnology Transfer Staff if he or she is considering receiving, transferring or exchanging confidential information with a non-Federal entity. Here are some guidelines for managing confidential information under technology transfer activities:

• Entering into Confidentiality Agreements (CA) with Non-Federal Entities. Only employees who have been delegated signatory authority for technology transfer agreements may sign a CA on behalf of Reclamation with a non-Federal entity, and only after is cleared by the Office of the Solicitor. Currently, this authority is delegation to Reclamation's Commissioner.
• Protecting Confidential Information Generated under Technology Transfer Agreements. Currently, Reclamation's Commissioner has the delegated authority to provide appropriate protections against the dissemination (including exemption from subchapter II of chapter 5 of title 5 [Freedom of Information Act]), for up to five (5) years for any information developed under agreements authorized by 15 USC3710a that would be a trade secret or commercial or financial information that is privileged or confidential.

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