Yes.  Under federally funded contracts/subcontracts, Virginia Tech is allowed to retain title to any inventions made or reduced to practice under the award.  If we decide not to retain title, the Federal agency sponsoring the research can request us to transfer title to them.  Virginia Tech also retains ownership of inventions under non-federally funded agreements, but will negotiate terms for licensing with the sponsor.

Yes.  The federal government retains a license to use the invention for government purposes as well as certain march-in rights to make sure the inventions are commercialized.

Yes.  Our research contracts require inventions to be disclosed and reported. By University policy, Virginia Tech inventors are required to disclose any inventions with commercial applications to VTIP.

Individual contracts may have specific notification and reporting requirements.  You should review the IP and patent clauses of the contract and note those requirements.  Most notifications are done by VTIP, but there may be reports to the Contracting Officer that need to come from OSP.  As noted below, reporting requirements differ between the federal agencies.

OBLIGATIONS UNDER FAR 52.227-11 PATENT CLAUSE

Invention:  Disclose each invention to the Government within 2 months after you receive a written disclosure.  If we fail to disclose the invention, they could deny us the license we normally get to any invention to which they obtain title.

Elect title:  Notify the Government in writing within 2 years of disclosure (or if publication has been made within 60 days of the end of the 1 year statutory filing period) whether you are going to retain title

File initial patent application: within one year after electing to retain title or prior to end of statutory period; file in foreign countries within either 10 months or 6 months after PTO has granted permission to file in foreign countries where such filing has been prohibited by a Secrecy Order.  (Agency has discretion to extend times for disclosure election and filing)

Notify the Government of decisions not to:

• continue prosecution of a patent application
• pay maintenance fees
• defend in a reexamination or opposition proceeding on a patent not less than 30 days before the expiration of the response period required by the relevant patent office.

Convey title:  Upon written request we would have to convey title to the Government if:

• we fail to disclose or elect title within the times, or elect not to retain title, the Government has 60 days after learning of our failure to request title
• we fail to file patent applications within the time periods
• If we do not continue the prosecution of any application for, pay the maintenance fees on, or defend in reexamination or opposition proceeding on a patent.

Reporting:  Upon request, periodic reports no more frequently than annually, on the utilization of subject inventions.

These should have the same FAR Patents clause but an additional clause that has reporting requirements (DFARS 252.227-7039)

Reports--Furnish to the Contracting Officer:

• Interim reports every 12 months (or longer period as specified by the CO) listing inventions during that period and stating that all subject inventions have been disclosed or that there are no such inventions
• Final report, within 3 months after completion of the contracted work, listing all subject inventions or stating that there were no such inventions.

Reports--Upon request of DOE Patent Counsel or the Contracting Office

• Summary report of all inventions individually reported during the contract (no more than annually)
• Final report, prior to closeout, listing all subject inventions or stating that there were none.

NASA

Invention Disclosures may be reported in any manner, but NASA prefers the contractor use either the electronic or paper version of NASA Form 1679

Reports--to Contracting Officer

• Listing every 12 months (or longer period as CO may specify) of all inventions during the period
• Final Report prior to closeout listing all inventions or certifying that there were none