Common use of Invention Disclosure, Election of Title and Filing of Patent Applications by Recipient Clause in Contracts

Invention Disclosure, Election of Title and Filing of Patent Applications by Recipient. 1. The recipient will disclose each subject invention to USGS within two months after the inventor discloses it in writing to recipient personnel responsible for the administration of patent matters. The disclosure to USGS shall be in the form of a written report and shall identify the Agreement under which the invention was made and the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding of the nature, purpose, operation, and, to the extent known, the physical, chemical, biological or electrical characteristics of the invention. The disclosure shall also identify any publication, on sale or public use of the invention, whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication, at the time of disclosure. In addition, after disclosure to USGS, the recipient will promptly notify USGS of the acceptance of any manuscript describing the invention for publication, or of any on sale or public use planned by the recipient. 2. The recipient will elect in writing whether or not to retain title to any such invention by notifying USGS within two years of disclosure to USGS. However, in any case where publication, on sale, or public use has initiated the one-year statutory period wherein valid patent protection can still be obtained in the U.S., the period for election of title may be shortened by USGS to a date that is no more than 60 days prior to the end of the statutory period. 3. The recipient will file its initial patent application on an invention to which it elects to retain title within one year after election of title or, if earlier, prior to the end of any statutory period wherein valid patent protection can be obtained in the U.S. after a publication, on sale, or public use. The recipient will file patent applications in additional countries or international patent offices within either ten months of the corresponding initial patent application, or six months from the date when permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications when such filing has been prohibited by a Secrecy Order. 4. Requests for extension of the time for disclosure to USGS, election, and filing under subparagraphs 1., 2., and 3. may, at the discretion of USGS, be granted.

Appears in 2 contracts

Samples: Cooperative Agreement, Cooperative Agreement

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Invention Disclosure, Election of Title and Filing of Patent Applications by Recipient. (1. ) The recipient Recipient will disclose each subject invention to USGS DOE within two months after the inventor discloses it in writing to recipient Recipient personnel responsible for the administration of patent matters. The disclosure to USGS DOE shall be in the form of a written report and shall identify the Agreement award under which the invention was made and the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of disclosure, of the nature, purpose, operation, and, to the extent known, and the physical, chemical, biological or electrical characteristics of the invention. The disclosure shall also identify any publication, on sale or public use of the invention, invention and whether a manuscript describing the invention Invention has been submitted for publication and, if so, whether it has been accepted for publication, publication at the time of disclosure. In addition, after disclosure to USGSDOE, the recipient Recipient will promptly notify USGS DOE of the acceptance of any manuscript describing the invention for publication, publication or of any on sale or public use planned by the recipientRecipient. (2. ) The recipient Recipient will elect in writing whether or not to retain title to any such invention by notifying USGS DOE within two years of disclosure to USGSDOE. However, in any case where publication, on sale, or public use has initiated the one-one year statutory period wherein valid patent protection can still be obtained in In the U.S., the period for election of title may be shortened by USGS the agency to a date that is no more than 60 days prior to the end of the statutory period. (3. ) The recipient Recipient will file its initial patent application on an invention to which it It elects to retain title within one year after election of title or, if it earlier, prior to the end of any statutory period wherein valid patent protection can be obtained in the U.S. after a publication, on salesafe, or public use. The recipient Recipient will file patent applications in additional countries or international patent offices within either ten months of the corresponding initial patent application, or six months from the date when permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications when such filing has been prohibited by a Secrecy Order. (4. ) Requests for extension of the time for disclosure to USGSDOE, election, and filing under subparagraphs 1.(c)(1), (2.), and (3. ) of this clause may, at the discretion of USGSDOE, be granted.

Appears in 1 contract

Samples: Assistance Agreement (Myriant Corp)

Invention Disclosure, Election of Title and Filing of Patent Applications by Recipient. 1. i. The recipient will disclose each subject invention to USGS NSF within two months after the inventor discloses it in writing to recipient personnel responsible for the administration of patent matters. The disclosure to USGS NSF shall be in the form of a written report and shall identify the Agreement award under which the invention was made and the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding of the nature, purpose, operation, operation and, to the extent known, the physical, chemical, biological or electrical characteristics of the invention. The disclosure shall also identify any publication, on sale or public use of the invention, invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication, publication at the time of disclosure. In addition, after disclosure to USGSNSF, the recipient will promptly notify USGS NSF of the acceptance of any manuscript describing the invention for publication, publication or of any on sale or public use planned by the recipient. 2ii. The recipient will elect in writing whether or not to retain title to any such invention by notifying USGS NSF within two years of disclosure to USGSNSF. However, in any case where a patent, a printed publication, on salepublic use, sale or other availability to the public use has initiated the one-year statutory period wherein valid patent protection can still be obtained in the U.S.US, the period for election of title may be shortened by USGS NSF to a date that is no more than 60 days prior to the end of the statutory period. 3iii. The recipient will file its initial patent application on an invention to which it elects to retain title within one year after election of title or, if earlier, prior to the end of any statutory period wherein valid patent protection can be obtained in the U.S. US after a publication, on sale, or public use. If the recipient files a provisional application as its initial patent application, it shall file a non- provisional application within 10 months of the filing of the provisional application. The recipient will file patent applications in additional countries or international patent offices within either ten months of the corresponding initial first filed patent application, or six months from the date when permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications when such filing has been prohibited by a Secrecy Order. 4iv. For any subject invention with NSF and recipient co-inventors, where NSF determines that it would be in the interest of the government, pursuant to 35 U.S.C. 207(a)(3), to file an initial patent application on the subject invention, NSF, at its discretion and in consultation with the recipient, may file such application at its own expense, provided that the recipient retains the ability to elect title pursuant to 35 U.S.C. 202(a). v. Requests for extension of the time for disclosure to USGSNSF, election, election and filing under subparagraphs 1., 2., . and 3. 3 may, at the discretion of USGSNSF, be grantedawarded. When an recipient has requested an extension for filing a non-provisional application after filing a provisional application, a one-year extension will be granted unless NSF notifies the contractor within 60 days of receiving the request.

Appears in 1 contract

Samples: Small Business Innovation Research (Sbir)/Small Business Technology Transfer (Sttr) Phase Ii Cooperative Agreement

Invention Disclosure, Election of Title and Filing of Patent Applications by Recipient. (1. The recipient will disclose each ) After a subject invention to USGS within two months after the inventor discloses it has been disclosed in writing by the inventor(s) to recipient personnel responsible for the administration of patent matters. , the recipient will: (i) Disclose such invention to the Nuclear Regulatory Commission (NRC) within six months; (ii) Elect whether or not to retain title to any such invention by notifying the NRC within twelve months of disclosure to the recipient; (iii) File its initial patent application on an elected invention within two years after election; and (iv) File patent applications in additional countries within either ten months of the corresponding initial patent application, or six months from the date a license is granted by the Commissioner of.Patents and Trademarks to file foreign patent applications when such filing was prohibited for security reasons. (2) Notwithstanding the requirements of subparagraph c(l) above: (i) Disclosure to the NRC shall be made immediately after recipient personnel responsible for the administration of patent matters become aware of any manuscript describing the invention accepted for publication, or any publication, on sale or public use of such invention; and (ii) In any case where publication, or sale or public use has initiated the one year statutory period wherein valid patent protection can still be obtained in the United States, the period for election of title and filing of a United States patent application may be shortened by the NRC to a date that is no more than 45 days prior to the end of the statutory period. (3) Requests for extension of the time for disclosure to the NRC, election and filing, where reasonable, will normally be granted. (4) The disclosure to USGS the NRC shall be in the form of a written report and shall identify the Agreement award under which the invention was made and the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding of the nature, purpose, operation, and, to the extent known, the physical, chemical, biological or electrical characteristics of the invention. The disclosure report shall also identify any publication, on sale or public use of the invention, invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been and accepted for publication, at the time of disclosure. In addition, after disclosure to USGS, the recipient will promptly notify USGS of the acceptance of any manuscript describing the invention for publication, or of any on sale or public use planned by the recipient. 2. The recipient will elect in writing whether or not to retain title to any such invention by notifying USGS within two years of disclosure to USGS. However, in any case where publication, on sale, or public use has initiated the one-year statutory period wherein valid patent protection can still be obtained in the U.S., the period for election of title may be shortened by USGS to a date that is no more than 60 days prior to the end of the statutory period. 3. The recipient will file its initial patent application on an invention to which it elects to retain title within one year after election of title or, if earlier, prior to the end of any statutory period wherein valid patent protection can be obtained in the U.S. after a publication, on sale, or public use. The recipient will file patent applications in additional countries or international patent offices within either ten months of the corresponding initial patent application, or six months from the date when permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications when such filing has been prohibited by a Secrecy Order. 4. Requests for extension of the time for disclosure to USGS, election, and filing under subparagraphs 1., 2., and 3. may, at the discretion of USGS, be granted.

Appears in 1 contract

Samples: Grant Agreement

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Invention Disclosure, Election of Title and Filing of Patent Applications by Recipient. (1. ) The recipient Recipient will disclose each subject invention to USGS DOE within two months after the inventor discloses it in writing to recipient Recipient personnel responsible for the administration of patent matters. The disclosure to USGS DOE shall be in the form of a written report and shall identify the Agreement award under which the invention was made and the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of disclosure, of the nature, purpose, operation, and, to the extent known, and the physical, chemical, biological or electrical characteristics of the invention. The disclosure shall also identify any publication, on sale or public use of the invention, invention and whether a manuscript describing the invention has been submitted for publication and, if so, whether it has been accepted for publication, publication at the time of disclosure. In addition, after disclosure to USGSDOE, the recipient Recipient will promptly notify USGS DOE of the acceptance of any manuscript describing the invention for publication, publication or of any on sale or public use planned by the recipientRecipient. (2. ) The recipient Recipient will elect in writing whether or not to retain title to any such invention by notifying USGS DOE within two years of disclosure to USGSDOE. However, in any case where publication, on sale, or public use has initiated the one-year statutory period wherein valid patent protection can still be obtained in the U.S., the period for election of title may be shortened by USGS the agency to a date that is no more than 60 days prior to the end of the statutory period. (3. ) The recipient Recipient will file its initial patent application on an invention to which it elects to retain title within one year after election of title or, if earlier, prior to the end of any statutory period wherein valid patent protection can be obtained in the U.S. after a publication, on sale, or public use. The recipient Recipient will file patent applications in additional countries or international patent offices within either ten months of the corresponding initial patent application, or six months from the date when permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications when such filing has been prohibited by a Secrecy Order. (4. ) Requests for extension of the time for disclosure to USGSDOE, election, and filing under subparagraphs (c) (1.), (2.), and (3. ) of this clause may, at the discretion of USGSDOE, be granted.

Appears in 1 contract

Samples: Cooperative Agreement (Ada-Es Inc)

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