I agree with Herb. Based upon this description, it seems that the IP would be subject to Bayh-Dole. That the research program may be broader than the original scope of the proposal may not be the determining factor. That the student was paid by the federal grant when he/she discovered the IP generally is. The definition of a Bayh-Dole subject invention is "any invention of the grantee conceived or first actually reduced to practice in the performance of work under (this) grant..." I don't think you can argue that it's not covered because the work exceeded the scope. Since the grant paid for the work it would be deemed as having been conducted "under the grant" imho. Of course, there are the options Herb describes for salary charge corrections (which could create another set of problems). Good luck! Jeff Myers Southern Illinois University > I would disagree. > > The individual is EMPLOYED to work on the federal grant. Therefore all > activity is supposed to be related to that federal grant. If the person > worked on other sponsored activities, the salary should not have been > charged to the grant. So the presumption must be that the work was > grant-related, and the IP must be reported. This suggests that the > assignment of work for the student might have been improper. Or, > alternatively, that the work was within the PI's discretion of expanding > the work beyond what was in the proposal, something certainly allowable > under the regulations -- unless it was a change in the scope of the grant, > which again would make the work assignment improper. > > If it was discovered early that the work was mis-charged, a change of the > expense charge could made. That would have to be done within the > parameters of your institutional policy on correcting erroneous charges to > federal grants. If the change is made only after the IP is disclosed, > there would be a significant question as to the propriety of that correction. > > There would also be some possible questions arising from the institutional > policy regarding IP. I believe a policy that excluded students -- or > fellows (not the position you revealed for this student) -- from a share in > the IP's rewards would be in violation of federal regulations. > > I suggest that there is no problem for the institution that there is a > federal interest in the invention...unless it is in direct conflict with > other contractual commitments with external parties, in which case you may > have a real mess to unwind. Experience in my institution is that the > residual federal interest in IP causes no real problem in exploiting that > IP unless there is a direct conflict with other external agreements > regarding the exclusive commitment of IP rights to a different sponsor. It > may require some education of potential IP licensors -- but if a potential > licensor does not understand how limited those residual federal rights are > in real life, that licensor may be too inexperienced to be considered a > viable licensor. I also suggest that it is an INSTITUTIONAL rather than > departmental question as to what internal and external sources have > interests in that IP, and also in the manner of IP exploitation that best > serves the institution, the sponsor, and the inventor(s). There may be > knowledge and expertise in the department that aids the Tech Transfer > Office, but there should be no decision-making in the department. > > This problem illustrates the confusion that is caused when a department or > laboratory draws student support from whatever revenue source may be > available without relating the work to that source. Some might argue that > fraud is implied. If this practice is commonplace, the institution's > research executives should learn more about the federal False Claims Act! > > Chuck > > > > > At 11:10 AM 1/19/2003 -0500, you wrote: > >I've asked this question before but want a refresher. First, the > >ground work: A graduate student is employed on a federal sponsored > >agreement subject to Bayh-Dole and the assistantship is considered a 50% > >employee appointment and that type of appointment is a salaried position > >not subject to local personnel act (i.e. not eligible for overtime work; > >get the "job" done, irrespective of total time). > > > >The aforementioned graduate student creates IP while working in "the > >lab" to which s/he is assigned to work while employed to work on the > >federal sponsored agreement. The IP is the result of a much broader > >aspect of the discipline under which s/he is working towards as > >described by the federal sponsored agreement that is paying his/her > >salary. > > > >My argument is that this IP does not need to be disclosed to the > >federal sponsor and the federal sponsor accrues no rights in the IP > >because [its] relationship to the specifics for which the sponsored > >agreement was issued can not be related to the objectives (and > >deliverables) of the sponsored agreement. > > > >Am I right? Beyond this argument, what constitutes sufficient support > >for or against (so I can argue it with the feds or with the academic > >department) the reason to disclose to the feds or not... > > > >Please advise directly or via the list and thanks in advance for your > >assistance. Apologies for those who receive this on the many lists I > >have posted. > > > >Thanks! > > > >Matt > > > >Matt Ronning > >Associate Vice Chancellor and Director > >Research Administration / SPARCS > >North Carolina State University > >1 Leazer Hall - Lower Level > >Campus Box 7514 > >Raleigh, NC 27695-7514 > >919-513-2148 - Direct Line > >919-515-7200 - Main Line > >919-515-7721 - Fax > >xxxxxx@ncsu.edu - e-mail > >http://www.ncsu.edu/sparcs - URL > > > > > >================================================================ ====== > > Instructions on how to use the RESADM-L Mailing List, including > > subscription information and a web-searchable archive, are available > > via our web site at http://www.hrinet.org (click on "Listserv Lists") > >================================================================ ====== > > Herbert B. Chermside, CRA > Director, Sponsored Programs Administration > Virginia Commonwealth University > PO BOX 980568 > Richmond, VA 23298-0568 > Express Delivery Only: > Biotech One, Suite 113 > Virginia Biotechnology Research Park > 800 East Leigh Street > Richmond, VA 23219 > Voice: 804-828-6772 > Fax 804-828-2521 > OFFICE e-mail xxxxxx@VCU.EDU > Personal e-mail xxxxxx@vcu.edu > http://www.research.vcu.edu/ospa.htm > > The Office of Sponsored Programs Administration will be moving Wednesday > January 8 throuigh Friday January 10. We are moving from Sanger Hall to > Biotech One, in the Biotech Research Park, 800 East Leigh Street, Suite 113. > > Proposals can be dropped off in Sanger Hall through January 10. Monday > January 13 we will be in full operation in our new home. We will do our > best to respond to real emergencies while moving; otherwise, expect about 3 > days lost time. > > We will retain our VCU mail box, #568, but express or other physical > deliveries will come to our new offices. Phone numbers and e- mail will > stay the same, but computers and telephones will be down 1 to 3 days. > > > ================================================================= ===== > Instructions on how to use the RESADM-L Mailing List, including > subscription information and a web-searchable archive, are available > via our web site at http://www.hrinet.org (click on "Listserv Lists") > ================================================================= ===== --------------------------------------------- This message was sent using SIU Webmail Server. ====================================================================== Instructions on how to use the RESADM-L Mailing List, including subscription information and a web-searchable archive, are available via our web site at http://www.hrinet.org (click on "Listserv Lists") ======================================================================
