Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 300 – Ownership and Assignment (3)
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
MPEP 310 – Government License Rights to Contractor – Owned Inventions Made Under Federally Sponsored Research and Development (3)
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
Patent Law (3)
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
Patent Procedure (3)
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.