The Interagency Edison (“iEdison”) system is the principal mechanism for preserving rights to title in Government-funded inventions. Its use is now mandatory per 37 CFR 401.16, and we expect FAR 52.227-11, Patent Rights – Ownership by the Contractor, to see parallel amendments soon. Despite its use by multiple agencies to satisfy the reporting obligations imposed on funding recipients under the Bayh-Dole Act, most agree and recognize that the system is broken…badly broken.
This, of course, raises a great number of concerns given the intellectual property rights at stake. In fact, the inadequacies resident in iEdison have given federal contractors and grant recipients significant pause and caused them to fret over whether the system adequately protects their valuable intellectual property rights, particularly now that use of iEdison is mandatory for many recipients of federal funding – namely for grants, cooperative agreements and other funding instruments. However, at long last, iEdison is slated to receive a much-needed overhaul, and organizations should not miss this opportunity to provide input on the challenges of iEdison and ways it can be improved.
The Bayh-Dole Act requires funding recipients to provide a host of critical information to funding agencies. In particular, recipients are expected to report “subject inventions,” elect title to such inventions, provide Confirmatory Licenses to the Government, demonstrate the inclusion of the Government Support Clause in any resultant patents, and file utilization reports. While many agencies have long “suggested” the use of iEdison for such reporting, changes to the regulations implementing the Bayh-Dole Act made use of iEdison mandatory starting in 2018. While this step toward modernizing the reporting process is theoretically positive, Government funding recipients of all shapes and sizes have encountered significant difficulties in their attempts to comply with these requirements using the current iEdison system.
While iEdison’s quirks are as unique as the inventions reported therein, there are many systemic challenges. For example, the iEdison invention report form requires users to input a complete invention disclosure in either a text box or an uploaded document, without which the report is not complete. However, if a user chooses to upload a document, the invention report will be rejected if the uploaded document is not marked with the Invention Report Number. This process creates a “chicken-egg” problem because the Invention Report Number is not generated until after the report is created – forcing contractors to create a report, then immediately edit the record with the disclosure and newly generated number. This kind of workaround risks the injection of errors into the needlessly complicated process. Correcting this headache-inducing procedure is just one of the many ways iEdison can and should be improved.
The importance of timely, complete, and accurate reporting of inventions cannot be overstated: Under most funding instruments, an awardee is vulnerable to a Government demand for title to a subject invention developed by the awardee, should the awardee fail to report the invention to the Government and elect title to that invention through the now-mandatory iEdison system. If glitches in iEdison prevent such reporting, there could be disastrous implications for funding recipients, up to and including loss of title to subject inventions.
Recognizing iEdison’s limitations and the challenges facing funding recipients, the National Institute of Standards and Technology (NIST) has published a Request for Information seeking comments regarding the “current state of the iEdison system, including, but not limited to, specific challenges and recommended improvements.” Organizations that have received – or expect to receive – research funding from the U.S. Government should not miss this chance to opine on ways to improve their user experience on iEdison. In particular, we recommend that interested parties (contractors, universities, grant recipients, etc.) candidly inform NIST of the unique and specific challenges they have faced with iEdison reporting and propose features for the new iEdison that would address those challenges. We have several suggestions based on our experiences, including:
- Modifying the system to allow increased flexibility in creating invention/patent family trees in iEdison – as currently built, the system does not permit more than one invention to be linked to a family of patents, even in the not-uncommon event that multiple inventions yield a consolidated number of patents. If there is more than one parent invention, the second parent invention cannot be linked to the patent report, and iEdison will reflect that no patent application has been filed for that invention, in violation of the Bayh-Dole requirements mandating timely submission of a patent application.
- Simplifying the Confirmatory License upload to make clear when the license must be uploaded – at the time provisional patent applications are filed? Non-provisional applications? Patent Cooperation Treaty applications? All of the above?
- Increasing user permissions so that users can delete erroneous records without needing to contact the ever-overburdened iEdison help desk.
It’s a new year. It’s a new decade. So in this time of reflection and renewal, organizations should not miss this opportunity to propose fixes to iEdison that will complement their individual invention reporting procedures and patent filing strategies. Moreover, with iEdison under review, if a contractor or grantee lacks formal invention reporting procedures, now is a great time to implement them – we expect that with a more user-friendly interface will come less leniency for late reporting due to “technical difficulties.” Given the intellectual property rights at stake, it is critical that recipients of federal funding maintain reporting procedures, ensure complete and timely reporting, and ensure that critical reporting deadlines are not missed due to technical difficulties with the existing iEdison system.
Although this commitment to improving iEdison is a step in the right direction, changes will not happen quickly – in the interim it is important to work not only with counsel well versed in the Bayh-Dole requirements, but also with those trained and experienced with iEdison and all of its present quirks and weaknesses, until those “old acquaintance be forgot.” Happy New Year!