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• Today, the Department of Veterans Affairs takes
  credit for the work our researchers did in the
  past and will do in the future.
• Anthony J. PrincipiSecretary of Veterans Affairs
  

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• Disclose
• Disclose
• Disclose

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• Disclosure does not automatically mean VA
  ownership.

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• IMPORTANT
• All VA employees must disclose.
• Talk to appropriate staff.
• Information available on www.vard.org.
• VA receives appropriate credit.
• Videos Available

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• REMINDER
• New Report of Invention Form required on all
  invention disclosures submitted after November 1,
  2003

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• Under Executive Order 10096 when inventions are
  made by VA salaried employees with research
  responsibilities and there was a contribution
  by the VA, then the VA may assert an ownership
  right in the invention.

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• Without Compensation (WOC) Appointments

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• In Kornbluth v. VA it was held that WOCs are not
  included in the definition of employees under
  Executive Order 10096.

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• OGC developed the VA-WOC Appointee Intellectual
  Property Agreement
• Who
• What
• When

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• Who?
• WOCs performing VA approved research ONLY!!!!

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• What?
• WOCs performing research must disclosure any and
  all inventions made to VA.

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• When?
• VA can assert ownership rights if certain
  criteria are met, which could result in joint
  ownership with another organization.

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• Criteria to Assert Ownership
• VA has made a significant contribution to the
  making of the invention.
• (conception/reduction to practice)

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• Contributions
• Space
• Equipment
• Materials
• Funding
• Information
• Time Services of Other Employees

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• Other criteria

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• Cooperative Technology Administration Agreement
  (CTAA)

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• The VA recognizes that other organizations may
  also assert an ownership right in the same
  invention, which results from their relationship
  with the inventor.

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• Bayh-Dole Act
• Intended to move Federally developed intellectual
  property to the market place by authorizing
  non-profits and others the ability to assert
  ownership rights.

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• Under these circumstances if both organizations
  assert an ownership in the invention, joint
  ownership arises.

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• The Department of Commerce has acknowledged joint
  ownership may arise for an invention made by a
  person who holds a joint appointmentwith the
  Department of Veterans Affairs and a university.

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• The Department of Commerce has also adknowledged
  that the Bayh-Dole Act does not preclude joint
  ownership.

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• What option is available when joint ownership
  occurs? CTAA

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• What is the purpose of the CTAA (how does it
  work)?
• 1. Allows VA and the University to be joint
  owners of the IP
• 2. Defines terms
• 3. Outlines the handling of intellectual property
• 4. Revenue split/royalty income
• 5. Encompasses all existing and future IP

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• Allows VA and the University to be joint owners
  of the IP.

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• Defines terms
• Dual Appointment Personnel (DAP)
• Significant Contribution
• Pooled Amount
• Administrative Fee

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• Outlines the handling of intellectual property.

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• Revenue Split

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• Royalty funds shared between VA and affiliates
  are pro rated based on the number of employees
  that is whether the inventor is full-time VA,
  full-time affiliate, or holds a dual appointment
  (DAP) at both institutions.

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• Example One
•  
• Two employees jointly develop intellectual
  property where one inventor is full-time VA and
  one inventor is full-time affiliate the royalty
  split would be 50 VA and 50 affiliate.
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•     100/2 full-time employees 50 per
  full-time employee
• 1 (full-time VA employee) x 50 50

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• Example Two
•  
• Five employees jointly develop intellectual
  property where four employees are full-time
  affiliate and one is DAP the royalty split would
  be 90 affiliate and 10 VA.
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• 100/5 employee inventors 20 per employee
  inventor
• 4 (full-time affiliate employees) x 20 80
• 1 DAP x 20 20/2 (DAPS are split 50/50) 10
• 80 10 90 to Affiliate

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• Royalty Income
• Two Components
• Personal
• Non-Personal

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• Personal royalty income is paid directly to the
  inventor.

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• Non-personal royalty income is money paid VA
  after the inventor has been paid and associated
  costs and other related expenses have been
  recovered. These funds are then distributed
  according to VAs royalty policy.

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• What happens if there is no CTAA?

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• Any time VA asserts ownership a provisional
  patent application is filed. This provides up to
  one year of protection while VA conducts
  technology assessment and future IP management
  planning.

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• VISN InitiativeThe total number of inventions
  disclosed per facility/VISN and the total number
  of inventions disclosed to an affiliate but not
  to a VA per facility/VISN. VHA Strategy
  29Take full advantage of research-related
  intellectual property opportunities. VHA
  Objective 17Increase revenue and efficiency
  through private sector partnerships, technology,
  and improved business practices. 

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• SAMPLE REPORT
•  
• VISN 5, VA Capitol Health Care Network
• Reporting Period October 1 2002 September 30,
  2003
• Total number of inventions disclosed.

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• Total number of inventions disclosed to an
  affiliate but not to a VA.

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• Non Compliance Letters
• Issued when VA learns of non disclosed invention.
• Standard letter to ACOS with cc to COS requesting
  action within 30 days.
• If not resolved, standard letter to MCD with cc
  to VISN Director outlining circumstances/requestin
  g action within 30 days.

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• If you receive such a letter it is essential that
  you resolve the issue within the time frame
  outlined. This will avoid involving your
  facility or VISN director.
• If, at a later date, your facility receives a
  similar letter it is essential that you review
  your IP education efforts. Again, this will
  avoid involving your facility or VISN director.
  
•  

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• Cooperative Research and Development Agreement
• (CRADA)
• Material Transfer Agreement
• (MTA)
• Confidential Disclosure Agreement
• (CDA)

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• CRADA
• A CRADA is a legal agreement between VA and one
  or more non-Federal parties.

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• Purpose
• A CRADA is used to establish a collaboration to
  conduct further RD on inventions, whether VA or
  privately owned.

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• Review and Approval
• Negotiated by Facility
• Pre-review by TTP
• Final Review and Approval by OGC
• Signed and Executed by Facility Director

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• IMPORTANT
• CRADAs involving foreign partners have
  additional requirements. Prior to entering such
  negotiations please call the TTP office to
  discuss these additional requirements.

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• MTA
• MTAs are legal agreements between the VA
  facility and another party.

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• Purpose
• MTAs allow for the transfer and use of unique
  material from one party to another for research
  purposes.

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• Review and Approval
• Negotiated by investigator/ACOS/facility
• Signed and Executed by ACOS/facility

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• CDA
• CDAs are legal agreements between the VA
  facility and another party.

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• Purpose
• CDAs allow for the exchange of confidential
  and/or proprietary information between parties.

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• Review and Approval
• Negotiated by investigator/ACOS/facility
• Signed and Executed ACOS/facility

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• HAVE QUESTIONS?
• NEED ANSWERS?
• www.vard.org
• Call TTP staff

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