Overview: US Intellectual Property Rights and the SBIR/STTR Stakeholders

Congratulations, you have obtained an SBIR/STTR grant/contract award. This is a legally binding funding agreement with a federal agency for the funding of your research. This module is designed to be an introduction to understanding the agreement and management of intellectual property (or, IP) rights (patents, trademarks, copyrights, trade secrets) flowing from that agreement with respect to the federally funded subject invention; understanding the difference(s) between the conception of and reduction to practice for a “subject invention” and the diligence in maintaining record keeping; and identifying the intellectual property rights in inventions, discoveries, or ideas developed under SBIR/STTR grants/contracts. We also shall discuss ownership of these IP rights and the grantee’s obligations to the federal funding agency under an SBIR/STTR grant/contract award (e.g., “march -in-rights” under the Bayh-Dole Act, the small business timeline under FAR 52.227-11, and the Federal Government’s receipt and recordation of its Confirmatory License under Executive Order 9424). Finally, we also shall cover whether you can negotiate the terms of your IP rights with the federal government under the legally binding funding agreement. The module will focus on the “rules of the SBIR/STTR road” and your IP rights so that you may be proactive in protecting what you own.

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