Yes, an IP Assignment agreement will be required from all employees performing research activities under federal contracts or awards or renewals of federal contracts or awards effective on or after May 14, 2018.
No, the Bayh-Dole regulations do not apply to foundation awards or corporate agreements, but there may be an intellectual property term or IP ownership expectation in those agreements between the University and the foundation or corporation that would require an IP assignment agreement from employees or others supported by the foundation or corporation.
The conversations with the Senate Research Committee are now complete, and the University is returning to a set of IP assignment options that closely resemble previous options while being compliant with the federal government’s May 2018 Bayh-Dole revisions.
Specifically: DO I NEED TO SIGN A NEW FORM IF I SIGNED: OPTION 1?
A postdoctoral researcher with a transitional position preparatory to an academic or research career may hold an appointment as a Postdoctoral Associate or as a Postdoctoral Scholar The requirements for IP assignment agreements depend on the nature of the appointment.
Specifically: Yes, an IP assignment agreement must be on file at the Innovation Institute if a postdoc is employed as a Postdoctoral Associate and supported on any federal contract or grant effective or renewed on or after May 14, 2018.
All of the following are acceptable: Option 1 Option 2, Option 3 Bayh-Dole, pre-2014 assignment forms, and the Intellectual Property Assignment Agreement offered on and after August 1, 2018 (titled “Effective July 2018”). All Pitt principal investigators and employees (other than clerical or nontechnical personnel) named on a federal contract or grant effective or renewed on or after May 14, 2018 will be required to have an Option 1, Option 2, a pre-2014 assignment form, the Intellectual Property Assignment Agreement offered on and after August 1, 2018 (titled “Effective July 2018”), or an Option 3 Bayh-Dole IP Agreement on file at the Innovation Institute.
Pitt research personnel who must comply include, but are not limited to, principal investigators (PIs), investigators, research associates, postdoctoral associates, and research staff.
This form is titled “University of Pittsburgh Intellectual Property Assignment Effective July, 2018.” Yes, if you previously signed Option 1 or Option 2 Assignment Agreement Forms, an earlier assignment form, or the assignment form offered on or after August 1, 2018 (titled “Effective July 2018”), you will not need to sign a new IP assignment form to participate in federally funded research as long as your Assignment Form is on file at the Innovation Institute. Option 1 and Option 2 offer simple approaches to IP assignment that will cover inventions made in the course of internally funded, corporate funded, or foundation funded research as well as federally funded research. Effective May 14, 2018, the Option 3 Acknowledgment form will no longer be used or accepted by the University since the form is not a present assignment agreement and does not comply with the new Bayh-Dole assignment requirements.
If you previously signed an Option 3 Acknowledgement form and are conducting research as a staff or faculty employee supported on a current federal grant or contract, activated on or after May 14, 2018, you will be asked to execute the new IP Acknowledgment and Assignment agreement, called Option 3 Bayh-Dole, found at https:// so that your grant or contract remains in compliance.