Resources for VA WOC Appointees
Frequently Asked Questions (FAQ)
Question: Who must disclose to VA?
Answer: Salaried Employees (including IPA's),
WOC Appointees with
Research Responsibilities, Dual Appointment Personnel.
Question: Is it true if I disclose to my university
affiliate I do not have to disclose to VA also?
Answer: No. Under VA regulations and policies
all inventions must be disclosed to VA.
Question: What happens when more than one organization
Answer: The VA recognizes that other organizations
may assert an ownership right in the same invention that results from
their relationship with the inventor. Under these circumstances both
organizations are entitled to ownership in the invention; i.e., joint
Question: The VA did not make any contribution to my invention. Am I still required to submit a VA disclosure?
Answer: Yes. Many employees believe that if an invention is not made during official working hours or with no contribution of the VA, a disclosure of the invention is not necessary. Even if VA made no contribution towards an invention, i.e., the invention was made entirely outside official working hours, unrelated to VA employment, and with no use of VA facilities, equipment, etc., a VA disclosure is still required by Federal law. Following receipt of a disclosure, the Technology Transfer office will review the file and make a recommendation regarding ownership and submit it to the Office of General Counsel (OGC). OGC will review the facts presented in the disclosure and issue a legal determination of rights.
Question: My invention is not patentable. Am I still required to submit a VA disclosure?
Answer: Yes. Federal law and regulations concerning inventions made by VA employees, regardless of whether or not the invention is patentable, require that a disclosure be made. Even if an invention is found not to be patentable, the VA can pursue other opportunities with a commercial partner to further develop the invention. Specifically, a Cooperative Research and Development Agreement (CRADA) provides management of any new discovery or intellectual property that may result from the collaboration.
Question: Does the Bayh-Doyle Act preclude this?
Answer: No. Based on a July 30, 2001 letter
from the Department of Commerce "joint ownership may arise for
an invention by a person who holds a joint appointment with the Department
of Veterans Affairs and a university.
Question: What option is available when joint
Answer:Cooperative Technology Administration
Agreement(CTAA). (Formerly known as Inter-Institutional Agreement (IIA) See Model Agreement section.
Question: What is the purpose of the CTAA and
how does it work?
Answer: Allows VA and university to be joint
owners of the intellectual property; defines terms; outlines the handling
of intellectual property; defines royalty split and revenue income handling;
and encompasses all existing and future intellectual property.
Question: Can the VA retain equity in lieu of
money under a license agreement?
Answer: No, VA cannot retain equity. However,
CTAA partners may retain total equity until sold and VA's portion provided.
Question: Should inventors refrain from publishing
papers or making oral disclosures before a patent application is filed?
Answer: Inventors must take extreme care not
to disclose information that would enable someone skilled in the technology
to which the invention pertains to make and/or use the invention. Public
disclosure could include talks, lectures, poster presentations, newspaper
or newsletter interviews, all publications, public use, sale, or offer
to sale of the invention. Disclosure of any information prior to filing
appropriate paperwork with the Patent and Trademark Office (PTO) voids
all international patent rights. Domestic US patent rights are voided
if appropriate paperwork is not filed with the PTO within one year of
disclosure of pertinent invention information.