An (f)(2) Template

[I have updated this template to account for NIST’s April 2018 addition of an assignment requirement. Inventors now must agree to assign to their university those subject inventions that the university already owns. Sort that out as you may. I have also expanded the Agreement to include positive notice of the inventor becoming a party to the funding agreement and having conditional rights as a contractor, subject to disclosure and election to retain title per 35 USC 202(a) and 37 CFR 401.9.]

Agreement to Protect the Government’s Interest

Title of Proposal:  _________________________________________________

Funding Agency:  ________________        Federal Agreement #: ______________

As required by the University in compliance with the standard patent rights clause at 37 CFR 401.14(f)(2), I hereby agree (i) to disclose each subject invention promptly in writing to University personnel responsible for patent matters so that the University can fulfill its reporting obligations to the Funding Agency; (ii) to assign to the University the entire right, title, and interest in and to each subject invention made under the Federal Agreement in which the University has an equitable claim of ownership; and (iii) to execute all papers necessary (a) to file patent applications on subject inventions and (b) to establish the federal government’s rights in the subject inventions.

I understand that according to 37 CFR 401.14(a)(2) a subject invention assignable to the University is an invention that is or may be patentable, or may be protected by a plant variety certificate; and (2) has been conceived or first actually reduced to practice in the planned and committed activities of a federally supported project or has diminished or distracted from that project; and (4) is owned by the University. The project may be greater in scope than the work for which I have used federal funding.

I further understand that according to 37 CFR 401.1(a) the Federal Agreement includes any extensions of the agreement by any assignment, substitution of parties, or subcontract of any type. This written agreement is such an extension and by signing below I agree to become a party to the Federal Agreement, and so have the standing of a contractor. Inventions made by me under this Federal Agreement and not assignable to the University are subject inventions to which I may retain personal rights pursuant to 35 USC 202(a) as provided by the patent rights clause at 37 CFR 401.9, provided I timely disclose such inventions to the Funding Agency and elect to retain title.

 

Signed: ____________________________         Date _____________________

Printed Name:  ______________________

Consider this point, too. Since a university accepting federal funding is required by each research funding agreement to require the (f)(2) agreement, university employees can make this agreement on their own, without having to wait for the university to put a form in front of them. Since the (f)(2) agreement is a requirement of a federal contract having the force of a federal regulation, when university employees take the initiative to make the agreement, it is “an offer that the university cannot refuse.” Here’s a template (f)(2) agreement set up for employees to self-initiate:

Agreement to Protect the Government’s Interest

Title of Proposal:  _________________________________________________

Funding Agency:  ________________        Federal Agreement #: ______________

University:            _________________________________________________

As required by the standard patent rights clause at 37 CFR 401.14(f)(2), I hereby agree

(i) to disclose each subject invention promptly in writing to University personnel responsible for patent matters;

(ii) to assign to the University the entire right, title, and interest in and to each subject invention made under the Federal Agreement to which the University has an equitable claim; and

(iii) to execute all papers necessary to file patent applications on subject inventions and to establish the federal government’s rights in the subject inventions.

I understand that by making this written agreement as required, I become a party to the Federal Agreement; any inventions as defined by 35 USC 201(d) that I make under the Federal Agreement become subject inventions as defined by 35 USC 201(e); and that under 37 CFR 401.9, I am to be treated by the Funding Agency as a small business contractor with regard to the disposition of any subject invention I own.

I further understand that I have the benefit  Bayh-Dole offers to each small business contractor; namely, I have the right to retain ownership of each subject invention, provided that I timely disclose the invention. I further understand that the University may make no equitable claim on any subject invention I own as consideration for any subcontract, including this agreement, including as provided by 37 CFR 401.14(g)(1).

Signed: ____________________________         Date _____________________

Printed Name:  ______________________          [Notary:]