If you’ve secured your funding and begun working on your project, the fruits of your labor may manifest in the form of an invention. We’ll refer to your invention as a “subject invention” since it was conceived of (or first reduced to practice) in the performance of DoE-funded work. As a result, it’s subject to a few legal regulations, namely those related to the Bayh-Dole Act of 1980. This isn’t a bad thing. Many people assume that a regulation automatically restricts the commercialization of inventions.

In fact, there are very few restrictions in this regard. The important thing, and what the Bayh-Dole Act regulates, is the reporting of your invention. Since the Energy Department funded your research, they have a few stipulations to monitor the use of their awarded funds. Properly reporting your invention adheres to their expectations and protects your intellectual property.

A subject invention officially belongs to the DoE unless you follow the proper procedure to take ownership of your invention.

So imagine that you receive funding through the DoE’s Office of Energy Efficiency and Renewable Energy. Your team develops a more durable solar panel that is more resistant to water damage. Because this came about thanks in whole or in part to the Energy Department’s funding, you have a subject invention on your hands.

You must do three things to protect your invention:

• Disclose your subject invention to the DoE in a timely manner.
• Maintain your disclosure/election with the DoE.
• Elect to retain title worldwide to the subject invention in a timely manner.

You’ll disclose your invention in writing to the DoE using their iEdison system. This is where the entire process will be maintained, so be sure to familiarize yourself with the interface. There is specific information the DoE reviewers will be looking for, such as “the nature, purpose, operation, and the physical, chemical, biological or electrical characteristics of the invention.”

You can download a full list of requirements and a handy cover sheet and a timeline of events in our Reference Guide.

To monitor inventions developed under their funding and the use of their funds, the Energy Department requires periodic reports on the use of the invention or efforts to obtain that utilization. Additionally, any publications of the subject invention must be reported.

If you choose to discontinue the prosecution of a patent application or choose not to defend it in a reexamination or opposition, this must be reported to the DoE through the relevant patent office.

You must elect to retain the title of the invention within roughly twenty-four months. By doing this, you retain rights to your invention, but the Energy Department is granted a “nonexclusive, nontransferable, irrevocable, paid-up license” to practice—or have the invention practiced on its behalf—worldwide.

By failing to do so, the government can take ownership of the invention.