USC receives approximately $500 million per year in sponsored research funds. The office of Contracts and Grants is responsible for the negotiation, maintenance, and record keeping associated with sponsored research agreements at USC, but sponsor collaborations often lead to much more beyond the initial agreement. The USC Stevens Center for Innovation strives to protect the intellectual property rights of USC researchers while maintaining healthy research collaborations with industry. Grant information associated with a new technology is collected and examined by our licensing team at the time of invention disclosure. We can also provide intellectual property guidance as a sponsored research agreement is being negotiated to help protect researcher rights. Our office works closely with the Department of Contracts and Grants to ensure that USC researchers continue to cultivate successful sponsored research projects.
USC researchers that do create intellectual property should maintain the following guidelines for inventions created with sponsored research.
Federally Sponsored Research
If your invention was funded in whole, or in part, by a government agency, the University is subject to various obligations and reporting requirements as set out by the Bayh-Dole Act. It is very important to disclose any funding associated with your invention promptly or rights to the invention can become compromised.
What is the Bayh-Dole Act?
The Bayh-Dole Act, also known as The Patent and Trademark Act Amendments of 1980, was watershed legislation because it gave nonprofit organizations the right to retain title to inventions resulting from federally-funded research and also allowed for the active licensing of these technologies in the marketplace for the public good. (Prior to the Bayh-Dole Act, inventions were assigned to individual government agencies that had not established strong track records of commercialization.)
Federal Reporting Requirements
If an invention arises from federally sponsored research, it is deemed a "subject invention" and the Bayh-Dole Act imposes specific requirements on the University in order to retain title to these inventions. According to 37CFR401.14(a)(2), a “subject invention” means any invention of the contractor conceived or first actually reduced to practice in the performance of work under this contract, provided that in the case of a variety of plant, the date of determination (as defined in section 41(d) of the Plant Variety Protection Act, 7 U.S.C. 2401(d)) must also occur during the period of contract performance.
Once your invention disclosure is submitted to the USC Stevens Center for Innovation, USC must then disclose the invention to the federal sponsor within two months. Upon evaluation by our Innovation Advancement and Business Development Associates, USC may then elect to retain title to the invention. From there, the University has the opportunity to market and license the invention to commercial entities for positive societal impact..
The Bayh-Dole Act sets out other subsequent reporting and diligence requirements including notifications of any patent filings and licenses granted. If at any time the University decides against pursuing a patent application, the funding agency may then choose to file or continue prosecution on behalf of the United States government. The Bayh-Dole Act also requires that the federal government be issued a royalty-free nonexclusive license to the invention called a Confirmatory License. Companies are often familiar with this government license, and it rarely, if ever, affects commercial value. In our licensing efforts, the Bayh-Dole Act also requires the University to give commercial development preference to small businesses (<500 employees).
For a more detailed written description of invention reporting obligations, please consult the Council on Government Relations website at www.cogr.edu.
Industry Sponsored Research
Intellectual property developed under industry funded research projects typically falls under contractual obligations that affect patent rights and licensing options. It is important to provide all grant information associated with a new invention when disclosing to the USC Stevens Center for Innovation.
Invention Inventorship and Ownership
When collaborating with industry sponsors, it is important to keep track of the research results exchanged to determine inventorship. Your laboratory notebook is your most powerful tool for proving inventorship. Additional suggestions for lab notebook maintenance can be found here.
Ownership of intellectual property arising out of industry sponsored research is defined in the sponsored research agreement. Upon conception of a new invention, refer to your agreement to determine the industrial partner’s rights in inventions.
It is not uncommon for sponsored research agreements to offer an option period for the industrial partner for all new inventions arising out of a research project. An option period will allow a company first rights to a license for a defined period a time. Please refer to our licensing technologies page for more information.
To discuss the invention reporting obligations that arise from federally sponsored research, please feel free to contact the USC Stevens Center for Innovation at (213) 821-5000.
Important links associated with Sponsored Research at USC
Vice Provost for Research Advancement
The Office of Research Advancement is implementing USC’s strategic plan by building inter-disciplinary research collaborations that address societal needs and by increasing the impact and prominence of USC research. The office invests in research initiatives, promotes research among sponsors, and provides services that ensure USC achieves the highest ethical standards in its research.
Contracts and Grants
The Department of Contracts and Grants provides information about campus resources, general guidelines for the preparation of proposals, guidance through the internal proposal review and approval process, review and signature of proposals on behalf of the institution, the preparation and negotiation of contracts, acceptance of awards and establishment of account numbers, miscellaneous post-award activities, such as re-budgeting approvals and subcontract administration, and a repository for proposal kits and guidelines for major agencies.
The Office of Compliance works to further USC’s mission and strategic plan, while ensuring compliance with all applicable laws, rules, regulations and promoting adherence to the highest standards of conduct.
Use this link to find out more about USC's research policies.