453.1 - Inventions by Employees
U.S. GEOLOGICAL SURVEY DIRECTIVE
SURVEY MANUAL CHAPTER – ADMINISTRATION SERIES
Issuance Number: 453.1
Subject: Inventions by Employees
Issuance Date: 12/17/2021
Expiration Date: 12/31/2026
Responsible Office: Office of Policy and Analysis
Instruction: This supersedes Survey Manual (SM) chapter 453.1, dated August 20, 2019.
Approving Official: /s/ Katherine M. McCulloch
Associate Director for Administration
1. Purpose and Scope. This SM chapter establishes policy for reporting inventions developed by U.S. Geological Survey (USGS) employees.
2. Authority.
A. Executive Order 10096, as amended, “Providing for Uniform Patent Policy for the Government with Respect to Inventions by Government Employees and for the Administration of Such Policy.”
B. 43 Code of Federal Regulations (CFR) 6, Subpart A, Inventions by Employees.
C. 37 CFR 501.6, Criteria for the determination of rights in and to inventions.
E. 5 United States Code (U.S.C.) § 4500 et seq., Incentive Awards.
F. Departmental Manual (DM) Part 453, Inventions and Patents (citing Patents, 35 U.S.C. §§ 1-376; Leahy-Smith America Invents Act, 35 U.S.C. §§ 1-37; Federal Technology Transfer Act of 1986, § 3710a).
G. 370 DM 451.4, Awards and Recognition Program – Monetary Awards.
3. Policy. USGS obtains the entire right, title, and interest in and to all inventions made by any of its employees subject to the criteria set forth in Executive Order 10096. To avoid loss of rights in such an invention, the Department of the Interior (DOI) regulation requires the reporting of any invention made by an employee of the USGS. Employee-inventors must report inventions to the Office of Policy and Analysis (OPA) prior to or concurrent with a publication or other release to the public. The USGS reserves the right not to pursue patent protection on any invention that does not meet its criteria for patenting or mission needs.
4. Definitions.
A. Employee means an employee of an agency in either the competitive or excepted service, and for the purposes of this chapter, includes employees who have voluntarily separated from an agency and employees who have retired from an agency. Information on individuals in the Emeritus Program is covered in Section 6.C., General Procedures. This policy does not include contractors (refer to Section 2.E., Authority).
B. Incentive means a monetary award offered to eligible individuals or groups that participate in the USGS invention and patent process.
C. Invention, more broadly defined in 453 DM 1, Inventions by Employees, means any unique or novel device, process, improvement, etc., that did not exist previously and that is recognized as the product of unique intuition or genius, as distinguished from ordinary mechanical skill or craftsmanship.
D. Patent means exclusive rights granted by a patent office to the applicant to exclude others from making, using, or selling the invention for the life of the patent.
E. Patent application means any request for examination of an invention filed at a patent office, where a patent may be issued from the application. This excludes provisional and Patent Cooperation Treaty applications.
5. Responsibilities.
A. The Chief, Office of Policy and Analysis is responsible for monitoring and coordinating USGS patent activities and is the USGS liaison to the DOI Office of the Solicitor on matters related to patents.
B. Center Directors or Program Chiefs and Supervisors are responsible for reviewing the invention reports for completeness and rendering assistance, as required by the employee- inventor, in the preparation and processing of these reports. A Center Director or Program Chief must provide a written recommendation either supporting or not supporting pursuit of patenting an invention to OPA. Indication of support includes confirmation of the availability and the limited amount of funds for payment of any Incentive Award.
C. The Employee-Inventor has a duty to self-report an invention and must prepare a Form DI-1215, Report of Invention (ROI) in coordination with their immediate supervisor, Program Chief, and Center Director. The employee-inventor may submit the ROI to OPA with the supervisor’s approval. If an employee-inventor asserts that they are not required to assign the invention to USGS, the employee requests a formal determination of rights by submitting the Form DI-1218, Invention Rights Questionnaire, to OPA.
D. The DOI Office of the Solicitor is responsible for issuing a formal determination of rights when requested by OPA through submission of the Form DI-1218, Invention Rights Questionnaire.
6. General Procedures.
A. Preparation and Processing. Center Directors or Program Chiefs and Supervisors transmit the ROI to OPA for review and evaluation for patenting either directly or may approve the employee-inventor to self-submit to OPA. The three factors considered for patenting are USGS’ needs, patentability, and potential for commercialization.
B. Timely Reporting of Inventions. If an invention is publicly known or sold, it loses eligibility to be patented 12 months from public disclosure. Therefore, the employee-inventor must submit the ROI as soon as the inventions is conceived. For this policy, an invention will still be deemed as reported in a timely manner if filed prior to, concurrent or within 8 months of a publication.
C. Incentives. Incentive awards should be funded by the Center or Program where the invention is made by completing Form DI-451, Award Certification. A \$500 incentive award will be made to each USGS employee-inventor when a patent application or a divisional thereof has been filed for an invention with the support of the employee-inventor’s Supervisor. An additional \$800 incentive award will be made to each USGS employee-inventor when a patent is issued. This policy excludes continuation applications, and multiple patent applications or patents granted for the same invention. Separated employees, including those in the Emeritus Program, are prohibited from receiving any incentive awards if the invention for which the award is proposed was conceived after the employee separated from the Federal Government.