Recent changes in Bayh-Dole utilization reporting carry significant implications for all recipients of Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) funding. The Bayh-Dole Act empowers agencies to ask for periodic reports on the utilization or attempts at obtaining the utilization of subject inventions. As a recipient of a federal research grant, SBIR’s are obligated to report all patents, patent applications, and invention disclosures using the iEdison system.
New NIST Reporting Requirements
As of October 1, 2023, all agencies participating in the iEdison system started requesting additional information for annual utilization reporting. Users will see notifications requesting utilization reports on all subject inventions to which they have elected titles, regardless of the funding agency, starting on that date. It is important to note that reporting periods now align with the federal fiscal year.
SBIR/STTR recipients, who should have already established their iEdison accounts, are now required by NIST to furnish additional information about commercialized inventions including:
A comprehensive list of products commercialized as an outcome of federally-funded research.
The disclosure of the country of manufacture, indicating whether production occurs in the U.S. or offshore.
The number of units sold and gross revenues generated within the fiscal year.
Further information on reporting the commercialization plan/phase of each subject invention can be found on the NIST website: https://www.nist.gov/iedison/2023-utilization-questions-update
Collaborative Invention Reporting
In instances where inventions are developed in collaboration with other institutions, each subject invention should be reported in iEdison only once. If a subject invention is jointly owned with one or more organizations, the organization that received the federal funding award should report in iEdison. In cases where multiple joint owners received federal funding leading to the subject invention, they should collectively decide who will take the lead in iEdison reporting with only one joint owner reporting. As a licensee of federally-funded technology developed at a university or medical research center, SBIR’s may be asked to report this information back to the institution where the research was conducted.
All Federal Agencies Will Transition to iEdison
While not all federal agencies currently utilize iEdison for Bayh-Dole compliance reporting – such as NASA and certain DOD agencies – all agencies are slated to transition to iEdison by the end of 2024. Until then, SBIR/STTR recipients should continue to use existing reporting channels.
With an amplified focus on advancing scientific research and bolstering domestic manufacturing to commercialize federally-funded inventions, federal agencies can be expected to place greater emphasis on iEdison compliance monitoring. Consequently, small businesses participating in the SBIR and STTR programs will need to update their iEdison compliance programs to ensure the security of their funding status amidst these significant reporting changes.