Whether an invention is made by a government employee, the rights of the government and the inventor depend upon the facts under which the invention is made. Depending upon the facts, there are three possible outcomes:
The government will be entitled to all rights and inventor to none, and the inventor assigns the patent rights to the government.
The government may be entitled to a license to use or practice the invention, and the inventor signs a license to the government.
The inventor may be entitled to all rights and the government to non, and inventor need not sign over any of the rights to the government.
The allocation of rights is based on (see 37 CFR 501) :
The inventor is entitled to all rights if there was no government contribution in hours, funding, facilities, etc., and the invention was not related to the inventor's official duties.
The government is entitled to all rights if the invention was made during working hours, or government funds, facilities, equipment, materials, or information were used, include the time or services of other government employees on official duty; or the invention is direclty related to or made in consequence of the inventor's duties.
Under any of these criteria, the inventor may be entitled to retain all rights if the government's contribution is insufficient to justify a requirement of assignment, or the government determines not to pursue patenting or otherwise to promote commercialization of the invention. Retention of these rights by the inventor is subject to the government's right to freely use the invention for government purposes and in accordance with government employee conflict of interest statues, regulations, and policies.
Note: above text taken from the Federal Labs Consortium Handbook.
What is a Rights Determination?
The Rights Determination is a legal finding completed by the U.S. Department of Commerce General Counsel's office stating the ownership by the U.S. Government in an invention, per the guidance in 37 CFR 501 - see the previous FAQ.
What is the process?
The rights determination can be initiated through the Technology Partnerships Office by submitting a completed Invention Disclosure. TPO staff will request the Rights Determination for you and report back with a signed memo from General Counsel.
How long will it take to complete?
The Rights Determination itself usually takes 1-2 weeks to complete.
What happens after the Rights Determination?
Once the ownership rights are determined, the inventor will need to confer with TPO staff and their laboratory director to decide the next steps. The first consideration will be to determine if the invention is worth patenting. Your TPO representative can help you with each step of the process.