11:00 Welcome Remarks Wayne Swann

11:05 Presentation of Awards Rich Roca Frank Cooch

11:15 Inventions Ernest Graf Frank Cooch

Assessment Kristin Gray

11:50 Question and Answer Session

12:00 Lunch

Patents and PizzaIntellectual Property Seminar

January 30, 2001

APL Technology Transfer Cycle

Technology Transfer Cycle: From Inventions to Royalties

Part I. January 30, 2001: Inventions and Assessment

Part II. March 16, 2001: Intellectual Property (IP) Protection and Marketing

Part III. May 7, 2001: Licensing and Royalty & Development Income

Part I: Inventions and Assessment

• Inventions– Definition and ownership, Ernie

Graf - Office of Patent Counsel– Documentation, Frank Cooch -

Office of Patent Counsel

• Assessment– Kristin Gray, Office of

Technology Transfer

Inventions

Office of Patent Counsel

January 30, 2001

Inventions and Invention Ownership

Ernest R. Graf

Patent Attorney

JHU/APL Office of Patent Counsel

January 30, 2001

Outline

• Invention Definition

• Why you care about inventions– APL obligations to the Government

– Technology Transfer Opportunities

– Laboratory IP Policy

• Invention Ownership

• Summary

Invention Definition

• A technical concept or development that others would wish they’d thought of!

• Electronic, mechanical, chemical, material, procedural, software…

Why you care about

inventions1. APL Obligations to the Government

• ALL APL Government contracts require inventions to be reported to the Government

– Promptly

– But certainly … BEFORE PUBLICATION

– Here, “invention” means a “discovery which is or may be patentable…”

Consequences of not disclosing an invention to the Government:

APL may forfeit ownership of the invention

Why you care about inventions

(cont.)

• Technology Transfer• Capturing research/license dollars• Personal income

• Laboratory IP Policy• “… it is essential that the Laboratory and its

employees follow a prescribed Policy governing disclosure …of intellectual property, and, where appropriate, the transfer of the resulting technology.”

Why you care about inventions

(cont.)

Invention Ownership

• If you use JHU/APL resources … or the invention is inside the scope of Laboratory activities…

JHU/APL PROBABLY OWNS IT

(The Government probably does not own it!!)

Invention Ownership (cont.)

• If you don’t use JHU/APL resources … and the invention is outside the scope of Laboratory activities…

YOU MAY OWN IT

But … you still must disclose ALL inventions to the Laboratory

Summary

• Think often about inventions and commercial opportunities related to your APL work

• Disclose inventions early

• Ask questions of OPC/OTT staff

IT’S PART OF YOUR JOB!

Documentingand

Reporting Your Invention

Francis A. Cooch

Patent Counsel

January 30, 2001

Outline

• Why document your invention?

• How do you document your invention?– Lab Notebooks

• How do you report your invention?– Intellectual Property Disclosure Sheet

Legal Definition #1

“Hi”

Legal Definition #1

“Hi”: means your first billable hour has just commenced.

Why Document Your Invention?

• To create legal evidence of:– Date of invention– Diligence in reducing the invention to

practice– Independent development of the invention– Non-obviousness of the invention

“can I get back to you on that”

Legal Definition #2

“can I get back to you on that”: means that the lawyer does not have the foggiest idea what to say next, but

may be able to come up with a response in a week or two.

Legal Definition #2

• What do they look like?– Bound– Serial numbered– Pages numbered

Lab Notebooks

• How do I use them?– Record work contemporaneously

• In detail

• Participants

• Good and Bad

– Use ink– To delete, cross out—don’t erase– Sign and date each page– Technical witness read, sign and date

Lab Notebooks (cont.)

• Where can I get one?– Room 7-150– x5641

Lab Notebooks (cont.)

“Friday” (in response to a question as to when a particular matter will be handled by your lawyer):

Legal Definition #3

“Friday” (in response to a question as to when a particular matter will be handled by your lawyer): means a week from next Tuesday, at the earliest.

Legal Definition #3

Intellectual Property Disclosure

Sheet• Why fill it out?

– Reports your invention - formal entry into the patenting/tech transfer system

– Documents your invention

• Where can I find it?– APL Forms—Informed Filler

– OTT Web Site—pdf and Word versions

– Office of Counsel Web Site—pdf and Word versions

Legal Definition #4

“why don’t you let me get that” (said by a lawyer when reaching for a restaurant check):

Legal Definition #4

“why don’t you let me get that” (said by a lawyer when reaching for a restaurant check): means you can either pay for it now, or it will show up on your bill with the firm’s normal 25% mark-up.

Intellectual Property Disclosure Sheet

(cont.)

• Contents– Inventors– Written Description and Drawing– Funding and task no.– Publications– Signatures—inventors/witness(es)

Intellectual Property Disclosure Sheet

(cont.)• Where do I send it?

– Office of Patent Counsel, Room 7-150

• Impact of submission

• Questions—call x5632

Legal Definition #5

“Witnesseth”:

Legal Definition #5

“Witnesseth”: means absolutely nothing.

Summary

• DOCUMENT YOUR INVENTION

-- LAB NOTEBOOK

• REPORT YOUR INVENTION

-- INTELLECTUAL PROPERTY DISCLOSURE SHEET

• NO DOCUMENTATION PUTS THE LAB’S RIGHTS AT RISK!

Assessment

•What happens next?•Assessment

–criteria–input–process

•APL invention portfolio assessment

What Happens Next?

• Logged with OPC, assigned to attorney– Frank Cooch

– Ernie Graf

– Carla Krivak

• Logged with OTT, assigned to technology manager– John Bacon– Kristin Gray– Joe Suter– Norma Lee Todd

• Preliminary Assessment

Assessment Factors

and Tools • Assessment factors

– Ownership– Protectability– Technology – Market/commercial viability

• Assessment input– Inventor(s) – Outside consultants – OTT/OPC Staff

Ownership

• Government Rights

• Other funding/other ownership

• Joint inventorship

• Inventor ownership

Protectability

• Type of Intellectual Property (IP) protection• Are IP rights available?

– Enabling publication > 1 year prior to filing patent application

– Enabling description of technology transferred without non-disclosure agreement

– Obvious prior art

•Inventor(s) •Office of Patent Counsel•Office of Technology Transfer•Outside attorneys

Input:

Technology Assessment

• Stage of development– Concept

– Prototype

– Reduced to practice

• Feasibility

•Inventor(s) •Outside consultants •Office of Technology Transfer•Office of Patent Counsel

Input:

Market/Commercial Viability

• Type of technology: method/device

• Application area(s)

• Degree of improvement over current technology

• Size of market

• Interested parties/existing contacts

• Key players in the industry

•Inventor(s) •Outside sources and consultants•Office of Technology Transfer•Office of Patent Counsel

Input:

Consultants

• Technical/market consultants– Biomed– Chem/biochem– EE/ME

– IT

• Business Development– KPMG– American Express Tax and Business Services– Private business consultants

APL Invention Portfolio

• 3000+ inventions disclosed since Lab’s inception

• 450 active prior to OTT inception/ 200 disclosed since– Triage

• National Technology Transfer Assessment

Status Assignment

• Active

• In abeyance

• Inactive

• Return rights

• Exclusively licensed in all fields

348

13

109

168

9

Summary

• Inventions are the cornerstone of our program: disclose early, disclose often

• Assessment at this stage is preliminary: Should we move into the next phase of the cycle?– Publication

– Get non-disclosure agreements

• Inventor(s) input is essential at every phase

Next Steps

• Part II. March 16, 2001: Intellectual Property (IP) Protection and Marketing

• Part III. May 7, 2001: Licensing and Royalty & Development Income