1. Patents in USDA Agricultural Research Service
Gail Poulos
Supervisory Patent Advisor

2. USDA-ARS Office of Technology Transfer
Coordinates Tech Transfer activities in ARS
Has authority to develop and sign Cooperative Research And Development Agreements (CRADAs)
Has sole authority for licensing any inventions developed within any of the USDA agencies (including Forest Service, FSIS, APHIS)

3. Office of Technology Transfer
Centralized in policy and approvals, licensing, marketing; decentralized in negotiation and implementation of CRADAs
Patenting
8 registered patent agents
Located in Beltsville, MD; Peoria, IL; Albany, CA
Marketing
Targeted marketing
Web subscribe Tech Alerts
Partnering opportunities
Licensing
4 senior licensing specialists
HQ based
Tech Transfer
Coordinators
7 specialists with life science / ag background
Distributed across geographic Areas of ARS
Our office is structured such that we are centralized in policy and approvals, licensing, and marketing, but decentralized in negotiation and implementation of Cooperative Research and Development Agreements.
Our patenting section consists of 8 registered patent agents distributed at 3 sites.
The marketing section conducts targeted marketing, manages a web-based self-subscribe feature called Tech Alerts whereby companies are notified of new available technologies by categories, and assists in finding research partners by developing 1-pagers for the web or mailings.
The licensing section consists of 4 senior licensing specialists,
And 7 forward-deployed Technology Transfer Coordinators – all GS 15s with strong research and science backgrounds. They are located in the Area Offices of ARS, but report to headquarters --- providing service to scientists and the Area Director, but maintaining a national rather than regional perspective.

4. Office of Technology Transfer
Byron Stover –ERRC
Evelyn Rabin -- NAA
Patent Advisors
Byron Stover - BA
Albert Tsui – MWA & NPA
Gail Poulos – SAA
Evelyn Rabin - MSA
Beth Sampson / Howard Owens – PWA
/ 5731
Albert Tsui – NPA
Randy Deck – MWA & SPA

5. OTT as Representative and Liaison
University Interests
ARS
Mission
U.S. Company
Interests

6. Professional Services of ARS OTT – Patent Section
Create, manage & convene Patent Review Committees (e.g., Invention Disclosure)
Prepare, file, and prosecute U.S. patent applications,
Coordinate cooperator-filed U.S. patent applications
Facilitate and direct foreign filings with contractor
Training of All ARS scientists
We’ve also changed some of the policies in ARS to some degree. We have done so because of the changing world of intellectual property and our need to continue fostering the research partnerships.
With the passage of the Technology Transfer and Commercialization Act of 2000, we can now license “protectable” technologies. And we do so, primarily with hybridomas used in developing monoclonal antibodies.
Secondly, we have developed a new process to determine whether we need to protect IP of new plant materials. This is increasingly important in dealing with our university partners.
And we anticipate the future need to protect animal intellectual property as we develop improved breeds of animals for food that are resistant to disease, faster growing, or otherwise modified to enhance international competitiveness.

7. Professional Services of ARS OTT – Patent Section
Assist scientist in preparing electronic Invention Disclosure
Determine whether invention under a CRADA is a “subject invention”
Determine need to present CRADA invention to Patent Committee
Perform inventorship determination
We’ve also changed some of the policies in ARS to some degree. We have done so because of the changing world of intellectual property and our need to continue fostering the research partnerships.
With the passage of the Technology Transfer and Commercialization Act of 2000, we can now license “protectable” technologies. And we do so, primarily with hybridomas used in developing monoclonal antibodies.
Secondly, we have developed a new process to determine whether we need to protect IP of new plant materials. This is increasingly important in dealing with our university partners.
And we anticipate the future need to protect animal intellectual property as we develop improved breeds of animals for food that are resistant to disease, faster growing, or otherwise modified to enhance international competitiveness.

8. Three “Subject Matter” Committees
National Patent Committees
Three “Subject Matter” Committees
Life Sciences
Chemical
Mechanical and Measurement
Each cover all geographic Areas of ARS

9. Advantages To The ARS
Uniform committee recommendations across the Agency
Committee recommendation within three months of filing an Invention Disclosure
Scientists and management notified of annual schedule at the beginning of each fiscal year

10. Patent Committee Criteria
Invention Disclosure
Patent
Advisor
Committee Review
“The Five Questions”

11. Patent Committee Criteria
Invention Disclosure
Patent
Advisor
Committee Review
Q1: Is there current commercial interest in the invention or a high probability of commercialization in the future?

12. Patent Committee Criteria
Invention Disclosure
Patent
Advisor
Committee Review
Q2: Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent?

13. Patent Committee Criteria
Invention Disclosure
Patent
Advisor
Committee Review
Q3: Would the patent likely play a significant role in transferring the technology to the user?

14. Patent Committee Criteria
Invention Disclosure
Patent
Advisor
Committee Review
Q4: Would a patent be enforceable, i.e., is the invention drawn to, or does it employ a unique and readily identifiable material or device which could be bought or sold?

15. Patent Committee Criteria
Invention Disclosure
Patent
Advisor
Committee Review
Q5: Is the invention of sufficient scope to justify patenting?

16. NEW USPTO RULES
Strategies
Implications

17. Strategies
Review Entire Pending Docket Prior to Effective Date of Rule Change To:
a. Determine number applications that have continuation potential
b. Determine which applications should be filed prior to effective date of the rule
c. Set up standard operating procedures for applications that will be filed after the effective date of rule change.
d. Determine which applications do not comply with the 5/25 rule and correct.

18. Strategies
File Provisional Applications for Technologies that will not meet the 5/25 Rule-Use the one year period to determine claims that should be protected by consulting with inventors.
National committees will facilitate determining if other Areas in ARS have inventions that could be considered under 37 CFR 1.78 (f) (3) as having at least one patentably indistinct claim –the Patent Advisors will determine if the inventions can be combined in one application.

19. Strategies for Jointly-owned Inventions
Will need to work more closely with a partner. May be an issue in that partner may have to disclose information about applications and claims that are not published. If partner does not fully disclose, may lose U.S. Government rights if application is abandoned by USPTO.
Establish that the government is exercising due diligence in complying with rules. Protect govt. interest by written record of request for solely-owned (cooperator) patent applications having overlapping claims.
Note: Filing an explanation that claims are patently distinct creates potential liability for joint owners and office preparing and prosecuting application

20. Implications to Operations
Increase in the number of provisional and new applications filed will increase costs:
Note provisional fee: $ patent application filing: about $1500-$5,000
Increase in number of applications going to appeal will increase pendency & costs:
Note: notice of appeal fee $510.00; appeal brief fee $510.00
Potential for the need to write more focused claims: Note: will result in narrow claims
Need to increase number of provisionals filed
File separate cases for distinct inventions to avoid restriction practice

21. Implications to Operations
Potential for ARS preparing and prosecuting more patent applications for small business partners and university partners.
Future partnering with large business may be more difficult if development of patentable technologies occurs. Presumption is that large business will opt for trade secret rather than patent protection
Thorough review of all CRADAs to determine if there are overlapping technologies with different partners and different research units in the agency. i.e., CRADAs for biofuel research using same starting materials
Need to increase number of provisionals filed
File separate cases for distinct inventions to avoid restriction practice

22. Office of Technology Transfer
5601 Sunnyside Ave
Beltsville, MD 20705
(301)