1. Intellectual Property Seminar
Patents and Pizza
Intellectual Property Seminar
January 30, 2001
11:00 Welcome Remarks
Wayne Swann
11:05 Presentation of Awards
Rich Roca
Frank Cooch
11:15 Inventions
Ernest Graf
Assessment
Kristin Gray
11:50 Question and Answer Session
12:00 Lunch

2. APL Technology Transfer Cycle

3. 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

4. Part I: Inventions and Assessment
Definition and ownership, Ernie Graf - Office of Patent Counsel
Documentation, Frank Cooch - Office of Patent Counsel
Assessment
Kristin Gray, Office of Technology Transfer

5. Inventions Office of Patent Counsel
January 30, 2001

6. Inventions and Invention Ownership
Ernest R. Graf
Patent Attorney
JHU/APL Office of Patent Counsel
January 30, 2001

7. Outline Invention Definition Why you care about inventions
APL obligations to the Government
Technology Transfer Opportunities
Laboratory IP Policy
Invention Ownership
Summary

8. Invention Definition
A technical concept or development that others would wish they’d thought of!
Electronic, mechanical, chemical, material, procedural, software…

9. Why you care about inventions
1. 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…”

10. Why you care about inventions (cont.)
Consequences of not disclosing an invention to the Government:
APL may forfeit ownership of the invention

11. 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.”

12. 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!!)

13. 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

14. 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!

15. Documenting and Reporting Your Invention
Francis A. Cooch
Patent Counsel
January 30, 2001

16. How do you report your invention?
Outline
Why document your invention?
How do you document your invention?
Lab Notebooks
How do you report your invention?
Intellectual Property Disclosure Sheet

17. Legal Definition #1
“Hi”

18. “Hi”: means your first billable hour has just commenced.
Legal Definition #1
“Hi”: means your first billable hour has just commenced.

19. 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

20. “can I get back to you on that”
Legal Definition #2
“can I get back to you on that”

21. 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.

22. Lab Notebooks What do they look like? Bound Serial numbered
Pages numbered

23. Lab Notebooks (cont.) 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

24. Lab Notebooks (cont.)
Where can I get one?
Room 7-150
x5641

25. Legal Definition #3
“Friday” (in response to a question as to when a particular matter will be handled by your lawyer):

26. 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.

27. 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

28. Legal Definition #4
“why don’t you let me get that” (said by a lawyer when reaching for a restaurant check):

29. 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.

30. Intellectual Property Disclosure Sheet (cont.)
Contents
Inventors
Written Description and Drawing
Funding and task no.
Publications
Signatures—inventors/witness(es)

31. Intellectual Property Disclosure Sheet (cont.)
Where do I send it?
Office of Patent Counsel, Room 7-150
Impact of submission
Questions—call x5632

32. Legal Definition #5
“Witnesseth”:

33. “Witnesseth”: means absolutely nothing.
Legal Definition #5
“Witnesseth”: means absolutely nothing.

34. Summary DOCUMENT YOUR INVENTION -- LAB NOTEBOOK REPORT YOUR INVENTION
-- INTELLECTUAL PROPERTY DISCLOSURE SHEET
NO DOCUMENTATION PUTS THE LAB’S RIGHTS AT RISK!

35. Assessment What happens next? Assessment
criteria
input
process
APL invention portfolio assessment

36. 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

37. Assessment Factors and Tools
Ownership
Protectability
Technology
Market/commercial viability
Assessment input
Inventor(s)
Outside consultants
OTT/OPC Staff

38. Ownership Government Rights Other funding/other ownership
Joint inventorship
Inventor ownership

39. 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
Input:
Inventor(s)
Office of Patent Counsel
Office of Technology Transfer
Outside attorneys

40. Technology Assessment
Stage of development
Concept
Prototype
Reduced to practice
Feasibility
Input:
Inventor(s)
Outside consultants
Office of Technology Transfer
Office of Patent Counsel

41. 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
Input:
Inventor(s)
Outside sources and consultants
Office of Technology Transfer
Office of Patent Counsel

42. Consultants Technical/market consultants Business Development Biomed
Chem/biochem
EE/ME IT
Business Development
KPMG
American Express Tax and Business Services
Private business consultants

43. APL Invention Portfolio
3000+ inventions disclosed since Lab’s inception
450 active prior to OTT inception/ 200 disclosed since
Triage
National Technology Transfer Assessment

44. Status Assignment 348 109 168 9 13 Active In abeyance Inactive
Return rights
Exclusively licensed in all fields
348
109
168 9 13

45. 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

46. Next Steps
Part II. March 16, 2001: Intellectual Property (IP) Protection and Marketing
Part III. May 7, 2001: Licensing and Royalty & Development Income