1. Patent Boards for Selecting Disclosures for Filing and Patents for Maintenance Presenters: Theresa Baus, Navy Jack James, NASA Gail Poulos, USDA Donald Archer, NIST

2. Patent Boards What is a “patent board” and why have one? Who participates on the board? How is a disclosure evaluated? What happens if we don’t have one? How do I set one up? What are some best practices?

3. Motivation for a Patent Board Increase quality of patent applications filed Prioritize filings Optimize filing budget impact Improve connections to inventors

4. ARS Patent Review Committees Gail Poulos Supervisory Patent Advisor Office of Technology Transfer USDA Agricultural Research Service

5. Process for Protecting Non-CRADA ARS Inventions Invention Disclosure Patent Advisor Committee Review Patent Advisor Prepare & File Patent Application Suspend Approve or other tech transfer methods more data required

6. Four “Subject Matter” Committees: Life Sciences Chemical Mechanical and Measurement Plant Protection National Patent Committees Committees members are scientists Committees meets quarterly

7. Committee Review Presentation of invention by in-depth reviewer Discussion by: Committee members Line management (Tech Transfer Coordinator & Area Office) OTT (Partnership, Patenting, & Licensing staff) Office of National Programs Committee members vote to recommend: Approve Suspend Based upon Committee’s recommendation, final decision is made by HQ and Area tech transfer professionals Scientist may appeal decision

8. Patent Committee Criteria Q1: Would a patent likely play a significant role in transferring the technology to the ultimate user beyond what could be achieved through publication? How would a patent enhance the transfer of the technology? Q2: Is the invention of sufficient scope to justify patenting? Q3: Would a patent on this invention 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? Q4: Would stakeholders support the patenting and licensing of this technology? Is there current commercial interest in the invention or a high probability of commercialization in the future? Provide the names of any companies and contact information that you think may be interested in this technology for licensing. Provide the names of any companies and contact information that you think may be interested in collaborating to further develop/commercialize this technology through a CRADA and/or SBIR proposal. Q5: Is the magnitude of the market relative to the costs of commercialization large enough to warrant a patent? Q6: Do you know of any ARS or non-ARS patents, pending patent applications, invention disclosures, or research that could impact the technology described in this invention disclosure? Q7: Is the invention ready to write as a patent application right now if approved by the committee?

9. Patent Boards at NASA Johnson Space Center John (Jack) James NASA Johnson Space Center

10. Initial round: New Technology Evaluation New Technology Evaluation (NTE) Board – Representatives of Patent Counsel and Tech Transfer Office – Review New Technology Reports only consider when government interest is clear defer pending ownership cases Can hold for further development – Meets monthly, out of board can be done Designated presenter pulls together NTE presentation package – Must be Patentable and Commercial legal states opinion of if it is patentable, T2 states if it is commercial Cases recommended for patenting are designated ‘P1’ 10

11. IP Portfolio Meeting Monthly review of 'P1' pre filing cases and USPTO pending cases Patent Attorney walks through status of cases – their further research and prior art searches – consider additional R&D as appropriate – establish priorities for filing based on budget Patent Attorney also walks through USPTO pending cases – status office actions and claims status – identify when patents are issued 11

12. IP Portfolio Meeting IP Portfolio meeting also reviews maintenance fees due – 1st maintenance fee generally paid unless technology has become unviable for commercialization – In general, 2 nd and 3 rd maintenance fees are paid if there is an active license, active license negotiations in progress, or significant potential for commercialization. – Joint decision between legal and T2 offices, legal submits justification to agency OGC 12

13. Patent portfolio characterization NASA is working to better characterize and understand overall portfolio – T2 program and Agency patent counsel Enabled by agency NASA Tech Transfer System (NTTS) database system Tag patents by industry categories – auto generate TOPS based on content in database – produces common layout based on industry sector – will be able to easily generate different marketing products Defining attributes for all agency patents in portfolio – Internal attributes: licensed or not, TRL, active R&D – 2nd phase to address external attributes such as market trends Ultimate, provide insight on when to patent and how to market portfolio 13

14. NIST Process Donald Archer Senior Patent Officer National Institute of Standards and Technology

15. National Institute of Standards and Technology (NIST) NIST Misssion - To promote U.S. innovation and industrial competitiveness by advancing measurement science, standards, and technology in ways that enhance economic security and improve our quality of life. Physics – From Bose-Einstein condensation to thermometry Materials – From molecular dynamics simulations to flow cytometry IT – From cybersecurity to instrument control Engineering – From robotics to fire simulation NIST technologies range from basic science to consensus standards for measurements. NIST Technology Partnerships Office

16. NIST has many inventions that are patentable, but a smaller number that are commercially viable and benefited by restricting usage. NIST patent criteria:  Increase the potential for current or future commercialization of the technology.  Have a positive impact on a new field of science or technology, and the visibility and vitality of NIST.  Further the goals of a CRADA or other collaborative agreement.  Further U.S. manufacturing.  Is likely to lead to a commercialization license. NIST Patent Criteria

17. Early in process – intake meeting: Technology Partnerships Office (TPO) and inventor(s) Invention disclosure form submitted: Inventors Preparation for presentation to NIST Technology Review Panel: TPO and NIST Inventor Presentation to NIST Technology Review Panel: NIST Inventor – Additional input allowed from neutral party, e.g., subject matter expert or commercial representative Technology Review Panel recommendation forwarded to OU Director for final decision: TPO Submit for filing, if so directed: TPO NIST Patent Decision Process

18. Technology Review Panel Representatives: – Material Measurement Lab (2) – Physical Measurement Lab (2) – Engineering Lab (2) – Information Technology Lab (2) – Center for Nanoscale Science and Technology (1) – NIST Center for Neutron Research (1) – Technology Partnerships Office (2) – Office of Chief Counsel (1) Technology Review Panel Representatives: – Appointed by Operational Unit Directors – Expected to have significant experience with private industry and/or patenting – Expected to serve 3 year terms and then rotate off the Panel NIST Technology Review Panel

19. Maintenance Fees Fees for keeping patent enforceable Fees increase as patent ages Selection process

20. USDA Decision Process for Payment of USPTO Maintenance Fees for Non-Licensed Inventions 1. Letter sent to Inventors, Line Management, Office of National Programs, Licensing staff, and Partnerships staff requesting input. 2. If there is consensus, the fee is paid or not paid. 3. If there is no agreement and/or it is a 7.5 or 11.5 year maintenance fee, the Patent is docketed for Committee review. 4. Committee determines by consensus if fees should be paid based on input from the original letters. 5. Current Large Entity: Fees: 3.5 year fee-$1,600, 7.5 year fee-$3,600, 11.5 year fee-$7,400.