1. The Patent Process

2. Protection of Ideas or Inventions An idea/know how Generally speaking, we would like to protect inventions that have significant commercial value This protection is often required to justify the cost of commercial development

3. Protection of Ideas or Inventions Private Sector –Patent –Copyright –Trade secret Government –Patent

4. Patent VS Trade Secret Patent –Formal enforceable protection –Process forces disclosure –Disclosure facilitates improvement Trade Secret –Not enforceable –No disclosure (must be maintained as a secret)

5. Title 101. Inventions Patentable “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent there for, subject to the conditions and requirements of this title.”

6. Patents Utility Patent Plant Utility Patent (sexual reproduction) Plant Patent (vegetative reproduction) Plant Variety Protection Certificates (sexual reproduction)

7. Utility Patents

8. ARS seeks a patent only if there is reason to believe that such a patent will enhance the likelihood that the technology will be transferred.

9. Patenting Novel Useful Non-obvious To obtain a patent for an invention, that invention must be:

10. Non-obvious “…to a person having ordinary skill in the art to which said subject matter pertains.” Section 103

11. Basic Process Invention Disclosure Patent Review Committee (3-4M) Write Patent Application (1yr) File Patent Application with Patent and Trademark Office (PTO) Examination by PTO Patent Allowed (½ - 1yr) Patent Issued 1- 2yrs)

12. So you think you have an invention! Talk to you Patent Advisor or Technology Transfer Coordinator Keep accurate records in your laboratory notebook Do not disclose to outside party

13. The Patent Advisor Can: Help in determining if your invention is patentable Advise on information that may be needed for the Patent Application Resolve questions about disclosure Answer questions regarding inventorship

14. Basic Steps Invention Disclosure Patent Application Patent

15. Invention Disclosure Initiated by Scientist in RMIS Abstract format –You can attach additional information Approved by RL/LD/CD/AD First proof of inventorship Reviewed by Patent Advisor Referred to Patent Review Committee Is confidential

16. The Invention Disclosure Provides Information on the technology Commercial potential Related publications that may affect patentability Advantages over the state of the art Possible inventors Possible CRADA involvement

17. Patent Review Committee Chairperson An in-depth reviewer A Patent Advisor Several members Recommendations: –Approve –Defer –Suspend

18. Patent Application Usually prepared by Patent Advisor, with assistance of the inventors Is a very complex document Would like to have complete within 1 year of approval of the Invention Disclosure Filed with the Patent and Trademarks Office (PTO)

19. PTO Process Provide Serial Number 2-6 weeks after filing Assigned to an Examiner Examiners actions –Restriction Requirements –Non-Final Office Action –Final Office Action

20. Final Office Action Advisory Action Reopen Prosecution Allow Go to Appeal

21. Claims The Claims list what is protected Language of the Claims –Comprising –Consisting essentially of –Consisting of Claims are dynamic through the process

22. Inventions, Patents, and Licenses in FY99 162 Invention Disclosures filed 84 Patents Applications filed 74 Patents issued 29 Licenses issued Income from licenses = $2,377,000

23. Technology Transfer Coordinator United States Department of Agriculture Agricultural Research Service Beltsville Area Director’s Office Building 003, Rm. 208, BARC-West Beltsville, MD 20705 Voice: 301-504-6421 FAX: 301-504-6001