1. Distribution A. Approved for Public Release Involving Inventors in the Technology Transfer Process Dr. J. Scott Deiter IHDIV Tech Transfer Director FLC Chairman jjjj oooo hhhh nnnn.... dddd eeee iiii tttt eeee rrrr @@@@ nnnn aaaa vvvv yyyy.... mmmm iiii llll(301) 684-0289 FLC MA Regional Meeting Gettysburg, PA Sept, 2009

2. Distribution A. Approved for Public Release 2 Training for Scientist/Inventor Annual training on IP patent processes and Partnering through CRADAs Describe the lab’s “Patent Process” –Filing invention disclosure –Invention Evaluation Board –Writing patent applications –Assignment of rights –Tech Transfer Office contact info –Commercial fields-of-use

3. Distribution A. Approved for Public Release 3 Scientist/inventor protection of an invention? ORTA reinforce the importance of the lab notebook –Proof of “First to invent” Keep appropriate records, dates Do not reveal your invention to non-government personnel Make sure HOME address is on disclosure After completion, EMAIL form and any supporting data, drawings, etc. to Tech Transfer Office Inventor, ORTA Rep, try to identify commercial uses IEB will be convened - 10-minute presentation

4. Distribution A. Approved for Public Release 4 Financial Incentive for Scientist/Inventor Patents with “Dual-Use” Patents with “Dual-Use” –Government AND Commercial use Commercial value means the potential for Licensing for royalty income to scientist/inventor Commercial value means the potential for Licensing for royalty income to scientist/inventor Agencies share the royalties with inventors: Agencies share the royalties with inventors: – the first $2,000 (each inventor) – plus 20% of any remaining royalty payment (divided among inventors) Have inventor help identify commercial uses for your technology!

5. Distribution A. Approved for Public Release 5 Inventors Determining Commercial Use Identify possible fields-of-use for invention before completion of patent application Identify possible fields-of-use for invention before completion of patent application –Nobody knows more about invention than inventor – Nobody cares more about invention than inventor Commercial “claims/uses” in patent: Commercial “claims/uses” in patent: – Easier to identify value of technology – Makes inventor think about non-federal value

6. Distribution A. Approved for Public Release 6 Inventors Can Help to Commercialize their Technology Aggressively seek interaction with businesses, which could utilize your invention Aggressively seek interaction with businesses, which could utilize your invention Report any interest in your invention to the Technology Transfer Office Report any interest in your invention to the Technology Transfer Office Cooperate in providing appropriate data/information to prospective companies that have an interest in licensing your invention Cooperate in providing appropriate data/information to prospective companies that have an interest in licensing your invention Do NOT discuss anything related to: Do NOT discuss anything related to: Costs of a license Royalty rate

7. Distribution A. Approved for Public Release 7 Successful Technology Transfer Using Scientist/Inventor Integrated Maritime Portable Acoustic Scoring and Simulator Control (IMPASS) Metocean Data Systems, Inc. develops marine technologies Metocean Data Systems aware of IMPASS technology through contact with scientist/inventor Partially exclusive Patent License negotiated Entered into CRADA, allowing Navy inventor to collaborate on development of IMPASS for commercial market IMPASS successfully commercialized for: – maritime portable scoring – simulation control – acoustic signature and sounding Under CRADA, Navy and inventor receive: – royalty income from patent license – first hand knowledge of expanded capability of IMPASS