1. An Inventor’s Perspective Harry K. Charles, Jr., Ph.D. presented to Patents and Pizza October 3, 2006

2. 06VG-024-2 Outline  Introduction  Background  Invention Experience  Records  Notebook  Disclosure  Process  How to invent?  Environment  Encouragement  Resources  Recognition  Inventor’s Responsibility  Closing Thoughts

3. 06VG-024-3 Introduction  Background: H. K. Charles, Jr.  BSEE Drexel University (EE)  Ph.D. Johns Hopkins University (EE)  APL Experience (~35 years) Post Doctoral Fellow (Research Center) Engineer (Microelectronics) Section Supervisor (Microelectronics) Group Supervisor (Microelectronics) Branch Head (Engineering, Design, and Fabrication) Department Head (Technical Services)  200 publications

4. 06VG-024-4 Introduction  Invention Experience  40 Invention Disclosures  10 Patents  Technical Expert (consultant) in three patent lawsuits (claims construction, lawyer education, etc.)  Deposed twice  Testified at trial

5. 06VG-024-5 Records  Notebook  diligence  idea linking  supporting documentation  witness(s)  Disclosure (to APL)  electronic form  relatively easy with quirks  assigned case number and lawyer  efficient process  Disclosure (to Others)  exercise care  check with case attorney  notify case attorney (about plans, etc.)

6. 06VG-024-6 Process  How to invent?  typically inventions are the outgrowth of the performance of everyday tasks (e.g., new way of doing something, a need for a simplified method, an identified technology gap, etc.)  individuals should be alert and recognize when their solution or process is different from the status quo (sometimes novel – but most often not – just unfamiliar to you)  do some homework (web, publications, patents, etc.); if solution still seems novel, disclose it  Can inventions be planned? No! But…  certain environments are conducive to the process  need for intellectual property is key to business success (planned activity)

7. 06VG-024-7 Environment  Encouragement  colleagues, business area, department, and APL  climate of change (my own experience)  Resources  time to work on ideas  support in the patents process (legal, dollars)  Office of Technology Transfer (OTT)  Recognition  spot payments (patent issuance)  plaques  royalty sharing 25 Years 1972 – 1996 10 Years 1997 - 2006 Invention Disclosures1723 Patents19

8. 06VG-024-8 Responsibility  Invention does not stop with the idea or the disclosure  It needs to be supported by the staff member throughout the process  including reviewing similar patents  adding key information  reviewing patent text and claims  helping lawyers define what is novel  Process time: 2 to 4 years typically after disclosure  Patent time: Since filing ~ 27 months (own experience)  Work with OTT on marketing and licensing

9. 06VG-024-9 Closing Thoughts  Important to the Laboratory (royalties, recognition, proof that our work is challenging and state-of-the-art)  Rewarding process – recognition by peers  Supports credentials (just like publications, etc.)  Recognized by prospective employers