1. New Faculty New Faculty Proposal Preparation & Patent Submission Presented by: OFFICE OF SPONSORED PROGRAMS 1

2. 2 JOHN P. POLITANO JR ASST. VICE-PRESIDENT FOR RESEARCH DIRECTOR, OSP X7239 DEB HARTEGAN SUPERVISOR, GRANTS ACCOUNTING X7269 CAROLYN LOCKYER ASST. DIRECTOR, OSP X7490 Manfang Xu Staff Accountant, OSP X7279 Kelly Goodlick Senior Accountant, OSP X7418

3. Overview OSP Website http://www.fit.edu/research/osp/ What is a Proposal and what does it entail? It lists the work we propose to do and the required funding to perform the work. The agencies we submit to: NSF/NIH/NASA/SBA/NOAA/ONR/DOD IMPORTANT NOTE: EVERY AGENCY IS DIFFERENT REQUIRING DIFFERENT FORMS. 3

4. Types of Grants Types of Grants: Federal, State, Private Pass Through Fixed or Cost Based 4

5. Preliminary Steps PI: Locate Funding Opportunity. Contact OSP. OSP Staff: Assist in the development of the internal budget form. Provide support on how to upload a proposal into the Federal online submittal portal (Grants.gov, NSF Fastlane or NASA) or other areas, if applicable. 5

6. Once the proposal is complete, OSP will review and submit in accordance with the agency’s guidelines. If a Subcontractor is required for the project, OSP will draft and negotiate the subcontract, on behalf of the Institution. The internal budget must be routed for signatures and returned, prior to submittal of the proposal. 6

7. COLOR KEY: RED Required to be filled in GREENTakes Fringe PURPLENo Fringe or overhead charged YELLOWOverhead charged Office of Research and Sponsored Programs TITLE AGENCY PI DATE Co-PI REQUESTED BUDGET MATCHING FUNDS FACULTY 9 MONTH61060$0.00 SUMMER FACULTY61120$0.00 FACULTY 9 MONTH61060$0.00 FACULTY 9 MONTH61060$0.00 GRADUATE ASSISTANTS61070$0.00 COLLEGE ROLL61030$0.00 TOTAL SALARIES$0.00 FRINGE BENEFITS6610429.80%7.65%$0.00 TOTAL SALARY W/FRINGE$0.00 7

8. REQUEST ED BUDGET FIT MATCHIN G FUNDS TRAVEL72605$0.00 SUPPLIES - OTHER72199$0.00 TELEPHONE72210$0.00 POSTAGE/ MAIL72220$0.00 PUBLICATIONS COSTS74250$0.00 OUTSIDE SERVICES$0.00 MISCELLANEOUS72299$0.00 SUBCONTRACTSFirst $25K74137 $75K for total of $100K TUITION73510$0.00 CAPITAL EQUIPMENT79130$0.00 INDIRECT COSTS76115R#DIV/0!$0.00 MTDC45.00%TOTAL$0.00 8

9. PROPOSAL TYPE:New Renewal Continuation Supplement Will the following be involved in this project, If the answer to any of the following questions is "yes", please secure signature as indicated. *Human Subjects……………………….. no yesInstitutional Review Board *Vertebrate Animals………………….. no yesIACUC Committee Chair Hazardous Material/Chemicals………. no yesSafety Committee Chair Recombinant DNA Molecules………… no yesBiosafety Committee Chair Ionizing Radiation……………………… … no yes Radiation Safety Committee Chair Is space (including Renovations, Utility Systems etc.) currently assigned adequate for this project, if no obtain College Dean Signature. *PRIOR APPROVAL REQUIRED Yes No College Dean I have received, read and understand the University policy on Objectivity in Research which addresses conflict of interest. There is no person responsible for the design, conduct or reporting of the proposed research who has a financial interest that could be a potential and/or real conflict of interest.Principal Investigator (Signature Required) There is a potential for a conflict of interest, and the financial interest(s) has been disclosed. Principal Investigator (Signature Required) DID YOU HEAR ABOUT THIS OPPORTUNITY THROUGH THE RESEARCH OFFICE _________Yes___________No P.I. Office of the Dean Dept Head Director for OSP 9

10. University Contact for Tech Transfer IP and Patents John P. Politano Jr. Assistant Vice President for Research Director, Office of Sponsored Programs Email: jpolitan@fit.edu Phone: 321-674-7239 Address: Keuper Bldg, Room 227 Additional FIT Intellectual Property http://www.fit.edu/research 10

11. PATENT SUBMISSIONS Stephen C. Thomas Reg. U.S. Patent Atty Intellectual Property Legal Services Group Lowndes, Drosdick, Doster, Kantor & Reed, P.A. Melbourne (321) 215-0088 1901 S. Harbor City Blvd., Suite 720 Melbourne, FL 32901 (One Harbor Place Bldg.) e-mail: stephen.thomas@lowndes-law.comstephen.thomas@lowndes-law.com web: www.lowndes-law.comwww.lowndes-law.com 11

12. Lowndes Drosdick Doster Kantor & Reed Florida Institute of Technology Faculty Patent Briefing Prepared by: Stephen C. Thomas U.S. Reg. Patent Atty Prepared for: Mr. John Politano Asst. V.P for Research Director Sponsored Programs

13. Agenda Patent Application Requests What is an invention? Who are the Inventors? What level of disclosure is required? Prior art & duty of disclosure Types of patent applications Bars to Patentability Common issues www.lowndes-law.com Stephen C. Thomas stephen.homas@lowndes-law.com stephen.homas@lowndes-law.com Intellectual Property13

14. Patent Application Requests www.lowndes-law.com Requests for patent applications should be made by: – Completing the Invention Questionnaire found at http://www.fit.edu/research/osp (see handout) http://www.fit.edu/research/osp – Providing the questionnaire to Mr. John Politano, Asst. V.P. for Research (see FH 2.19.2) Following the submission of the Invention Questionnaire the IP committee will consider it in due course and advise Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property14

15. Patent Application Requests Ownership of discoveries and inventions – Owned by University; assigned by inventor; prosecution of patents determined by the committee, unless: University has contributed nothing substantial; Invention is not related to any University research; and Invention was developed on faculty member’s own time and without any expense to the University (see FH2.19.2 (2)) www.lowndes-law.com Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property15

16. www.lowndes-law.com What is an invention? Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property16 An IDEA is not an invention. A CONCEPT is not an invention. An invention is: invention = conception + reduction to practice Reduction to practice may be: – Actual (e.g. a prototype) – Constructive (e.g. a written description) The patent application itself may serve as constructive reduction to practice

17. Who are the Inventors? Anyone who contributes to either the conception or reduction to practice Must be an individual (not a business entity) A person who “helped” but did not actually contribute to either the conception or reduction to practice is not and inventor Incorrect inventorship will invalidate a patent www.lowndes-law.com Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property17

18. hat level of disclosure is required? W Must clearly set forth the invention such that a Person of Ordinary Skill in the Art (POSA) would, just from reading the disclosure, know how to practice (e.g. make and use) the invention. Must set forth the best mode of the invention – Cannot hold back “secret” best mode.This will invalidate the patent www.lowndes-law.com Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property18

19. What level of disclosure is required? Drawings must be clear and unambiguous. – Do not include dimensions unless they are necessary to practice the invention – Photographs are disfavored Generally they are not clear enough to be used They reproduce poorly They do not typically show all the features of the claimed invention www.lowndes-law.com Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property19

20. www.lowndes-law.com Prior Art & Duty of Disclosure Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property20 What is prior art? – Basically, it is everything that exists before your filing date.Invention date is no longer as important as in the past. – Prior art may be a patents, a printed publication, or any disclosure that teaches the same or similar invention. – Prior art may come from anywhere in the world, in any language

21. www.lowndes-law.com Prior Art & Duty of Disclosure Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property21 In the university setting, prior art searching may be easier and harder at the same time – Easier, because most subject technologies have only existed for a few years or decades – Harder, because in the highly published environment of academia, there may be many papers published that are relevant (non-patent literature, or NPL).A search of the NPL should be performed by the professor prior to submitting.

22. Prior Art & Duty of Disclosure www.lowndes-law.com Duty of Disclosure – Inventor/applicant must disclose all materials that are material to the patentability examination being conducted by the USPTO – Failure to provide will invalidate the patent and may be construed as fraud on the USPTO – This applies to non-provisional patent applications only – Best practice is to disclose everything, even if unsure whether material to examination Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property22

23. www.lowndes-law.com Types of Patent Applications Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property23 Utility (provisional, non-provisional) – Provisional (not examined by USPTO) Placeholder, least expensive filing Allows 12 months to determine whether to file a non- provisional.Expires at 12 months. Must completely describe the invention Many provisionals are inadequate and lead to a false sense of security because care is not take to generate a completely enabled disclosure.This is the provisional trap. Does not, by itself, result in a patent

24. Types of Patent Applications www.lowndes-law.com Non-provisional – More expensive than provisional – In addition to complete disclosure must include claims setting forth the boundaries of the invention.These claims are examined by the USPTO – May claim priority to provisional or other non- provisional – May result in a patent, if all conditions for patentability are met Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property24

25. Types of Patent Applications www.lowndes-law.com International Applications (two types) – Paris Convention – Patent Cooperation Treaty (most common) Must be filed within 12 months of the earliest priority document (typically a provisional) Are prosecuted separately in each country. Should identify at the outset if international patent protection is desired. Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property25

26. www.lowndes-law.com Bars to Patentability Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property26 Prior art – Anticipation under 35 USC 102 A single reference that discloses all the elements of a claimed invention – Obviousness under 35 USC 103 One or more references that, taken in combination, teach or suggest all the elements of a claimed invention

27. Disclosure prior to filing date – Printed Publication by inventor 1 year grace – Offer for sale, Public use Statutory language is unclear. The grace period MAY HAVE been eliminated by the recent America Invents Act. We have not see a controlling case on this yet. – Best practice is to file before these events occur. Bars to Patentability www.lowndes-law.com Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property27

28. www.lowndes-law.com Common Issues Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property28 Determining the scope of the invention – Do you have an invention, or just an idea? – Reduction to practice is the key – Oftentimes, a scientific paper submitted as a patent disclosure may only describe an idea or suggestion, not an invention – Clearly define exactly what the invention is before submitting an invention disclosure What is the best mode? Disclose it in the write up

29. www.lowndes-law.com Common Issues (cont.) Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property29 Incomplete disclosure – A simple write-up describing the concept of the invention is generally not adequate as a patent disclosure – Incomplete drawings – “fuzzy” photographs provided in lieu of drawings – Missing parameters (optical wavelengths, power levels, geometries, parameter ranges, etc.)

30. www.lowndes-law.com Common Issues (cont.) Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property30 Patent disclosure written as a suggestion for future investigation (“we will investigate”, etc.) – While this is necessary form when applying for grants or other approvals, it is a red flag to the patent examiner that the invention has not been reduced to practice. Incorrect inventorship – Typically, either failing to name an inventor, or naming a non-inventor out of kindness

31. www.lowndes-law.com How to reduce patent costs Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property31 Provide carefully written and complete disclosure that clearly sets forth the invention – Think … if you had never heard of this invention, what would you need to know to practice it? – Details matter.More detail is best.Sketchy detail may lead to rejections or an invalid patent. – Rework drawings so that they are clear, detailed, and unambiguous.Avoid photographs unless absolutely necessary.CAD drawings are preferred.

32. Contact Information Stephen C. Thomas, Esq. Stephen.thomas@lowndes-law.com Kara.lane@lowndes-law.com www.lowndes-law.com Stephen.thomas@lowndes-law.com Kara.lane@lowndes-law.com www.lowndes-law.com 1901 S. Harbor City Blvd, Melbourne, Florida 32901 (321) 215-0088 Orlando, Florida | www.lowndes-law.com Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property32

33. www.lowndes-law.com Stephen C. Thomas stephen.thomas@lowndes-law.com stephen.thomas@lowndes-law.com Intellectual Property33