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Market Analysis of Government Inventions The Private Sector Federal Laboratory Consortium Mid-Atlantic Region Annual Meeting SEPTEMBER 16 Tim Wittig Principal.

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Presentation on theme: "Market Analysis of Government Inventions The Private Sector Federal Laboratory Consortium Mid-Atlantic Region Annual Meeting SEPTEMBER 16 Tim Wittig Principal."— Presentation transcript:

1 Market Analysis of Government Inventions The Private Sector Federal Laboratory Consortium Mid-Atlantic Region Annual Meeting SEPTEMBER 16 Tim Wittig Principal 202/

2 Who Are We? SAIC – Science Applications International Corporation – A Nation-wide High Technology Company Active almost everywhere. Technology Management Advisors Tim Wittig, J.D.Rick Lilley, J.D. Don Townsend, J.D. Kevin Smith, Ph.D. Charesse Evans, JD - MBA Bernie Chachula JD, MBA, LLM Clark TylerPhillip Singerman, Ph.D. Mark Terry, JD Jim Bechtel, JD Karen Presley, JD, MBA, 2/3 LLMJorge McPherson Lisa GallmonVincent Gadsden Tom Taylor

3 Current Clients Army Research Laboratory Army Armaments RDEC at Picatinny NJ Benet Laboratories, Watervliet NY Naval Air Warfare Center at Pax River MD Crane Naval Surface Warfare Center, IN Army Game Project, West Point, NY PM Combat Munitions Systems Office of the Deputy Undersecretary of Defense TechLink, Montana State University Maryland Dept. of Business and Economic Development City of El Paso TX L-3 Communications Inc.

4 Minimum Requirements Before a decision to go forward with a commercialization effort for any invention can be made, some basic issues must be established: –IP Protection? Filings? Breadth? –Ownership? –Ease of Adoption? Each of These Issues Can Scuttle a Business Case Before It Gets Underway

5 IP Existence and Ownership Is There Any Intellectual Property in Existence – If yes, at what stage: Disclosure filed? Invention Rights Questionnaire Signed Application signed by all and Filed? – Enabling Disclosures an Issue? PCT Filed within 12 months of initial Application? – What Countries Elected? Patent Granted? Continuations in Part Filed, Planned? Divisional activity? Research Continuing? Are Signatures In Place All Inventor Assignments signed? – Recorded? If Corporation present - Assignments signed? – Recorded?

6 Other Issues Any other party have rights? –Support Contractor? –CRADA Partner? –Government Use Rights? –Pre-Existing Licenses? Rights Clearly Defined, or Termination agreement signed? Maintenance Fees Paid?

7 Nature of Claims Are the Claims Broad or Narrow – Freedom of Action Issues? Fields of Use – Do Claims Clearly Cover the Use Intended – If Other Licensees, Carve Out Clear Rights This And Not That Is a Better Approach – Does the Application / Patent Describe an Order of Magnitude Improvement

8 Other Issues Ease of manufacture – Great Performance vs. Difficult Manufacturing Process (cost) Materials or Regulatory Barriers? Ease of Adoption – Is Significant Design Work needed to Use the Invention? Disruptive Inventions? Consider the time needed to “Design in” the Invention? Inventor team remaining active? Reduction to Practice – Working model usually required – Data Critical Prove it works, Prove it can reach cost and performance targets

9 Summary With these questions answered, the ORTA can be confident that intellectual property basics will not get in the way of licensing. From here, the market will drive the decisions Collect this information and use this same set of questions to identify your most marketable inventions PRACTICE NOTE – Using the Paul Fritz method, document each of these issues and put a copy of the document illustrating each fact into a document protector in a binder for long term use. Remember, a license may be 17 years in duration!

10 QUESTIONS?????? Tim Wittig Principal Technology Management Advisors S cience A pplication I nternational C orporation


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