An Inventor’s Perspective Harry K. Charles, Jr., Ph.D. presented to Patents and Pizza October 3, 2006
06VG Outline Introduction Background Invention Experience Records Notebook Disclosure Process How to invent? Environment Encouragement Resources Recognition Inventor’s Responsibility Closing Thoughts
06VG 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
06VG 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
06VG 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.)
06VG 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)
06VG 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 – Years Invention Disclosures1723 Patents19
06VG 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
06VG 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