Intellectual Property Seminar Patents and Pizza Intellectual Property Seminar January 30, 2001 11:00 Welcome Remarks Wayne Swann 11:05 Presentation of Awards Rich Roca Frank Cooch 11:15 Inventions Ernest Graf Assessment Kristin Gray 11:50 Question and Answer Session 12:00 Lunch

APL Technology Transfer Cycle

Technology Transfer Cycle: From Inventions to Royalties Part I. January 30, 2001: Inventions and Assessment Part II. March 16, 2001: Intellectual Property (IP) Protection and Marketing Part III. May 7, 2001: Licensing and Royalty & Development Income

Part I: Inventions and Assessment Definition and ownership, Ernie Graf - Office of Patent Counsel Documentation, Frank Cooch - Office of Patent Counsel Assessment Kristin Gray, Office of Technology Transfer

Inventions Office of Patent Counsel January 30, 2001

Inventions and Invention Ownership Ernest R. Graf Patent Attorney JHU/APL Office of Patent Counsel January 30, 2001

Outline Invention Definition Why you care about inventions APL obligations to the Government Technology Transfer Opportunities Laboratory IP Policy Invention Ownership Summary

Invention Definition A technical concept or development that others would wish they’d thought of! Electronic, mechanical, chemical, material, procedural, software…

Why you care about inventions 1. APL Obligations to the Government ALL APL Government contracts require inventions to be reported to the Government Promptly But certainly … BEFORE PUBLICATION Here, “invention” means a “discovery which is or may be patentable…”

Why you care about inventions (cont.) Consequences of not disclosing an invention to the Government: APL may forfeit ownership of the invention

Why you care about inventions (cont.) Technology Transfer Capturing research/license dollars Personal income Laboratory IP Policy “… it is essential that the Laboratory and its employees follow a prescribed Policy governing disclosure …of intellectual property, and, where appropriate, the transfer of the resulting technology.”

Invention Ownership If you use JHU/APL resources … or the invention is inside the scope of Laboratory activities… JHU/APL PROBABLY OWNS IT (The Government probably does not own it!!)

Invention Ownership (cont.) If you don’t use JHU/APL resources … and the invention is outside the scope of Laboratory activities… YOU MAY OWN IT But … you still must disclose ALL inventions to the Laboratory

Summary Think often about inventions and commercial opportunities related to your APL work Disclose inventions early Ask questions of OPC/OTT staff IT’S PART OF YOUR JOB!

Documenting and Reporting Your Invention Francis A. Cooch Patent Counsel January 30, 2001

How do you report your invention? Outline Why document your invention? How do you document your invention? Lab Notebooks How do you report your invention? Intellectual Property Disclosure Sheet

Legal Definition #1 “Hi”

“Hi”: means your first billable hour has just commenced. Legal Definition #1 “Hi”: means your first billable hour has just commenced.

Why Document Your Invention? To create legal evidence of: Date of invention Diligence in reducing the invention to practice Independent development of the invention Non-obviousness of the invention

“can I get back to you on that” Legal Definition #2 “can I get back to you on that”

Legal Definition #2 “can I get back to you on that”: means that the lawyer does not have the foggiest idea what to say next, but may be able to come up with a response in a week or two.

Lab Notebooks What do they look like? Bound Serial numbered Pages numbered

Lab Notebooks (cont.) How do I use them? Record work contemporaneously In detail Participants Good and Bad Use ink To delete, cross out—don’t erase Sign and date each page Technical witness read, sign and date

Lab Notebooks (cont.) Where can I get one? Room 7-150 x5641

Legal Definition #3 “Friday” (in response to a question as to when a particular matter will be handled by your lawyer):

Legal Definition #3 “Friday” (in response to a question as to when a particular matter will be handled by your lawyer): means a week from next Tuesday, at the earliest.

Intellectual Property Disclosure Sheet Why fill it out? Reports your invention - formal entry into the patenting/tech transfer system Documents your invention Where can I find it? APL Forms—Informed Filler OTT Web Site—pdf and Word versions Office of Counsel Web Site—pdf and Word versions

Legal Definition #4 “why don’t you let me get that” (said by a lawyer when reaching for a restaurant check):

Legal Definition #4 “why don’t you let me get that” (said by a lawyer when reaching for a restaurant check): means you can either pay for it now, or it will show up on your bill with the firm’s normal 25% mark-up.

Intellectual Property Disclosure Sheet (cont.) Contents Inventors Written Description and Drawing Funding and task no. Publications Signatures—inventors/witness(es)

Intellectual Property Disclosure Sheet (cont.) Where do I send it? Office of Patent Counsel, Room 7-150 Impact of submission Questions—call x5632

Legal Definition #5 “Witnesseth”:

“Witnesseth”: means absolutely nothing. Legal Definition #5 “Witnesseth”: means absolutely nothing.

Summary DOCUMENT YOUR INVENTION -- LAB NOTEBOOK REPORT YOUR INVENTION -- INTELLECTUAL PROPERTY DISCLOSURE SHEET NO DOCUMENTATION PUTS THE LAB’S RIGHTS AT RISK!

Assessment What happens next? Assessment criteria input process APL invention portfolio assessment

What Happens Next? Logged with OPC, assigned to attorney Frank Cooch Ernie Graf Carla Krivak Logged with OTT, assigned to technology manager John Bacon Kristin Gray Joe Suter Norma Lee Todd Preliminary Assessment

Assessment Factors and Tools Ownership Protectability Technology Market/commercial viability Assessment input Inventor(s) Outside consultants OTT/OPC Staff

Ownership Government Rights Other funding/other ownership Joint inventorship Inventor ownership

Protectability Type of Intellectual Property (IP) protection Are IP rights available? Enabling publication > 1 year prior to filing patent application Enabling description of technology transferred without non-disclosure agreement Obvious prior art Input: Inventor(s) Office of Patent Counsel Office of Technology Transfer Outside attorneys

Technology Assessment Stage of development Concept Prototype Reduced to practice Feasibility Input: Inventor(s) Outside consultants Office of Technology Transfer Office of Patent Counsel

Market/ Commercial Viability Type of technology: method/device Application area(s) Degree of improvement over current technology Size of market Interested parties/existing contacts Key players in the industry Input: Inventor(s) Outside sources and consultants Office of Technology Transfer Office of Patent Counsel

Consultants Technical/market consultants Business Development Biomed Chem/biochem EE/ME IT Business Development KPMG American Express Tax and Business Services Private business consultants

APL Invention Portfolio 3000+ inventions disclosed since Lab’s inception 450 active prior to OTT inception/ 200 disclosed since Triage National Technology Transfer Assessment

Status Assignment 348 109 168 9 13 Active In abeyance Inactive Return rights Exclusively licensed in all fields 348 109 168 9 13

Summary Inventions are the cornerstone of our program: disclose early, disclose often Assessment at this stage is preliminary: Should we move into the next phase of the cycle? Publication Get non-disclosure agreements Inventor(s) input is essential at every phase

Next Steps Part II. March 16, 2001: Intellectual Property (IP) Protection and Marketing Part III. May 7, 2001: Licensing and Royalty & Development Income