Protection of Intellectual Property Resulting from STCU Projects STCU/NATO Workshop From Science to Business Kiev, Ukraine October 11, 2006 Judson R. Hightower Intellectual Property Managing Attorney Oak Ridge National Laboratory

O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 2 Presentation Topics Protection of information Protection of STCU project inventions Paris Convention Patent Cooperation Treaty (PCT) United States procedures for protecting STCU project inventions

O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 3 Protection of Information Existing or potential intellectual property rights (patent and trade secret) can be lost by disclosure of certain types of information to others without an obligation on their part to protect such information from further disclosure.

O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 4 Protection of Information - Types Invention information Records of invention Patent applications Proprietary information Trade secrets Know-how Databases, software source code and other unpublished materials, even if copyrighted

O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 5 Protection of Information – How to Employee confidentiality agreements Nondisclosure agreements Information provided to third party Information received from third party Mutual exchange of information with third party

O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY Protection of STCU Project Inventions Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention: -multiple formality requirements -multiple searches -multiple publications -multiple examinations and prosecutions of applications -translations and national fees required at 12 months 0 12 File application locally File applications abroad (months) Paris Convention

O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 7 Protection of STCU Project Inventions - PCT System File in up to 123 countries with a single international application Delay the expenses associated with translations foreign filing fees local associates Provide an early indication of pertinent prior art Give extra time for assessment of commercial viability in designated States

O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 8 File Demand File first application File PCT International Search Report & Written Opinion of the ISA International publication International preliminary examination (months) OR Enter national phase Chapter I Chapter II PCT System 30 - one set of formalities requirements - international search - international publication - optional international preliminary examination - translations and national fees required at 20 or 30 months, and only if applicant wants to proceed with national phase entry Local application followed within 12 months by the PCT, claiming priority under the Paris convention

O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 9 United States Procedures for Protecting STCU Project Inventions Process for pursuing Patents on US Party Funded Projects (see diagram) US Government will evaluate commercial potential of invention US Government will have patent applications prepared for inventions it wishes to protect Costs of application paid by US Government Patent applications provide broad coverage Institutes will be provided copies of patent applications prepared for US Government which they can then file in their own countries

O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 10 Recipient Institute = Owner of IP Worldwide USG = owns exclusive royalty-free license in U.S. territory Non-financing Parties = upon request, right to nonexclusive license in their Territories Recipient Institute submits Record of Invention to STCU. STCU distributes Record of Invention to USG. STCU Patent Support Program STCU Patent Consideration Committee receives DOE notification If DOE says No to US Patent DOE has patent application prepared and sends it to Patent Consideration Committee for Recipient Institute to use In filing national or PCT patent application. DOE Office of Technology Transfer and Intellectual Property (administers USG rights to IP on behalf of State Departments Science Centers Program) Does USG want to file application for U.S. Patent? Yes If DOE says Yes to US Patent After any required grace period, DOE files U.S. patent application and administers any resulting patent No Recipient Institute may file national and/or PCT patent applications with its own funds Process for Pursuing Patents on US Party-Funded Projects DOE reviews invention and send notification (Yes or No) to Patent Consideration Committee No specific actionsDoes Patent Consideration Committee support Recipient Institutes pursuit of patent (national, PCT)? Patent Support Program assists Recipient Institute in filing national and/or PCT patent applications Recipient Institute files national and/or PCT patent applications with its own funds Patent Support Program assists Recipient Institute in filing national and/or PCT patent applications No Yes 2-3 months STCU awards Inventor from US Patent Award Fund (financed by US Party)

O AK R IDGE N ATIONAL L ABORATORY U. S. D EPARTMENT OF E NERGY 11 QUESTIONS?