1. 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

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

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.

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Databases, software source code and other unpublished materials, even if copyrighted

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

6. Protection of STCU Project Inventions
(months) 12
File
applications
abroad
Paris
Convention
File
application
locally
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 1

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

8. Report & Written Opinion of the ISA
PCT System
Chapter I 30 20
International
publication
(months) 12 18 OR
Enter
national
phase
File first
application
File
PCT
International Search
Report & Written Opinion of the ISA
File
Demand
Local application followed within
12 months by the PCT, claiming priority
under the Paris convention
International
preliminary
examination 30
Chapter II
- 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

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

10. Process for Pursuing Patents on US Party-Funded Projects
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.
DOE Office of Technology Transfer and Intellectual
Property (administers USG rights to IP on behalf of
State Department’s Science Centers Program)
2-3 months
STCU Patent Support Program
STCU Patent Consideration Committee receives DOE notification
DOE reviews invention and send notification (“Yes” or “No”) to Patent Consideration Committee
If DOE says “No” to US Patent
If DOE says “Yes” to US Patent
Does USG want to file application for U.S. Patent?
Yes No
DOE has patent application prepared and sends it to Patent Consideration Committee for Recipient Institute to use In filing national or PCT patent application.
Does Patent Consideration Committee support Recipient Institute’s pursuit of patent (national, PCT)?
Does Patent Consideration Committee support Recipient Institute’s pursuit of patent (national, PCT)?
No specific actions
After any required “grace period”, DOE files U.S. patent
application and administers any resulting patent No
Yes No
Yes
Recipient Institute may file national and/or PCT patent applications with its own funds
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
STCU awards Inventor from US Patent Award Fund (financed by US Party)

11. QUESTIONS?