Intellectual Property and Technology Transfer: USDA Office of Technology Transfer Patent Program

Patent AdvisorOffice of Technology Transfer

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Professional Services of ARS OTT – Patent Section

• Create, manage & convene Utility Patent Review Committees (e.g., Invention Disclosure)

• Prepare, file, and prosecute U.S. patent applications,

• Coordinate cooperator-filed U.S. patent applications

• Facilitate and direct foreign filings with contractor

• Advise ARS scientist on ARS and USPTO Patent policy and procedures

Service to ARS Scientists, Customers, Stakeholders …

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Office of Technology TransferOffice of Technology TransferPatent Advisors

Beth Sampson / Howard Owens – PWA510-559-6067 / 5731

Byron Stover - BA301-504-4783Byron.Stover@ars.usda.gov

Gail Poulos – SAA 301-504-5302Robert Jones-SAA301-504-7270

Albert Tsui – MWA & NPA309-681-6512

Evelyn Rabin – MSA301 504-4781David Marks301-504-4619

Albert Tsui – NPA309-681-6512

Evelyn Rabin -- NAA301 504-4781Byron Stover –ERRC301-504-4783

Process for Protecting USDA ARS Intellectual Property for Commercialization

Invention DisclosurePatent Advisor

Committee Review

Patent Advisor

Prepare & File Patent

Suspend

Approve, orDefer

Submitting An Invention DisclosureIdentification Of Potential Invention

● Scientist Initiates

● Scientist Advised To Contact PATENT ADVISOR

~~ EARLY~~

- Give the Patent Advisor a “heads-up”

- BEST TIME: When preparing manuscript

- Get advice on preserving rights

Submitting An Invention DisclosureARIS

NEW INVENTION DISCLOSURE-Highlights

a. All information must be provided

b. 115 release indicator check box

c. Joint Inventor Entity Status

d. Question 3 : can indicate if there is an affliated 115

e. Question 3: List and upload pdfs of publications

f. Must print, sign and upload executed inventors page

g. Other Docs page-add charts, tables, graphs pertaining to invention

Three “Subject Matter” Committees

• Life Sciences• Chemical • Mechanical and Measurement

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National Patent Committees

Each cover all geographic Areas of ARSEach has at least 2 members on each Committee appointed by the Area.

Schedule Of Committees

• Meet quarterly• Scheduled at the beginning of fiscal

year

National Patent Committees:

Committee Meeting

● Presentation Of Invention By In-Depth Reviewer

● Discussion By:

Committee Members, Tech Transfer Coordinator,

Deputy Assistant Administrator, Patent Advisor

Licensing Staff Member, Marketing Staff Member

● NPLs Invited To Participate In Non-Voting Capacity

● Committee Members Vote, Recommend To:

• Approve

• Defer

• Suspend

Patent Committee Criteria

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Invention DisclosurePatent Advisor

Committee Review

Q1: Is there current commercial interest in the invention or a high probability of commercialization in the future?

Patent Committee Criteria

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Invention DisclosurePatent Advisor

Committee Review

Q2: Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent?

Patent Committee Criteria

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Invention DisclosurePatent Advisor

Committee Review

Q3: Would the patent likely play a significant role in transferring the technology to the user?

Patent Committee Criteria

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Invention DisclosurePatent Advisor

Committee Review

Q4: Would a patent be enforceable, i.e., is the invention drawn to, or does it employ a unique and readily identifiable material or device which could be bought or sold?

Patent Committee Criteria

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Invention DisclosurePatent Advisor

Committee Review

Q5: Is the invention of sufficient scope to justify patenting?

Types Of Patent Protection

• UTILITY Patent Application

- Enforceable for 20 years from the filing date

-Deposits required

• PLANT Patent Application

- Asexually Reproduced

- No Deposit

- Photographs

- 1 Claim

- Enforceable 20 Years From Filing Date

• Plant Variety Protection Certificate

Plant Variety Protection Certificate

(PVPC)

- Sexually Reproduced

- Tuber Reproduced

- Seed Deposit

- Generally Enforceable 20 Years After Date Of Grant Of The PVPC

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• The research results are work products that belong to ARS, not the scientist

• ARS decides whether or not to apply for a patent, not the scientist (appealable)

• ARS decides whether or not to protect foreign patent rights, not the scientist (appealable)

• Such decisions require:– No premature public disclosure– Timely filing of an invention disclosure– Timely and complete responses to requests from

the Patent Advisor

Patent Policies

Patent Policies (con’t)

• We do not patent ‘tools’• We always allow license-free research• We favor public releases over protection of plant IP:

This is changing to a “case-by-case” review by the Plant Variety Committee

Due Diligence in Protecting Intellectual Property: Inventorship & Laboratory Notebooks

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• Ownership of intellectual property is determined by inventorship

• An inventor must be able to document their contribution to “conception & reduction to practice” for at least a part of one claim in a patent application

• Documentation has strict legal requirements(a) Signed & witnessed lab notebook pages(b) Consecutive numbered bound pages, single

line through errors (deletions) in data

IMPORTANT!! CRADAs and BRC PROJECTS

REQUIRE SEPARATE ARS NOTEBOOK

If you are conducting research under a CRADA or BRC project, all information and data must be recorded in a separate ARS notebook that is used only for that CRADA or BRC research.

Version 10/01/2009

IMPORTANT!! CRADAs and BRC

PROJECTS REQUIRE SEPARATE ARS NOTEBOOK

If you are working on more than one CRADA or BRC project then you will have to use separate ARS notebooks for each project in addition to the ones you would use for non-CRADA , non-BRC research.

Version 10/01/2009

America Invents Act

• First to Invent vs First to Filea. One year grace period-not straight forward

b. Prior art determined from Effective Filing date not Date of Invention

c. Good Laboratory Practice-More Important than ever

• Filing as Inventor vs. Applicanta. USDA Office of General Counsel Requiring we

file as applicant

InventionDisclosureSubmitted

Approval

2 Weeks

Committee

2-3 Months

ApplicationPreparation

1-2 year

ProsecutionIssue Appeals

2-3 Years 2-3 Months 3-5 Years

Patent Time Line

Patent Advisor

Office of Technology Transfer5601 Sunnyside AveBeltsville, MD 20705

(301) 504-6905http://www.ars.usda.gov/Business/Business.htm

IP management and R&D partnerships for our scientists,

customers & stakeholders