Distribution A. Approved for Public Release

Involving Inventors in theInvolving Inventors in theTechnology Transfer ProcessTechnology Transfer Process

Dr. J. Scott DeiterDr. J. Scott DeiterIHDIV Tech Transfer DirectorIHDIV Tech Transfer Director

FLC ChairmanFLC Chairmanjohn.deiter@navy.mil

(301) 684-0289(301) 684-0289

FLC MA Regional MeetingFLC MA Regional MeetingGettysburg, PAGettysburg, PA

Sept, 2009Sept, 2009

Distribution A. Approved for Public Release 2

Training for Scientist/Inventor

• Annual training on IP patent processes and Partnering through CRADAs

• Describe the lab’s “Patent Process”– Filing invention disclosure

– Invention Evaluation Board

– Writing patent applications

– Assignment of rights

– Tech Transfer Office contact info

– Commercial fields-of-use

Distribution A. Approved for Public Release 3

Scientist/inventor protection of an invention?

• ORTA reinforce the importance of the lab notebook– Proof of “First to invent”

• Keep appropriate records, dates

• Do not reveal your invention to non-government personnel

• Make sure HOME address is on disclosure

• After completion, EMAIL form and any supporting data, drawings, etc. to Tech Transfer Office

• Inventor, ORTA Rep, try to identify commercial uses

• IEB will be convened - 10-minute presentation

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Financial Incentive for Scientist/Inventor

• Patents with “Dual-Use”Patents with “Dual-Use”– Government AND Commercial useGovernment AND Commercial use

• Commercial value means the potential for Commercial value means the potential for Licensing for royalty income to scientist/inventorLicensing for royalty income to scientist/inventor

• Agencies share the royalties with inventors:Agencies share the royalties with inventors:– the first $2,000 (each inventor)the first $2,000 (each inventor)– plus 20% of any remaining royalty payment plus 20% of any remaining royalty payment

(divided among inventors)(divided among inventors)

Have inventor help identify commercial Have inventor help identify commercial uses for your technology!uses for your technology!

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Inventors Determining Commercial Use

• Identify possible fields-of-use for invention before Identify possible fields-of-use for invention before completion of patent applicationcompletion of patent application– Nobody knows more about invention than inventorNobody knows more about invention than inventor

– Nobody cares more about invention than inventorNobody cares more about invention than inventor

• Commercial “claims/uses” in patent:Commercial “claims/uses” in patent:– Easier to identify value of technologyEasier to identify value of technology

– Makes inventor think about non-federal valueMakes inventor think about non-federal value

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Inventors Can Help to Inventors Can Help to Commercialize their TechnologyCommercialize their Technology

• Aggressively seek interaction with businesses, Aggressively seek interaction with businesses, which could utilize your inventionwhich could utilize your invention

• Report any interest in your invention to the Report any interest in your invention to the Technology Transfer Office Technology Transfer Office

• Cooperate in providing appropriate Cooperate in providing appropriate data/information to prospective companies that data/information to prospective companies that have an interest in licensing your inventionhave an interest in licensing your invention

• Do Do NOTNOT discuss anything related to: discuss anything related to:

Costs of a licenseCosts of a license

Royalty rate Royalty rate

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Successful Technology Transfer Using Scientist/Inventor

Integrated Maritime Portable Acoustic Scoring and Simulator Control (IMPASS)

• Metocean Data Systems, Inc. develops marine technologies• Metocean Data Systems aware of IMPASS technology

through contact with scientist/inventor • Partially exclusive Patent License negotiated

• Entered into CRADA, allowing Navy inventor to collaborate

on development of IMPASS for commercial market

• IMPASS successfully commercialized for:– maritime portable scoring

–

simulation control

–

acoustic signature and sounding

•

Under CRADA, Navy and inventor receive:

– royalty income from patent license

–

first hand knowledge of expanded capability of IMPASS