Patents in USDA Patents in USDA Agricultural Research Agricultural Research

ServiceService

Gail PoulosGail Poulos

Supervisory Patent AdvisorSupervisory Patent Advisor

USDA-ARS Office of Technology USDA-ARS Office of Technology TransferTransfer

Coordinates Tech Transfer activities in Coordinates Tech Transfer activities in ARSARS

Has authority to develop and sign Has authority to develop and sign Cooperative Research And Cooperative Research And Development Agreements (CRADAs)Development Agreements (CRADAs)

Has sole authority for licensing any Has sole authority for licensing any inventions developed within any of inventions developed within any of the USDA agencies (including Forest the USDA agencies (including Forest Service, FSIS, APHIS)Service, FSIS, APHIS)

Office of Technology TransferOffice of Technology Transfer

Patenting

• 8 registered patent agents

• Located in Beltsville, MD; Peoria, IL; Albany, CA

Licensing

• 4 senior licensing specialists

• HQ based

Tech Transfer Coordinators

• 7 specialists with life science / ag background

• Distributed across geographic Areas of ARS

Marketing

• Targeted marketing

• Web subscribe Tech Alerts

• Partnering opportunities

Centralized in policy and approvals, licensing, marketing; decentralized in negotiation and implementation of CRADAs

Office of Technology Office of Technology TransferTransfer

Office of Technology Office of Technology TransferTransferPatent Advisors

Beth Sampson / Howard Owens – PWA510-559-6067 / 5731Esampson@pw.ars.usda.govHowens@pw.ars.usda.gov

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

Gail Poulos – SAA301-504-5302Gail.Poulos@ars.usda.gov

Albert Tsui – MWA & NPA309-681-6512Albert.Tsui@ars.usda.gov

Evelyn Rabin - MSA301 504-4781Evelyn.Rabin@ars.usda.gov

Albert Tsui – NPA309-681-6512 Albert.Tsui@ars.usda.gov

Byron Stover –ERRC301-504-4783Byron.Stover@ars.usda.govEvelyn Rabin -- NAA301 504-4781Evelyn.Rabin@ars.usda.gov

Randy Deck – MWA & SPA309-681-6515Randy.Deck@ars.usda.gov

OTT as Representative and OTT as Representative and LiaisonLiaison

U.S. CompanyInterests

ARS

Mission

University Interests

Professional Services of ARS Professional Services of ARS OTT – Patent SectionOTT – Patent Section

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

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

Coordinate cooperator-filed U.S. patent Coordinate cooperator-filed U.S. patent applicationsapplications

Facilitate and direct foreign filings with Facilitate and direct foreign filings with contractorcontractor

Training of All ARS scientistsTraining of All ARS scientists

Professional Services of ARS Professional Services of ARS OTT – Patent SectionOTT – Patent Section

Assist scientist in preparing electronic Assist scientist in preparing electronic Invention DisclosureInvention Disclosure

Determine whether invention under a Determine whether invention under a CRADA is a “subject invention”CRADA is a “subject invention” Determine need to present CRADA Determine need to present CRADA

invention to Patent Committeeinvention to Patent Committee Perform inventorship determination Perform inventorship determination

Three Three “Subject Matter” “Subject Matter” CommitteesCommittees Life SciencesLife Sciences Chemical Chemical Mechanical and Measurement Mechanical and Measurement

Each cover Each cover allall geographic geographic Areas of ARSAreas of ARS

National Patent National Patent CommitteesCommittees

Advantages To The ARSAdvantages To The ARS

Uniform committee recommendations Uniform committee recommendations across the Agencyacross the Agency

Committee recommendation within Committee recommendation within three months of filing an Invention three months of filing an Invention DisclosureDisclosure

Scientists and management notified of Scientists and management notified of annual schedule at the beginning of annual schedule at the beginning of each fiscal yeareach fiscal year

Patent Committee CriteriaPatent Committee Criteria

““The Five Questions”The Five Questions”

Invention DisclosurePatent Advisor

Committee Review

Patent Committee CriteriaPatent Committee CriteriaInvention Disclosure

Patent Advisor

Committee Review

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

Patent Committee CriteriaPatent Committee CriteriaInvention Disclosure

Patent Advisor

Committee Review

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

Patent Committee CriteriaPatent Committee CriteriaInvention Disclosure

Patent Advisor

Committee Review

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

Patent Committee CriteriaPatent Committee CriteriaInvention Disclosure

Patent 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 CriteriaPatent Committee CriteriaInvention Disclosure

Patent Advisor

Committee Review

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

NEW USPTO RULESNEW USPTO RULES

StrategiesStrategies

ImplicationsImplications

StrategiesStrategies Review Entire Pending Docket Prior to Effective Date of Review Entire Pending Docket Prior to Effective Date of

Rule Change To: Rule Change To:

a. a. Determine number applications that have Determine number applications that have continuation potentialcontinuation potential

b. b. Determine which applications should be filed prior Determine which applications should be filed prior to to effective date of the rule effective date of the rule

c. c. Set up standard operating procedures for Set up standard operating procedures for applications that will be filed after the effective date applications that will be filed after the effective date of of rule change.rule change.

d. d. Determine which applications do not comply with Determine which applications do not comply with the 5/25 rule and correct.the 5/25 rule and correct.

File Provisional Applications for Technologies that will File Provisional Applications for Technologies that will not meet the 5/25 Rule-Use the one year period to not meet the 5/25 Rule-Use the one year period to determine claims that should be protected by consulting determine claims that should be protected by consulting with inventors.with inventors.

National committees will facilitate determining if other National committees will facilitate determining if other Areas in ARS have inventions that could be considered Areas in ARS have inventions that could be considered under 37 CFR 1.78 (f) (3) as having at least one under 37 CFR 1.78 (f) (3) as having at least one patentably indistinct claim –the Patent Advisors will patentably indistinct claim –the Patent Advisors will determine if the inventions can be combined in one determine if the inventions can be combined in one application.application.

StrategiesStrategies

Strategies for Jointly-owned Strategies for Jointly-owned InventionsInventions

Will need to work more closely with a partner. Will need to work more closely with a partner. May May be an issue in that partner may have to disclose be an issue in that partner may have to disclose information about applications and claims that are information about applications and claims that are not published. not published. If partner does not fully disclose, If partner does not fully disclose, may lose U.S. Government rights if application is may lose U.S. Government rights if application is abandoned by USPTO. abandoned by USPTO.

Establish that the government is exercising due Establish that the government is exercising due diligence in complying with rules.diligence in complying with rules. Protect govt. Protect govt. interest by written record of request for solely-interest by written record of request for solely-owned (cooperator) patent applications having owned (cooperator) patent applications having overlapping claims.overlapping claims.

Note: Filing an explanation that claims are patently Note: Filing an explanation that claims are patently distinct creates potential liability for joint owners distinct creates potential liability for joint owners and office preparing and prosecuting applicationand office preparing and prosecuting application

Implications to OperationsImplications to Operations

Increase in the number of provisional and new Increase in the number of provisional and new applications filed applications filed will increase costswill increase costs::Note provisional fee: $210.00 patent application Note provisional fee: $210.00 patent application

filing: about $1500-$5,000 filing: about $1500-$5,000

Increase in number of applications going to Increase in number of applications going to appeal appeal will increase pendency & costswill increase pendency & costs::Note: notice of appeal fee $510.00; appeal Note: notice of appeal fee $510.00; appeal

brief fee $510.00brief fee $510.00

Potential for the need to write more focused Potential for the need to write more focused claims: claims: Note: will result in narrow claimsNote: will result in narrow claims

Potential for ARS preparing and prosecuting more patent applications for small business partners and university partners.

Future partnering with large business may be more difficult if development of patentable technologies occurs. Presumption is that large business will opt for trade secret rather than patent protection

Thorough review of all CRADAs to determine if there are overlapping technologies with different partners and different research units in the agency. i.e., CRADAs for biofuel research using same starting materials

Implications to OperationsImplications to Operations

Office of Technology Transfer5601 Sunnyside AveBeltsville, MD 20705 (301) 504-6905HTTP://OTT.ARS.USDA.GOV