Preserving your research for patenting! To: "USGS Employees" From: "Neil Mark, Reston, VA" (Neil Mark) Subject: Preserving your research for patenting! X-Mailer: The Technology Transfer Office (TTO) wants to help researchers turn their research data into patent applications and patents. Accomplishing this, we want to find a qualified private-sector company (ies)interested in licensing such patents and/or patent applications. If patenting and licensing proceed successfully: The Government benefits by transferring useful technology from its laboratories to the private sector. The private sector benefits via the creation of income-producing businesses and jobs. The inventor directly benefits, provided his patent or patent application can be licensed, by receiving the first $2,000 of royalty income each year, and a minimum of 15 percent of the royalties collected by the Government up to a maximum of $150,000 per year. In addition, regardless of whether their inventions are licensed, inventors are awarded $500 when a patent application describing their invention is filed. If the invention is patented, they receive an additional $800. DISCLOSURE: The key to protecting an inventor's valuable patent rights is to avoid the disclosure of the invention until a patent application has been filed. Disclosure can occur either through practical use or publication. Inventors should proceed cautiously when either activity is under consideration. Practical Use: A practical use occurs once the bugs are out and the invention has begun to be used to carry out its intended function. Such use includes a demonstration of a working prototype at a scientific meeting, or to a private company or companies for any purpose. Publication: While most researchers' performance plans require publication, it should be done in a manner to avoid forfeiture of valuable patent rights. In other words, publication should be withheld pending patent evaluation and patent filing or a decision not to file. This approach is mandated by clear departmental policy. See 453 Department Manual 1.3A. Publication constituting patent disclosure must have certain elements. The legal elements of disclosure listed below are based on information provided by the Office of the Solicitor: 1. May be either written (including electronic), visual or oral; 2. Is made to one or more persons not employed by the Department of the Interior; 3. Discloses the important elements of the invention; and 4. Provides an adequate level of detail to an audience with sufficient technical background to understand the invention either immediately or after conducting routine experimentation, in either case permitting a member of such audience to pursue a patent application himself. RISKS OF PREMATURE DISCLOSURE: Disclosure, without a written confidentiality agreement and before a patent application has been filed in the United States, has two primary negative effects: (1) it results in an inability to obtain any foreign patent rights and (2) it starts the clock running regarding United States rights which will be lost unless a patent application has been filed within 1 year of such disclosure. CURRENT PROCEDURES: As a result of procedures now in place, the TTO needs about 3 1/2 months from the date of receipt of a Report of Invention (Form DI-1215) to get the necessary reviews and approvals prior to the preparation of a patent application. First, the division must agree that a patent is worth pursuing and be willing to pay inventor patenting awards. Second, the National Institute of Standards and Technology evaluates the technology's commerciality. Surviving these stages, the Business Enterprise Council then must authorize preparation of a patent application and its filing. The actual preparation of the application is likely to take between 4 and 8 weeks, after which it is filed at the Patent Office. The entire process from submitting the Report of Invention to the TTO to filing a patent application generally takes from 5 1/2 to 6 months. NEGATING THE PROCESS. Premature disclosure can squeeze the process to the point where there is insufficient time to get a patent application prepared and filed before the expiration of the 1-year deadline. For example, if the TTO receives notice of a disclosure 6 months or more after it occurs, it becomes very difficult to go through the described procedures before the deadline has passed. The Unfortunate Results: Good inventions are left without patent protection. Private companies are unwilling to support further research and marketing efforts in areas lacking patent protection, because they are unlikely to recoup their investment without it. So, inventors, please help us save your valuable research results for patenting and licensing by keeping this information available, and regularly reviewing it. If you plan to disclose your invention to a corporation, for example, please ask the corporate representative to complete a written nondisclosure agreement before doing so. See the sample form, attached below, taken from the USGS "Technology Transfer Training Handbook." If you have recently disclosed without obtaining such an agreement in writing, the clock is running so act accordingly. If you have any questions or would like further information, please refer to Department Manual, Part 453, Inventors and Patents, or contact this office either by telephone at (703) 648-4450 or by e-mail, directed to nmark @usgs.gov. This article also appears on the USGS Technology Transfer Internal WWW at http://www.usgs.gov/USGS/tech-transfer/patents/ Nondisclosure Agreement Re:________________________________________________________________________ _____________, a corporation having an office in __________________in view of the disclosure of the above mentioned information that has been filed in a U.S. patent application, agrees to the following: 1. _________________will not disclose the information supplied by the U.S. Geological Survey with regard to the claims from the date set forth below to any third party without written permission from the U.S. Geological Survey and will treat the information supplied by the U.S. Geological Survey in respect of the claims as it treats its own proprietary information and will only disclose the claims to those of its employees who are under an obligation to ______________ not to disclose proprietary information described in_____________ titled"_________________________________________________" 2. The following information supplied by the U.S. Geological Survey in respect of the claims shall be excluded from the obligations imposed under paragraph 1: (a) Information which was known to _______________________, prior to receipt hereunder, (b) Information which at the time of disclosure to ________________ was generally available to the public or which after disclosure hereunder was becomes generally available to the public through no fault of ____________________, or (c) Information which is hereafter made available to _______________ from any third party who is not under a nondisclosure obligation to the U.S. Geological Survey and who places no nondisclosure obligation on ____________________ in respect of such information. 3. Nothing contained in this Agreement shall be construed as preventing __________________ from contesting in the U.S. Patent and Trademark Office and the Courts the subject information as well as any U.S. Patent application and/or patent which result from said application; nor does this agreement grant any license under any patents. AGREED TO AND ACCEPTED BY: ________________________________________________ (A Duly Authorized Company Representative) _____________________________________ ______________________ Title Date