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An Inventor’s Perspective Harry K. Charles, Jr., Ph.D.

An Inventor’s Perspective Harry K. Charles, Jr., Ph.D. presented to Patents and Pizza October 3, 2006. Outline. Introduction Background Invention Experience Records Notebook Disclosure Process How to invent? Environment Encouragement Resources Recognition Inventor’s Responsibility

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An Inventor’s Perspective Harry K. Charles, Jr., Ph.D.

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  1. An Inventor’s PerspectiveHarry K. Charles, Jr., Ph.D. presented to Patents and Pizza October 3, 2006

  2. Outline • Introduction • Background • Invention Experience • Records • Notebook • Disclosure • Process • How to invent? • Environment • Encouragement • Resources • Recognition • Inventor’s Responsibility • Closing Thoughts

  3. Introduction • Background: H. K. Charles, Jr. • BSEE Drexel University (EE) • Ph.D. Johns Hopkins University (EE) • APL Experience (~35 years) Post Doctoral Fellow (Research Center) Engineer (Microelectronics) Section Supervisor (Microelectronics) Group Supervisor (Microelectronics) Branch Head (Engineering, Design, and Fabrication) Department Head (Technical Services) • 200 publications

  4. Introduction • Invention Experience • 40 Invention Disclosures • 10 Patents • Technical Expert (consultant) in three patent lawsuits (claims construction, lawyer education, etc.) • Deposed twice • Testified at trial

  5. Records • Notebook • diligence • idea linking • supporting documentation • witness(s) • Disclosure (to APL) • electronic form • relatively easy with quirks • assigned case number and lawyer • efficient process • Disclosure (to Others) • exercise care • check with case attorney • notify case attorney (about plans, etc.)

  6. Process • How to invent? • typically inventions are the outgrowth of the performance of everyday tasks (e.g., new way of doing something, a need for a simplified method, an identified technology gap, etc.) • individuals should be alert and recognize when their solution or process is different from the status quo (sometimes novel – but most often not – just unfamiliar to you) • do some homework (web, publications, patents, etc.); if solution still seems novel, disclose it • Can inventions be planned? No! But… • certain environments are conducive to the process • need for intellectual property is key to business success (planned activity)

  7. Environment • Encouragement • colleagues, business area, department, and APL • climate of change (my own experience) • Resources • time to work on ideas • support in the patents process (legal, dollars) • Office of Technology Transfer (OTT) • Recognition • spot payments (patent issuance) • plaques • royalty sharing

  8. Responsibility • Invention does not stop with the idea or the disclosure • It needs to be supported by the staff member throughout the process • including reviewing similar patents • adding key information • reviewing patent text and claims • helping lawyers define what is novel • Process time: 2 to 4 years typically after disclosure • Patent time: Since filing ~ 27 months (own experience) • Work with OTT on marketing and licensing

  9. Closing Thoughts • Important to the Laboratory (royalties, recognition, proof that our work is challenging and state-of-the-art) • Rewarding process – recognition by peers • Supports credentials (just like publications, etc.) • Recognized by prospective employers

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