INTELLECTUAL PROPERTY LAW BASICS & KEY POINTS 2009 HEALTH LAW SYMPOSIUM UNIFORMED SERVICES UNIVERSITY OF THE HEALTH

1. INTELLECTUAL PROPERTY LAW BASICS & KEY POINTS 2009 HEALTH LAW SYMPOSIUM UNIFORMED SERVICES UNIVERSITY OF THE HEALTH SCIENCES 20 May 2009 Elizabeth Arwine Marcus A. Streips Patent Attorneys U.S. Army Medical Research & Materiel Command

2. U.S. Army Medical Research & Materiel Command and U.S. Army Medical Command Elizabeth Arwine, USAMRMC & MEDCOM Patent Attorney & IP Counsel elizabeth.arwine@amedd.army.mil (301)619-7808 Marcus A. Streips, Patent Attorney, USAMRMC marcus.streips@amedd.army.mil (301) 619-7295 Jay Winchester, USAMRMC Patent Attorney & Senior Counsel jay.winchester@amedd.army.mil (301) 619-7798 Office of the Staff Judge Advocate U.S. Army Medical Research & Materiel Command 504 Scott Street Fort Detrick, MD 21702-5012 INTELLECTUAL PROPERTY POCs Medical/Biological Research

3. U.S. Naval Medical Research Center Joseph K. Hemby, Jr, Esq. ("Ken"), Counsel & Intellectual Property Attorney joseph.hemby@med.navy.mil (301) 319-7429 Ning Yang, Associate Intellectual Property Attorney Ning.yang@med.navy.mil (301) 319-9433 U.S. Naval Medical Research Center Office of Counsel (Code 00L) 503 Robert Grant Avenue Silver Spring, MD 20910-7500 INTELLECTUAL PROPERTY POCs Medical/Biological Research

4. U.S. Air Force Materiel Command Richard A. Lambert, Chief, Intellectual Property Law Directorate (937) 255-2838 U.S. Air Force Materiel Command AFMCLO/JAZI 2240 B Street, Room 100, Building 11 Wright-Patterson AFB, OH 45433 INTELLECTUAL PROPERTY POCs Medical/Biological Research

5. Department of Veterans Affairs Michael J. Gonet, Patent Attorney (202) 461-7732 Department of Veterans Affairs Office of General Counsel (024M) 810 Vermont Avenue NW Washington, D.C. 20420 INTELLECTUAL PROPERTY POCs Medical/Biological Research

6. If a man can make a better mousetrap, though he builds his house in the woods, the world will make a beaten path to his door—Ralph Waldo Emerson

7. Getting your inventors to the right source of information! Protecting inventions of DoD Protecting inventions and proprietary information/data of others Interacting with partners Keeping necessary people informed ISSUE SPOTTING

8. Part of Our Mission Issued Patents Publications Patent Awards to Inventors Licensing & Technology Transfer Royalty sharing with inventors Money back to lab/organization for research Technology transfer to the private sector Advanced development Products for the soldiers, sailors, marines and airmen! WHY PROTECT IP?

9. Invention must be: New Useful Nonobvious PATENTS

10. No. 1 Problem: Detailed public disclosure of invention (1) before patent application is filed or (2) without a non-disclosure agreement in place PATENT DEFEATING EVENTS

11. Submit Invention Disclosure (ID) ID reviewed by Invention Evaluation Committee (IEC) or similar File patent application/prosecute application Patent awards Maintain patent IP PROCESS

12. Invention Disclosure Forms Agency specific forms Include Handouts Presentations Manuscripts/publications Photos Agreements Lab notebooks/data INVENTION DISCLOSURE

13. U.S. Patent & Trademark Office www.uspto.gov Database of published patent applications & issued patents Searchable Encourage your inventors to do a preliminary search to include with ID USPTO

14. Reviews invention disclosures for decision whether to file patent applications & what type of patent application: U.S. only or U.S. & foreign Sets priorities for filing if limited budget Evaluates military use & commercial potential of invention Meets periodically or as necessary INVENTION EVALUATION COMMITTEE (IEC)

15. If approved, a patent application will be filed. Patent counsel is designated to work with inventor: in-house or outside counsel Patent attorney selection based on experience, education, technology, availability & cost. FILING THE APPLICATION

16. Provisional Patent Application emergency measure to protect IP before imminent disclosure U.S. Regular Patent Application Foreign Patent Applications Individual countries, regional (EU), or Patent Cooperation Treaty (PCT) FILING OPTIONS

17. Government owns invention Government can assign or license invention to others But government always retains a non-exclusive, royalty-free license to use or make the invention or to have the invention used or made by others for governmental purposes. GOVERNMENT MADE INVENTION

18. Contractor may take title to an invention made within the scope of a Government funding agreement. Contractor can take title if Reports the making of the invention to the Government Elects to take title to the invention (DD-882) Files a patent application Within deadlines required by FAR 27.3 CONTRACTOR INVENTION REPORTING & RIGHTS

19. When contractor employee is the only inventor Government retains license to use/make invention JOINTLY MADE INVENTION When contractor employee is a co-inventor with government employee co-inventor Contractor & government share ownership of invention CONTRACTOR MADE INVENTION

20. AWARDS & INCENTIVES • Agency Award Programs • Licensing Royalties • 20% to Inventor Up to $150K • First $2000 Immediately to Inventor • No conflict for inventor to accept under 18 USC 209

21. Be proactive Educate and inform Refer your inventor to in-house patent attorney as soon as possible Advise your inventors that they can do both--publish and patent (with a little coordination) HOW YOU CAN HELP

22. IF, before a patent application is filed, your inventor is: Presenting or publishing Disclosing the invention at a trade show or other public meeting Transferring materials or collaborating without a written agreement in place Generating an RFP or contract CALL THE PATENT ATTORNEY!

23. Thank You. You deserve a pat on the back!