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New Technology Assessment Making Informed Patenting Decisions

NASA Goddard Space Flight Center. New Technology Assessment Making Informed Patenting Decisions. p r e s e n t e d a t Annual Meeting, Mid-Atlantic Region Federal Laboratory Consortium for Technology Transfer September 16, 2008. Ted Mecum Technology Manager

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New Technology Assessment Making Informed Patenting Decisions

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  1. NASA GoddardSpace Flight Center New Technology AssessmentMaking Informed Patenting Decisions p r e s e n t e d a t Annual Meeting, Mid-Atlantic RegionFederal Laboratory Consortium for Technology TransferSeptember 16, 2008 Ted MecumTechnology Manager Innovative Partnerships Program (IPP) Office NASA Goddard Space Flight Center

  2. NTA Players

  3. Goddard Innovative Partnerships Program Office New Technology Assessment Process Map IPP – Code 504 Start IPP Chief Assign new case to TM TM Small Business Hold? N N IP recommendations LE? Y N Y N Review new and open cases Stat bar? Final recommendation LE waiver? Y Inactivate Pursue protection Assessment Y New Technology Reporting Assistant Y Send out updated spreadsheet to staff 2 weeks prior to next NTA meeting Update TechTracS with notes and actions from recommendations open case- 2 Year hold Post NTA mtg w/ IPP Marketing & OPC to review notes Small Business 2yr Hold? Fuentek Provide assessment N OPC Follow up with Non- Provisional or Provisional patents as recommended Post NTA mtg w/ IPP Marketing & New Technology Reporting Assistant to review actions Resolve IP issues N Y Inactivate case Concur IPP/ Patent recommendations Pursue patent Technology Transfer Support Assistant Implement passive marketing Post NTA mtg w/ OPC & New Technology Reporting Assistant to review actions Glossary of Acronyms/Terms: TM – Technology Manager IPP Chief – Innovative Partnerships Program Office Chief NTR – New Technology Report NTA – New Technology Assessment OPC- Office of Patent Counsel LE- Large Entity Revised MJ 2-4-08 End

  4. Stages of NTA • Determine disclosure • Determine ownership • Screen technology • Recommend strategy/next steps • Implement recommendations

  5. Disclosure Status • Has a stat bar been triggered? • Public disclosure starts 1-year clock for filing non-provisional patent application • Precludes international patent protection • OPC validates stat bar and patentability • Extent of disclosure • Consider filing provisional patent application

  6. Ownership • Civil Servant Only • NASA (government) owns • Co-Owned • Negotiate joint-ownership agreements • Contractor owned • Small Business or College/University • Can take 2 years to decide whether to retain or waive ownership rights • Large Entity • Can request that government waive its rights, shifting ownership to the company

  7. Screen • Preliminary evaluation of technology against set criteria • IP strength • Market size, structure, significance • Tech’s level of development • Comparison to state of the art/competition • Ease of implementation • Time-to-market considerations • Consider strategic value of tech for NASA

  8. Recommendations • Inactivate • Lack of NASA ownership • Insufficient current or future commercial potential and/or strategic value • Pursue IP protection (patent) • Value is obvious (non-provisional) • Value is highly likely (provisional) • OPC confirms recommendation • Assess • More information needed to make patenting decision

  9. Assessment: What and Why • What it is • In-depth evaluation against key factors • Commercialization potential • IP protection possibilities • Market factors • Why we do it • To validate and verify technology’s potential for licensing

  10. Implement Recommendations • Patenting recommendation confirmed at NTA • OPC files patent application • Marketing • Passive: TT support/assistant submits technology to databases • Active: TM pursues potential licensees, developing and negotiating agreements as needed

  11. Summary • Ownership and patentability are key questions that should be answered first • Screening is a low-resource effort to guide future high-resource efforts • Assessment offers more “precision” in making the patenting decision • Quality tracking and information management systems are essential (TechTracS)

  12. Thank You! • Ted MecumTechnology ManagerInnovative Partnerships Program OfficeNASA Goddard Space Flight Center(301) 286-2198ted.mecum@nasa.govhttp://ipp.gsfc.nasa.gov

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