Market Analysis of Government Inventions The Private Sector

1. Market Analysis of Government InventionsThe Private Sector Federal Laboratory Consortium Mid-Atlantic Region Annual Meeting SEPTEMBER 16 Tim Wittig Principal 202/841-0655 Wittigsall@aol.com

2. Who Are We? • SAIC • Science Applications International Corporation • A Nation-wide High Technology Company • Active almost everywhere. • Technology Management Advisors Tim Wittig, J.D. Rick Lilley, J.D. Don Townsend, J.D. Kevin Smith, Ph.D. Charesse Evans, JD - MBA Bernie Chachula JD, MBA, LLM Clark Tyler Phillip Singerman, Ph.D. Mark Terry, JD Jim Bechtel, JD Karen Presley, JD, MBA, 2/3 LLM Jorge McPherson Lisa Gallmon Vincent Gadsden Tom Taylor

3. Current Clients • Army Research Laboratory • Army Armaments RDEC at Picatinny NJ • Benet Laboratories, Watervliet NY • Naval Air Warfare Center at Pax River MD • Crane Naval Surface Warfare Center, IN • Army Game Project, West Point, NY • PM Combat Munitions Systems • Office of the Deputy Undersecretary of Defense • TechLink, Montana State University • Maryland Dept. of Business and Economic Development • City of El Paso TX • L-3 Communications Inc.

4. Minimum Requirements • Before a decision to go forward with a commercialization effort for any invention can be made, some basic issues must be established: • IP Protection? • Filings? • Breadth? • Ownership? • Ease of Adoption? • Each of These Issues Can Scuttle a Business Case Before It Gets Underway

5. IP Existence and Ownership • Is There Any Intellectual Property in Existence • If yes, at what stage: • Disclosure filed? • Invention Rights Questionnaire Signed • Application signed by all and Filed? • Enabling Disclosures an Issue? • PCT Filed within 12 months of initial Application? • What Countries Elected? • Patent Granted? • Continuations in Part Filed, Planned? • Divisional activity? • Research Continuing? • Are Signatures In Place • All Inventor Assignments signed? – Recorded? • If Corporation present - Assignments signed? – Recorded?

6. Other Issues • Any other party have rights? • Support Contractor? • CRADA Partner? • Government Use Rights? • Pre-Existing Licenses? • Rights Clearly Defined, or • Termination agreement signed? • Maintenance Fees Paid?

7. Nature of Claims • Are the Claims Broad or Narrow • Freedom of Action Issues? • Fields of Use • Do Claims Clearly Cover the Use Intended • If Other Licensees, Carve Out Clear Rights • This And Not That Is a Better Approach • Does the Application / Patent Describe an Order of Magnitude Improvement

8. Other Issues • Ease of manufacture • Great Performance vs. Difficult Manufacturing Process (cost) • Materials or Regulatory Barriers? • Ease of Adoption • Is Significant Design Work needed to Use the Invention? • Disruptive Inventions? • Consider the time needed to “Design in” the Invention? • Inventor team remaining active? • Reduction to Practice • Working model usually required • Data Critical • Prove it works, • Prove it can reach cost and performance targets

9. Summary • With these questions answered, the ORTA can be confident that intellectual property basics will not get in the way of licensing. • From here, the market will drive the decisions • Collect this information and use this same set of questions to identify your most marketable inventions • PRACTICE NOTE • Using the Paul Fritz method, document each of these issues and put a copy of the document illustrating each fact into a document protector in a binder for long term use. Remember, a license may be 17 years in duration!

10. QUESTIONS?????? Tim Wittig Principal Technology Management Advisors Science Application International Corporation 202 841 0655 Wittigsall@aol.com