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Involving Inventors in the Technology Transfer Process

Involving Inventors in the Technology Transfer Process. Dr. J. Scott Deiter IHDIV Tech Transfer Director FLC Chairman john.deiter@navy.mil (301) 684-0289 FLC MA Regional Meeting Gettysburg, PA Sept, 2009. Training for Scientist/Inventor.

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Involving Inventors in the Technology Transfer Process

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  1. Involving Inventors in theTechnology Transfer Process Dr. J. Scott Deiter IHDIV Tech Transfer Director FLC Chairman john.deiter@navy.mil (301) 684-0289 FLC MA Regional Meeting Gettysburg, PA Sept, 2009

  2. Training for Scientist/Inventor • Annual training on IP patent processes and Partnering through CRADAs • Describe the lab’s “Patent Process” • Filing invention disclosure • Invention Evaluation Board • Writing patent applications • Assignment of rights • Tech Transfer Office contact info • Commercial fields-of-use

  3. Scientist/inventor protection of an invention? • ORTA reinforce the importance of the lab notebook • Proof of “First to invent” • Keep appropriate records, dates • Do not reveal your invention to non-government personnel • Make sure HOME address is on disclosure • After completion, EMAIL form and any supporting data, drawings, etc. to Tech Transfer Office • Inventor, ORTA Rep, try to identify commercial uses • IEB will be convened - 10-minute presentation

  4. Financial Incentive for Scientist/Inventor • Patents with “Dual-Use” • Government AND Commercial use • Commercial value means the potential for Licensing for royalty income to scientist/inventor • Agencies share the royalties with inventors: • the first $2,000 (each inventor) • plus 20% of any remaining royalty payment (divided among inventors) Have inventor help identify commercial uses for your technology!

  5. Inventors Determining Commercial Use • Identify possible fields-of-use for invention before completion of patent application • Nobody knows more about invention than inventor • Nobody cares more about invention than inventor • Commercial “claims/uses” in patent: • Easier to identify value of technology • Makes inventor think about non-federal value

  6. Inventors Can Help to Commercialize their Technology • Aggressively seek interaction with businesses, which could utilize your invention • Report any interest in your invention to the Technology Transfer Office • Cooperate in providing appropriate data/information to prospective companies that have an interest in licensing your invention • Do NOT discuss anything related to: Costs of a license Royalty rate

  7. Successful Technology Transfer Using Scientist/Inventor Integrated Maritime Portable Acoustic Scoring and Simulator Control (IMPASS) Data Systems, Inc. develops marine technologies Metocean • • Metocean Data Systems aware of IMPASS technology through contact withscientist/inventor • Partially exclusive Patent License negotiated Entered into CRADA, allowing Navy inventor to collaborate • on development of IMPASS for commercial market IMPASS successfully commercialized for: • maritime portable scoring – simulation control – acoustic signature and sounding – Under CRADA, Navy and inventor receive: • royalty income from patent license – – first hand knowledge of expanded capability of IMPASS

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