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Obtaining a Marketable Invention Disclosure

Obtaining a Marketable Invention Disclosure. FLC Mid-Atlantic Regional Meeting Dave Spevack Office of Chief Counsel Army Research Laboratory. How Do I Obtain a Marketable Invention?. The Process starts when the Researchers recognize they have made an invention. Is what was done new?

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Obtaining a Marketable Invention Disclosure

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  1. Obtaining a Marketable Invention Disclosure FLC Mid-Atlantic Regional Meeting Dave Spevack Office of Chief Counsel Army Research Laboratory Dave Spevack (Retired) US Army Research Laboratory

  2. How Do I Obtain a Marketable Invention? • The Process starts when the Researchers recognize they have made an invention. • Is what was done new? • Is it different from what came before in the science (art)? • Does it improve a machine, product (chemical), method, or manufacture? • Has it been reported to your Patent Attorney and/or ORTA? FLC Mid-Atlantic Regional Meeting

  3. What Is a Patent? • A patent is an agreement between the Federal Government and the inventor(s) that for a limited time, • In return for teaching the world how to make and use an invention, • The Government will permit use of the courts by the inventor(s) to enforce the owner’s exclusive right to make, use, and permit others to make and use the invention. FLC Mid-Atlantic Regional Meeting

  4. What Does Teaching Mean? • Telling those reading the patent how to reproduce your invention. • It does not have to be perfect! • You must disclose at least one example that is detailed (enabling). • You should include alternatives that you still consider to be your invention. FLC Mid-Atlantic Regional Meeting

  5. Do All the Examples Need to Be Tested? • The simple answer to this question is NO!!! • Examples can be theoretical…BUT… • You should have at least one example that is a proof of the concept. • Actual examples are stated in the past tense so the PTO knows that is work actually done. • Theoretical examples are stated in the present tense. • Never use the future tense or “may” or PTO will say you are guessing and don’t really know. FLC Mid-Atlantic Regional Meeting

  6. How Do I Report an Invention? • Almost all employers of any size have an “Invention Disclosure” form. • Each Federal Agency has its own Invention Disclosure form, but they each ask for similar information. • All the requested information is important and could effect creating a good patent application or retaining the patent once it is issued. FLC Mid-Atlantic Regional Meeting

  7. Why Is the Information Important? • The requested information serves several purposes. • Some of the information is there because Congress wants to know. • Some of the information is there because it may be necessary in future challenges such as: • Interferences. • Litigation • Some are seeking information to draft a defendable application. FLC Mid-Atlantic Regional Meeting

  8. Information Importance Continued 1 • When an ID (Invention Disclosure) asks for full name and citizenship it’s because Congress wants that information. • When the ID asks for work relationship, e.g. Government employee, contractor, University employee, grant holder, etc. it’s because the rights to an invention are different for each. • A Government Attorney can not spend Government paid for time etc. unless the Government owns the invention. FLC Mid-Atlantic Regional Meeting

  9. Information Importance Continued 2 • Let us look at a typical form ARL Form 179-R-E. • I chose this form because it was available and seemed to cover the necessaries. • Remember, the more time an attorney /ORTA spends chasing basic information, the fewer ID’s can be processed in a year. FLC Mid-Atlantic Regional Meeting

  10. What’s in The ID Form? FLC Mid-Atlantic Regional Meeting

  11. Information Importance Continued 3 • The title is going to identify the ID until it receives a number. • It should not be “cutesy” • It should be three to seven words • It should distinguish this ID from others by the same inventor • The relationship to the Lab is important for the reasons discussed. • The contact information is vital because Congress and the attorney need to know. FLC Mid-Atlantic Regional Meeting

  12. Information Importance Continued 4 • Don’t miss that question at the bottom • “Short (3 sentence) description of what part(s) of the invention you contributed to so a determination of what claims are attributable to which inventor can be made” • A patent should NOT be treated as a publication where “Thank You’s” take the form of co-inventorship. • Each co-inventor is an equal owner of the entire invention. FLC Mid-Atlantic Regional Meeting

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  14. Information Importance Continued 5 • The second page of this 5 page form asks for the same inventor information as the first page. Three inventors is reasonable, more than that needs explanation. • Next is “Invention History”, “List of Witnesses” & “Laboratory Notebook Data”. • If you can’t guarantee that when the Attorney calls for this information in 5-7 years, you can immediately bring it to Counsel’s office, make copies and put it in the file. FLC Mid-Atlantic Regional Meeting

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  16. Information Importance Continued 6 • The next questions about “publications”, “related patents” etc., “existence of an embodiment” and “history of past and present uses”, are important to crafting an INVENTION out of an idea or one example. • The most important of the information requested is the “Description of the Invention” FLC Mid-Atlantic Regional Meeting

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  18. Description of the Invention 1! • Don’t think that one or two sentences is a full description. • Patent Attorneys DO NOT write Science Fiction. • Patent Attorney rewrite your facts and information into a proper patent application. • If YOU don’t provide the data and information, who will? • Provide a copy (electronic and hard copy) of any articles you write BEFORE submitting them for publication. FLC Mid-Atlantic Regional Meeting

  19. Description of the Invention 2! • Distinguish the invention from what came before. • Describe in detail why this invention solves a problem in the art whether it was recognized or not. • Describe all possible uses of the invention. • Point out what is new about this invention. FLC Mid-Atlantic Regional Meeting

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  21. The Last Page, Signatures. • Signing and dating the ID is important. • The signature blocks should reflect organizational affiliations. • This form reminds the signers of EO 10096. FLC Mid-Atlantic Regional Meeting

  22. Why Is This Important? • It is important because too many or too few inventors that contributed to the inventive concept, and the patent is • Failure to fully describe the invention and the patent is • Failure to describe the best mode of practicing the invention and the patent is Invalid INVALID INVALID FLC Mid-Atlantic Regional Meeting

  23. Questions? The End FLC Mid-Atlantic Regional Meeting

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