Involving Inventors in the Technology Transfer Process

1
Involving Inventors in theTechnology Transfer
Process

• Dr. J. Scott Deiter
• IHDIV Tech Transfer Director
• FLC Chairman
• john.deiter_at_navy.mil
• [phone]
• 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 labs 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 with scientist/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