Market Analysis of Government Inventions

The Private Sector

Federal Laboratory Consortium Mid-Atlantic Region Annual MeetingSEPTEMBER 16

Tim Wittig Principal202/841-0655

Wittigsall@aol.com

Who Are We?

• SAIC– Science Applications International Corporation– A Nation-wide High Technology Company

• Active almost everywhere.

• Technology Management AdvisorsTim 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, JDKaren Presley, JD, MBA, 2/3 LLM Jorge McPhersonLisa Gallmon Vincent Gadsden

Tom Taylor

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.

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

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?

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?

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

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

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!

QUESTIONS??????

Tim WittigPrincipal

Technology Management AdvisorsScience Application International Corporation

202 841 0655Wittigsall@aol.com