Protection of Intellectual Property Resulting from STCU Projects STCU/NATO Workshop From Science to Business Kiev, Ukraine October 11, 2006 Judson R. Hightower

Protection of Intellectual Property

Resulting from STCU Projects

STCU/NATO Workshop“From Science to Business”

Kiev, Ukraine

October 11, 2006

Judson R. HightowerIntellectual Property Managing Attorney

Oak Ridge National Laboratory

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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY

Presentation Topics

Protection of information Protection of STCU project inventions

Paris Convention Patent Cooperation Treaty (PCT)

United States procedures for protecting STCU project inventions

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Protection of Information

Existing or potential intellectual property rights (patent and trade secret) can be lost by disclosure of certain types of information to others without an obligation on their part to protect such information from further disclosure.

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Protection of Information - Types

Invention information Records of invention Patent applications Proprietary information

Trade secrets Know-how

Databases, software source code and other unpublished materials, even if copyrighted

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Protection of Information – How to

Employee confidentiality agreements Nondisclosure agreements

Information provided to third party Information received from third party Mutual exchange of information with third

party


Protection of STCU Project Inventions

Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention:- multiple formality requirements- multiple searches- multiple publications- multiple examinations and prosecutions of applications- translations and national fees required at 12 months

0 12

Fileapplication

locally

Fileapplications

abroad

(months)ParisConvention

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Protection of STCU Project Inventions - PCT System

File in up to 123 countries with a single international application

Delay the expenses associated with translations foreign filing fees local associates

Provide an early indication of pertinent prior art Give extra time for assessment of commercial

viability in designated States

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File Demand

File first application

File PCT

International Search Report & Written

Opinion of the ISA

Internationalpublication

0 12 18

Internationalpreliminaryexamination

(months)

OR

30

20

Enternationalphase

Chapter I

Chapter II

PCT System30

- one set of formalities requirements- international search- international publication- optional international preliminary examination- translations and national fees required at 20 or 30 months, and only if applicant wants to proceed with national phase entry

Local application followed within12 months by the PCT, claiming priorityunder the Paris convention

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United States Procedures for Protecting STCU Project Inventions

Process for pursuing Patents on US Party Funded Projects (see diagram) US Government will evaluate commercial

potential of invention US Government will have patent applications

prepared for inventions it wishes to protect Costs of application paid by US Government Patent applications provide broad coverage

Institutes will be provided copies of patent applications prepared for US Government which they can then file in their own countries

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Recipient Institute = Owner of IP WorldwideUSG = owns exclusive royalty-free license in U.S. territoryNon-financing Parties = upon request, right to nonexclusivelicense in their Territories

Recipient Institute submits Record of Invention to STCU. STCU distributes Record of Invention to USG.

STCU Patent Support Program

STCU Patent Consideration Committee receives DOE notification

If DOE says “No” to US Patent

DOE has patent application prepared and sends it to Patent Consideration Committee for Recipient Institute to use In filing national or PCT patent application.

DOE Office of Technology Transfer and IntellectualProperty (administers USG rights to IP on behalf ofState Department’s Science Centers Program)

Does USG want to file application for U.S. Patent?

Yes

If DOE says “Yes” to US Patent

After any required “grace period”, DOE files U.S. patentapplication and administers any resulting patent

No

Recipient Institute may file national and/or PCT patent applications with its own funds

Process for Pursuing Patents on US Party-Funded Projects

DOE reviews invention and send notification (“Yes” or “No”) to Patent Consideration Committee

No specific actionsDoes Patent Consideration Committee support Recipient Institute’s pursuit of patent (national, PCT)?

Does Patent Consideration Committee support Recipient Institute’s pursuit of patent (national, PCT)?

Patent Support Program assists Recipient Institute in filing national and/or PCT patent applications

Recipient Institute files national and/or PCT patent applications with its own funds

Patent Support Program assists Recipient Institute in filing national and/or PCT patent applications

No No YesYes

2-3 months

STCU awards Inventor from US Patent Award Fund (financed by US Party)

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QUESTIONS?

Documents

Protection of Intellectual Property Resulting from STCU Projects STCU/NATO Workshop From Science to Business Kiev, Ukraine October 11, 2006 Judson R. Hightower