Transcript Partnering and Patents in USDA Agricultural Research Service
Patents in USDA Agricultural Research Service
Gail Poulos Supervisory Patent Advisor
USDA-ARS Office of Technology Transfer
Coordinates Tech Transfer activities in ARS Has authority to develop and sign Cooperative Research And Development Agreements (CRADAs) Has sole authority for licensing any inventions developed within any of the USDA agencies (including Forest Service, FSIS, APHIS)
Office of Technology Transfer
Centralized in policy and approvals, licensing, marketing; decentralized in negotiation and implementation of CRADAs Patenting Marketing Licensing
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8 registered patent agents Located in Beltsville, MD; Peoria, IL; Albany, CA
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Targeted marketing Web subscribe
Tech Alerts
Partnering opportunities
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4 senior licensing specialists
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HQ based Tech Transfer Coordinators
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7 specialists with life science / ag background
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Distributed across geographic Areas of ARS
Office of Technology Transfer
Byron Stover –ERRC Patent Advisors 301-504-4783 [email protected]
Evelyn Rabin -- NAA 301 504-4781 [email protected]
Byron Stover - BA 301-504-4783 [email protected]
Beth Sampson / Howard Owens – PWA 510-559-6067 / 5731 [email protected]
Albert Tsui – NPA 309-681-6512
Albert Tsui – MWA & NPA 309-681-6512
Gail Poulos – SAA 301-504-5302 [email protected]
Evelyn Rabin - MSA 301 504-4781 [email protected]
Randy Deck – MWA & SPA 309-681-6515
OTT as Representative and Liaison
ARS Mission University Interests U.S. Company Interests
Professional Services of ARS OTT – Patent Section
Create, manage & convene Patent Review Committees (e.g., Invention Disclosure) Prepare, file, and prosecute U.S. patent applications, Coordinate cooperator-filed U.S. patent applications Facilitate and direct foreign filings with contractor Training of All ARS scientists
Professional Services of ARS OTT – Patent Section
Assist scientist in preparing electronic Invention Disclosure
Determine whether invention under a CRADA is a “subject invention”
Determine need to present CRADA invention to Patent Committee
Perform inventorship determination
National Patent Committees Three
“Subject Matter”
Committees
Life Sciences
Chemical
Mechanical and Measurement
Each cover all geographic Areas of ARS
Advantages To The ARS
Uniform committee recommendations across the Agency
Committee recommendation within three months of filing an Invention Disclosure
Scientists and management notified of annual schedule at the beginning of each fiscal year
Patent Committee Criteria
Invention Disclosure Patent Advisor Committee Review
“The Five Questions”
Patent Committee Criteria
Invention Disclosure Patent Advisor Committee Review
Q1:
Is there current commercial interest in the invention or a high probability of commercialization in the future?
Patent Committee Criteria
Invention Disclosure Patent Advisor Committee Review
Q2:
Is the magnitude of the market relative to the cost of commercialization sufficiently large to warrant a patent?
Patent Committee Criteria
Invention Disclosure Patent Advisor Committee Review
Q3:
Would the patent likely play a significant role in transferring the technology to the user?
Patent Committee Criteria
Invention Disclosure Patent Advisor Committee Review
Q4:
Would a patent be enforceable, i.e., is the invention drawn to, or does it employ a unique and readily identifiable material or device which could be bought or sold?
Patent Committee Criteria
Invention Disclosure Patent Advisor Committee Review
Q5:
Is the invention of sufficient scope to justify patenting?
NEW USPTO RULES
Strategies Implications
Strategies
Review Entire Pending Docket Prior to Effective Date of Rule Change To: a. Determine number applications that have continuation potential b. Determine which applications should be filed prior to effective date of the rule c. Set up standard operating procedures for applications that will be filed after the effective date of rule change.
d. Determine which applications do not comply with the 5/25 rule and correct.
Strategies
File Provisional Applications for Technologies that will not meet the 5/25 Rule-Use the one year period to determine claims that should be protected by consulting with inventors.
National committees will facilitate determining if other Areas in ARS have inventions that could be considered under 37 CFR 1.78 (f) (3) as having at least one patentably indistinct claim –the Patent Advisors will determine if the inventions can be combined in one application.
Strategies for Jointly-owned Inventions
Will need to work more closely with a partner.
not published.
abandoned by USPTO.
May be an issue in that partner may have to disclose information about applications and claims that are
If partner does not fully disclose, may lose U.S. Government rights if application is Establish that the government is exercising due diligence in complying with rules.
Protect govt. interest by written record of request for solely owned (cooperator) patent applications having overlapping claims.
Note: Filing an explanation that claims are patently distinct creates potential liability for joint owners and office preparing and prosecuting application
Implications to Operations
Increase in the number of provisional and new applications filed
will increase costs
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Note provisional fee: $210.00 patent application filing: about $1500-$5,000
Increase in number of applications going to appeal
will increase pendency & costs: Note: notice of appeal fee $510.00; appeal brief fee $510.00
Potential for the need to write more focused claims:
Note: will result in narrow claims
Implications to Operations
Potential for ARS preparing and prosecuting more patent applications for small business partners and university partners.
Future partnering with large business may be more difficult if development of patentable technologies occurs.
Presumption is that large business will opt for trade secret rather than patent protection
Thorough review of all CRADAs to determine if there are overlapping technologies with different partners and different research units in the agency.
i.e., CRADAs for biofuel research using same starting materials
Office of Technology Transfer 5601 Sunnyside Ave Beltsville, MD 20705 (301) 504-6905 HTTP://OTT.ARS.USDA.GOV