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INTRODUCTION TO INTELLECTUAL PROPERTY & THE ARMY PATENT PROCESS

George A. MetzenthinCahn & Samuels, LLP

Washington, D.C.

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Topics

• Overview of Intellectual Property• Invention Disclosure Process• Patent Application Process• Awards & Incentives• Government Procurement & Intellectual

Property Rights

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Intellectual Property

• Patents

• Trademarks

• Copyright

• Trade Secrets

• Data Rights

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Patent

• A grant from the U.S. Government for a limited time during which the owner can exclude others from making, using, offering to sell, or selling the invention that is claimed in the patent document.

• Authorized in U.S. Constitution, Art. I, Sec. 8

• Grant is territorial - protection only in U.S., its territories and possessions

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Trademark

• A name, symbol, logo, combination or other identifier that indicates the source and quality of goods and services and distinguishes those goods and services from those of the competition.

• Also includes servicemarks, collective marks, certification marks.

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Copyright

• An exclusive right to reproduce, distribute, perform, display or prepare derivative works of original works of authorship.

• Examples:– Literary Works– Audiovisual Works– Music– Software

• The U.S. Government can not register a work authored by government employees.

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Types of Patents

• Utility Non-provisional– For functionality

• Provisional– Informal for functionality

• Design– For ornamentality

• Plant– For asexually reproducible plants

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U.S. Applications• PROVISIONAL - LAPSES AFTER 1 YEAR

– No review by U.S. PTO– Used as a mechanism to get an early filing date– Used in conjunction with regular filing, not as a

replacement of a regular application

• NON-PROVISIONAL - FULL TERM– Has formal requirements that must be met prior to filing– Full review and processing by U.S. PTO– Pending for 2-3 years on average at U.S. PTO

• DESIGN– Protects the look of an object

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Foreign Applications

• PCT - Patent Cooperation Treaty• Other Regional Treaties• Individual Country Applications

– each of these must be filed within 1 Year of U.S. filing to claim priority

• Absolute Novelty Standard– Any public disclosure prior to filing destroys ability

to obtain a patent

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Utility Patent

• PROCESS/METHOD• MACHINE • ARTICLE OF MANUFACTURE • COMPOSITION OF MATTER • IMPROVEMENTS THEREOF

• Term: 20 Years From Filing Date

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Conditions of Patentability

• Useful– Some utility no matter how limited

• Novel– Element(s) not described by prior art or previously

known or used

• Nonobvious– Unexpected or surprising development from

viewpoint of person ordinarily skilled in the art

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Conditions Defeating Patentability

• Invention was known or used by others in the U.S. before the invention by the applicant.

• Invention patented or described in a printed publication anywhere in the world before the invention by the applicant.

• Applicant(s) did not invent the invention.

• Invention was made by another before you made it and the other inventor did not abandon, suppress, or conceal it.

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Conditions Defeating Patentability (cont’d)

• Invention patented or described in a printed publication anywhere in the world more than 1 year before application filing date.

• Invention offered for sale or on sale in U.S. more than 1 year before application filing date.

• Invention has been abandoned by the inventor.

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Priority of Invention• U.S. is a first to invent system.

– rest of world is a First to File system.

• U.S. PTO factors to determine first inventor– Date of conception– Date of reduction to practice– Reasonable diligence of the person who first

conceived from conception until reduction to practice

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U.S. Army MEDCOM Patent Process

• Invention disclosure• Invention Evaluation Committee (IEC) review• Preparation and filing of U.S. and/or foreign

patent applications• Issue of patent• Payment of maintenance/annual fees

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Here are a couple of versions of the SMEED litter stand attached to a litter, which will serve as an exemplary invention.

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Invention Disclosure

• Laboratory Notebooks– Describe invention– Dates of conception– Date of reduction to practice– Evidence of diligence– Sign and date entries– Witnesses attest to operability of invention– Make frequent entries as work progresses– Usually best evidence of development

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Invention Disclosure Process

• Required forms– DA 4734-R Invention Disclosure– DA 2871-R Invention Rights Questionnaire– DA 2874-R Assignment of Invention

• Review by Research Area Director (RAD)• Review and recommendation by IEC

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U.S. Army Employee Responsibilities

• For inventions made as part of official duties– the employee must submit invention disclosure

form (DA 4734-R)

• For inventions unrelated or indirectly related to official duties– the employee may submit invention disclosure

form

• In both cases, the employee must submit a rights determination form (DA 2871-R)

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DA Form 4734-R

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DA Form 4734-R Content

• Background information – conception and disclosure dates

• Essay questions on page 2– describe the invention and its operation– what are the advantages over current devices– what problems does the invention solve– what other possible uses are there for the

invention– list the features that you think are new

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Ownership Criteriaif rights determination is requested

• The Government will make a determination based upon the facts and circumstances of the development of the invention according to Executive Order 10096 and 37 C.F.R. 501.

• Employee has the right to appeal the determination with the Under Secretary of Technology, U.S. Dep’t. of Commerce.

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RAD Review

• Research furthers an established science and technology objective

• Military need for the invention

• Appropriate military priority

• Commercial applicability

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IEC Review

• Recommend filing of patent application– Provisional/regular utility application

– Foreign filing

– No filing

• Further information needed– Additional test data

– Additional explanation of invention• the inventor(s) ideally participate in a portion of the IEC

meeting relating to their disclosures

• Recommendation as to ownership

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Patent Application Contents

• Title• Background of the Invention• Brief Summary of the Invention• Detailed Description of the Invention• Claims• Drawings

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Patent Application

• Prepared by a patent attorney based on the Invention Disclosure Form and interaction between the patent attorney and the inventor(s)

• Prior to or shortly after filing of the patent application, a Declaration and Power of Attorney will need to be executed by the inventor(s)

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U.S. PTO Review

• Information Disclosure– submission of related art known by the inventor(s)

• Office Actions– prior art analysis – submitted by the inventor(s)

and located by the Examiner– review of formal requirements

• Amendments– Declarations/Affidavits

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Concurrent to the examination activities, publication of non-provisional patent applications occurs at 18 months after the first priority date.

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Patent Issuance• Notice of Allowance• Payment of fees• Letters Patent• Maintenance fees due

– 3.5 years after issuance– 7.5 years after issuance– 11.5 years after issuance

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Awards & Incentives

• Initial Award– $200 upon filing of U.S. design or non-provisional

patent application

• Final Award– $500 upon issuance of patent if sole inventor– $250 to each if multiple inventors

• Licensing Royalties– 20% to inventor(s) up to $150K/year– First $2000 immediately to inventor(s)

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Government Procurement & Intellectual Property Rights

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Extramural Patent Reporting

• 35 United States Code 200 et seq.

• 37 Code of Federal Regulations Part 401• Federal Acquisition Regulation Part 27.3• Defense Federal Acquisition Regulation Part

227.3

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Extramural Patent Reporting (cont'd)

Contractor generally may retain title to any invention made or conceived while performing under a government contract, grant, or cooperative agreement.

Government retains a non-exclusive license to use or make the invention.

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Contract/Grant Requirements

• To retain title to invention, contractor must:

– DISCLOSE invention to government

– ELECT to retain title

– FILE patent application

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Disclosure

• Disclose invention to Government (Contracting Officer)

– Within 2 MONTHS of disclosure to inventor’s employer (Grantee or Awardee)

– DD Form 882 report of invention or similar document

• complete, original signed document

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Election• Elect to retain title

or • Elect not to retain title

• Grantee/Awardee notifies Contracting Officer– Within 2 years of disclosure to Government

(Contracting Officer)– Unless there has been a disclosure or other event

defeating patentability

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File Patent Application

• File patent application with patent office(s)– Within 1 YEAR of notification to Contracting

Officer that Grantee/Awardee elects to take title to invention

– Grantee/Awardee provides copy of patent application

– Grantee/Awardee provides copy of confirmatory instrument (license to Government)

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Patent Application• Application should include statement that

government has an interest in invention (at beginning of application)

• “The U.S. Government has a paid-up license in this invention and the right in limited circumstances to require the patent owner to license others on reasonable terms as provided for by the terms of (contract/grant number) awarded by (agency).”

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Confirmatory Instrument (License)

• Grantee/Awardee provides copy of confirmatory instrument

• Confirmatory instrument is a license to Government to make/use the invention

• Confirmatory instrument is recorded at the U.S. Patent & Trademark Office

• Original signed document needed

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Computer Software

• 10 U.S.C. § 2302(4), 10 U.S.C. § 2305(d)(4), 10 U.S.C. § 2320, 10 U.S.C. §2321, 10 U.S.C. § 2325

• Executive Orders 13103 and 12591(1)(b)(6)• Federal Acquisition Regulation 27.4• Defense Federal Acquisition Regulation 227.72• May be covered by the Patent Laws

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Commercial Software (COTS)

• Commercial software is software developed or regularly used for non-governmental purposes that:– Is sold or leased to the public– Offered for sale or lease to the public– Not yet offered or sold to the public but will be

available for sale or license in time to satisfy delivery requirements of contract

– Satisfies any one of the above and requires only minor modification to meet contract requirements

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Non-Commercial Software (GOTS)

• Non-commercial computer software is any software that does not fall within the definition of commercial software

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Software Rights Allocation

• Contractor always has the right to use software that it developed as it sees fit

• Unlimited Rights– The Government has the right to use, modify, reproduce,

release, perform, display, or disclose computer software or computer software documentation in whole or in part, in any manner and for any purpose whatsoever, and to have or authorize others to do so.

– The Government is entitled to unlimited rights where the contractor develops software entirely with Government funds.

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Software Rights Allocation (cont'd)

• Restrictive Rights– The Government can use software with one

computer at one time. Cannot be accessed by more than one terminal unless permitted in contract.

– The Government has restrictive rights in software that is required to be delivered or otherwise provided and is developed entirely at private expense.

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Software Rights Allocation (cont'd)

• Government Purpose Rights– The Government has the right to use, modify

reproduce, release, perform, display, or disclose computer software or computer software documentation within the government without restriction.

– The Government further has the right to perform or authorize others to perform all of the above outside the Government for government purposes.

– The Government has government purpose rights in software that is developed using mixed funding.

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Software Marking Requirement

• Prior to contract award, the offeror must identify any computer software or computer software documentation that it asserts should be provided to the government with restrictions.

• Contractor should identify software for which the Government has previously obtained rights.

• The Government has a right to review, verify or challenge and validate all markings.

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Technical Data Rights

• 10 U.S.C. § 2302(4), 10 U.S.C. § 2305(d)(4), 10 U.S.C. § 2320, 10 U.S.C. §2321, 10 U.S.C. § 2325

• Executive Orders 13103 and 12591(1)(b)(6)• Federal Acquisition Regulation 27.4• Defense Federal Acquisition Regulation 227.4

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Data Rights Allocation

• Unlimited Rights– The Government has the right to use, modify,

reproduce, release, perform, display, or disclose technical data in whole or in part, in any manner and for any purpose whatsoever, and to have or authorize others to do so.

– The Government shall have unlimited rights in:• Data pertaining to an item developed exclusively with

government funds• Data produced for the contract that was specified as an

element of performance

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Data Rights Allocation (cont'd)

• Limited Rights– Right to use, modify, reproduce, release, perform

display, or disclose technical data in the Government or, in very limited circumstances, to authorize others to use data.

– The Government shall have limited rights in technical data for items developed exclusively at private expense

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Data Rights Allocation (cont'd)

• Government Purpose Rights– Right to use, modify, reproduce, release, perform,

display, or disclose technical data within the Government without restriction.

– The Government further has the right to perform or authorize others to perform all of the above outside the Government for government purposes.

– The Government has government purpose rights in items developed using mixed funding.

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Data Marking Requirements

• Prior to contract award, the offeror must identify any data that it asserts should be provided to the Government with restrictions.

• Contractor should identify any data for which the Government has previously obtained rights

• The Government has a right to review, verify or challenge and validate all markings.

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Additional Information Sources

• http://www.uspto.gov/main/patents.htm– web page with a variety of information about

patents

• http://www.uspto.gov/patft/index.html– web page with links to enter the U.S. Patent &

Trademark Office search engine to search U.S. issued patents and published patent applications