New Faculty New Faculty Proposal Preparation & Patent Submission Presented by: OFFICE OF SPONSORED...

1

New Faculty Proposal Preparation

& Patent Submission

Presented by: OFFICE OF SPONSORED PROGRAMS

2

OFFICE OF SPONSORED PROGRAMSJOHN P. POLITANO JR

ASST. VICE-PRESIDENT FOR RESEARCH DIRECTOR, OSP

X7239

DEB HARTEGANSUPERVISOR, GRANTS

ACCOUNTINGX7269

CAROLYN LOCKYER ASST. DIRECTOR, OSP

X7490

Manfang XuStaff Accountant, OSP

X7279

Kelly GoodlickSenior Accountant, OSP

X7418

3

Overview• OSP Website http://www.fit.edu/research/osp/• What is a Proposal and what does it entail?

It lists the work we propose to do and the required funding to perform the

work.• The agencies we submit to:

NSF/NIH/NASA/SBA/NOAA/ONR/DOD

IMPORTANT NOTE: EVERY AGENCY IS DIFFERENT REQUIRING DIFFERENT FORMS.

4

Types of Grants

• Types of Grants:• Federal, State, Private• Pass Through• Fixed or Cost Based

5

Preliminary Steps PI:

• Locate Funding Opportunity.• Contact OSP.

OSP Staff:• Assist in the development of the internal

budget form.• Provide support on how to upload a

proposal into the Federal online submittal portal (Grants.gov, NSF Fastlane or NASA) or other areas, if applicable.

6

• Once the proposal is complete, OSP will review and submit in accordance with the agency’s guidelines.

• If a Subcontractor is required for the project, OSP will draft and negotiate the subcontract, on behalf of the Institution.

• The internal budget must be routed for signatures and returned, prior to submittal of the proposal.

7

COLOR KEY: RED Required to be filled in

GREENTakes Fringe

PURPLENo Fringe or overhead charged

YELLOW Overhead charged

Office of Research and Sponsored ProgramsTITLE

AGENCY

PI DATE

Co-PI

REQUESTED BUDGET

MATCHING FUNDS

FACULTY 9 MONTH 61060 $0.00

SUMMER FACULTY 61120 $0.00



GRADUATE ASSISTANTS 61070 $0.00

COLLEGE ROLL 61030 $0.00

TOTAL SALARIES $0.00

FRINGE BENEFITS 66104 29.80% 7.65% $0.00

TOTAL SALARY W/FRINGE $0.00

8

REQUEST

ED BUDGET

FIT MATCHING FUNDS

TRAVEL 72605 $0.00

SUPPLIES - OTHER 72199 $0.00

TELEPHONE 72210 $0.00

POSTAGE/ MAIL 72220 $0.00

PUBLICATIONS COSTS 74250 $0.00

OUTSIDE SERVICES $0.00

MISCELLANEOUS 72299 $0.00

SUBCONTRACTS First $25K 74137

$75K for total of $100K

TUITION 73510 $0.00

CAPITAL EQUIPMENT 79130 $0.00

INDIRECT COSTS 76115R #DIV/0! $0.00

MTDC 45.00% TOTAL $0.00

9

PROPOSAL TYPE: New Renewal Continuation Supplement

Will the following be involved in this project, If the answer to any of the following questions is "yes", please secure signature as indicated.

*Human Subjects……………………….. no yes Institutional Review Board

*Vertebrate Animals………………….. no yes IACUC Committee Chair

Hazardous Material/Chemicals………. no yes Safety Committee Chair

Recombinant DNA Molecules………… no yes Biosafety Committee Chair

Ionizing Radiation………………………… no yes

Radiation Safety Committee Chair

Is space (including Renovations, Utility Systems etc.) currently assigned adequate for this project, if no obtain College Dean Signature.

*PRIOR APPROVAL REQUIRED Yes NoCollege

Dean

I have received, read and understand the University policy on Objectivity in Research which addresses conflict of interest.

There is no person responsible for the design, conduct or reporting of the proposed research who has a financial interest that could be a potential and/or real

conflict of interest. Principal Investigator (Signature Required)

There is a potential for a conflict of interest, and the financial interest(s) has been disclosed.

Principal Investigator (Signature Required)

DID YOU HEAR ABOUT THIS OPPORTUNITY THROUGH THE RESEARCH OFFICE _________Yes___________No

P.I. Office of the Dean

Dept Head Director for OSP

10

University Contactfor

Tech Transfer IP and Patents

John P. Politano Jr.Assistant Vice President for Research

Director, Office of Sponsored Programs

Email: [email protected]: 321-674-7239

Address: Keuper Bldg, Room 227

Additional FIT Intellectual Property http://www.fit.edu/research

11

PATENT SUBMISSIONS

Stephen C. Thomas Reg. U.S. Patent Atty

Intellectual Property Legal Services Group Lowndes, Drosdick, Doster, Kantor & Reed, P.A.Melbourne (321) 215-00881901 S. Harbor City Blvd., Suite 720Melbourne, FL 32901(One Harbor Place Bldg.)e-mail: [email protected]: www.lowndes-law.com

mailto:[email protected]

http://www.lowndes-law.com/

Lowndes Drosdick Doster Kantor & Reed

Florida Institute of Technology

Faculty Patent Briefing

Prepared by:

Stephen C. ThomasU.S. Reg. Patent Atty

Prepared for:

Mr. John PolitanoAsst. V.P for Research

Director Sponsored Programs

Agenda• Patent Application Requests• What is an invention?• Who are the Inventors?• What level of disclosure is required?• Prior art & duty of disclosure• Types of patent applications• Bars to Patentability• Common issues

www.lowndes-law.com

Stephen C. Thomas [email protected] Property 13











Patent Application Requests

www.lowndes-law.com

• Requests for patent applications should be made by:– Completing the Invention Questionnaire found at

http://www.fit.edu/research/osp (see handout)– Providing the questionnaire to Mr. John Politano,

Asst. V.P. for Research (see FH 2.19.2)

• Following the submission of the Invention Questionnaire the IP committee will consider it in due course and advise

Stephen C. Thomas stephen.thomas@lowndes -law.com

Intellectual Property 14



http://www.fit.edu/research/osp





















Patent Application Requests

• Ownership of discoveries and inventions– Owned by University; assigned by inventor;

prosecution of patents determined by the committee, unless:• University has contributed nothing substantial;• Invention is not related to any University

research; and• Invention was developed on faculty member’s

own time and without any expense to the University

(see FH 2.19.2 (2))

www.lowndes-law.com













www.lowndes-law.com

What is an invention?



• An IDEA is not an invention.• A CONCEPT is not an invention.• An invention is:

invention = conception + reduction to practice• Reduction to practice may be:

– Actual (e.g. a prototype)– Constructive (e.g. a written description)

• The patent application itself may serve as constructive reduction to practice











Who are the Inventors?

• Anyone who contributes to either the conception or reduction to practice

• Must be an individual (not a business entity)

• A person who “helped” but did not actually contribute to either the conception or reduction to practice is not and inventor

• Incorrect inventorship will invalidate a patent

www.lowndes-law.com











hat level of disclosure is required?W

• Must clearly set forth the invention such that a Person of Ordinary Skill in the Art (POSA) would, just from reading the disclosure, know how to practice (e.g. make and use) the invention.

• Must set forth the best mode of the invention– Cannot hold back “secret” best mode. This

will invalidate the patent

www.lowndes-law.com














What level of disclosure is required?

• Drawings must be clear and unambiguous.– Do not include dimensions unless they are

necessary to practice the invention– Photographs are disfavored

• Generally they are not clear enough to be used

• They reproduce poorly• They do not typically show all the features of

the claimed invention

www.lowndes-law.com











www.lowndes-law.com

Prior Art & Duty of Disclosure


• What is prior art?– Basically, it is everything that exists before your

filing date. Invention date is no longer as important as in the past.

– Prior art may be a patents, a printed publication, or any disclosure that teaches the same or similar invention.

– Prior art may come from anywhere in the world, in any language










www.lowndes-law.com



• In the university setting, prior art searching may be easier and harder at the same time– Easier, because most subject technologies have

only existed for a few years or decades– Harder, because in the highly published

environment of academia, there may be many papers published that are relevant (non-patent literature, or NPL). A search of the NPL should be performed by the professor prior to submitting.











www.lowndes-law.com

• Duty of Disclosure– Inventor/applicant must disclose all materials that

are material to the patentability examination being conducted by the USPTO

– Failure to provide will invalidate the patent and may be construed as fraud on the USPTO

– This applies to non-provisional patent applications only

– Best practice is to disclose everything, even if unsure whether material to examination











www.lowndes-law.com

Types of Patent Applications



• Utility (provisional, non-provisional)– Provisional (not examined by USPTO)

• Placeholder, least expensive filing• Allows 12 months to determine whether to file a

non- provisional. Expires at 12 months.• Must completely describe the invention• Many provisionals are inadequate and lead to a false

sense of security because care is not take to generate a completely enabled disclosure. This is the provisional trap.

• Does not, by itself, result in a patent












www.lowndes-law.com

• Non-provisional– More expensive than provisional– In addition to complete disclosure must include

claims setting forth the boundaries of the invention. These claims are examined by the USPTO

– May claim priority to provisional or other non- provisional

– May result in a patent, if all conditions for patentability are met














www.lowndes-law.com

• International Applications (two types)– Paris Convention– Patent Cooperation Treaty (most common)

• Must be filed within 12 months of the earliest priority document (typically a provisional)

• Are prosecuted separately in each country.• Should identify at the outset if international

patent protection is desired.Stephen C. Thomas

[email protected] Property 25










www.lowndes-law.com

Bars to Patentability

Stephen C. Thomas [email protected] Intellectual Property 26

• Prior art– Anticipation under 35 USC 102

• A single reference that discloses all the elements of a claimed invention

– Obviousness under 35 USC 103• One or more references that, taken in combination,

teach or suggest all the elements of a claimed invention












• Disclosure prior to filing date– Printed Publication by inventor

• 1 year grace

– Offer for sale, Public use• Statutory language is unclear. The grace period

MAY HAVE been eliminated by the recent America Invents Act. We have not see a controlling case on this yet.

– Best practice is to file before these events occur.

Bars to Patentability

www.lowndes-law.com











www.lowndes-law.com

Common Issues


• Determining the scope of the invention– Do you have an invention, or just an idea?– Reduction to practice is the key– Oftentimes, a scientific paper submitted as a

patent disclosure may only describe an idea or suggestion, not an invention

– Clearly define exactly what the invention is before submitting an invention disclosure• What is the best mode? Disclose it in the write up










www.lowndes-law.com

Common Issues (cont.)


• Incomplete disclosure– A simple write-up describing the concept of the

invention is generally not adequate as a patent disclosure

– Incomplete drawings– “fuzzy” photographs provided in lieu of

drawings– Missing parameters (optical wavelengths, power

levels, geometries, parameter ranges, etc.)










www.lowndes-law.com

Common Issues (cont.)



• Patent disclosure written as a suggestion for future investigation (“we will investigate”, etc.)– While this is necessary form when applying for

grants or other approvals, it is a red flag to the patent examiner that the invention has not been reduced to practice.

• Incorrect inventorship– Typically, either failing to name an inventor, or

naming a non-inventor out of kindness











www.lowndes-law.com

How to reduce patent costs


• Provide carefully written and complete disclosure that clearly sets forth the invention– Think … if you had never heard of this invention,

what would you need to know to practice it?– Details matter. More detail is best. Sketchy

detail may lead to rejections or an invalid patent.– Rework drawings so that they are clear, detailed,

and unambiguous. Avoid photographs unless absolutely necessary. CAD drawings are preferred.










Contact Information

Stephen C. Thomas, Esq. [email protected] [email protected] www.lowndes-law.com1901 S. Harbor City Blvd, Melbourne, Florida 32901 (321) 215-0088

Orlando, Florida | www.lowndes-law.com





































www.lowndes-law.com











New Faculty New Faculty Proposal Preparation & Patent Submission Presented by: OFFICE OF SPONSORED...

Documents

Transcript of New Faculty New Faculty Proposal Preparation & Patent Submission Presented by: OFFICE OF SPONSORED...