Saturday, December 16, 2017

May federal employees patent their inventions?

The short answer is yes.  The longer answer is slightly more complicated.  If a federal employee invents a new technology during their work hours and using federal resources, the employee must assign all rights to the technology over to the United States, which in this case would be represented by the U.S. Department of Commerce.  The Lab or Center where the employee works may then choose to file for patent protection on the invention.  The lab or center would be responsible for all the patent filing and legal fees, as well as for the maintenance fees on the patent.  However, as the inventor, your name would be listed on the patent.

What is the process?

  1. Invent something new and unique

  2. Submit an Invention Disclosure to your friendly TPO staff in Silver Spring for a Rights Determination.

  3. Following the rights determination, you should speak to your lab/center director to determine if there is interest in patenting.  Keep in mind, the lab/center will be responsible for the payments and the United States will own the rights to the invention.  

  4. If your Director agrees to move forward, you may request to file a provisional patent through TPO.  

  5. TPO staff will solicit bids from qualified patent attorneys to file the provisional patent.

  6. TPO, the inventor, and the attorney will work together to complete the paperwork 

  7. The attorney will conduct a patent search and seek out any prior references to the invention (prior art)

  8. Assuming there are no problems, the attorney will file the provisional patent to USPTO.

Does this cost money?

Patent filings do cost money, mostly in the form of attorney's fees, which can range anywhere from $6,000 and up, depending upon the attorney and the complexity of the case.  In addition, there are US Patent and Trademark Office fees for the patent, which include the patent filing fee of $1250 for a large entity, and the maintenance fees, which are charged in years 3, 7, and 11.  Maintenance fees total approximately $9000 over the 20-year life of the patent.  The TPO may have resources to cover USPTO fees.  Please check with a TPO representative to confirm.

If you would like to receive patent protection outside the U.S., you can either submit patent applications in each of the countries of interest or you can file a single global application through the Patent Cooperation Treaty.  However, extending protection outside the U.S. is very time consuming and expensive.  TPO does not advise seeking global patent protection without first licensing the technology to a U.S. company with sufficient resources to pay for the international patent protection.   TPO will not fund patent applications outside the U.S.

Who pays patent maintenance fees?

Assuming adequate funding, the TPO will pay for all fees, including maintenance fees, from USPTO.  The TPO will maintain the patent for your office and ensure the fees are paid in a timely fashion.  If, at any time, funding is not available through TPO, we will request payment of fees from the NOAA lab or center where the invention occurred.  If an invention is jointly patented with an academic institution, we will normally negotiate payment of all fees by the academic institution.  

How do I Pay a Maintenance Fee?

All utility patents which issue from applications filed on or after December 12, 1980 are subject to maintenance fees, which must be paid to maintain the patent in force. These fees are due 3 1/2, 7 1/2 and 11 1/2 years from the date of the original patent grant.  Visit the USPTO "Maintain Your Patent" page for links and info on payment processes.

Where do I find a patent attorney?

The TPO maintains a list of patent attorneys and can solicit other attorneys with specialized experience, if necessary.  We take care of the bidding process for you and present you with the results.  

What is the difference between a provisional patent and a patent?  Which should I pursue?

Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.

A provisional application for patent is a U.S. national application for patent filed in the USPTO under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a later filed non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term “Patent Pending” to be applied in connection with the description of the invention.

A provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with 35 U.S.C. §119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application.

Once a provisional application is filed, an alternative to filing a corresponding non-provisional application is to convert the provisional application to a non-provisional application by filing a grantable petition under 37 C.F.R. §1.53(c)(3) requesting such a conversion within 12 months of the provisional application filing date.

However, converting a provisional application into a non-provisional application (versus filing a nonprovisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a nonprovisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application.

By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months.

Can NOAA jointly patent with a university or a partner?

Yes.  We encourage our scientists to partner with academic institutions whenever possible.  Many universities have well-established technology transfer offices and will often pay all the fees associated with the patent filing.  However, the NOAA inventor or co-inventor must still file an invention disclosure with the TPO and wait for a rights determination before allowing the University to move forward.  Assuming the US Government has some rights to the invention, the U.S. Government must assign those rights to the University.  TPO will assist you with this process. 

Can NOAA assign our patent rights to another party?

Yes.  Normally this will only happen when working with an academic partner, however.  In addition, the U.S. Government will only assign rights when it receives unlimited rights to continue to use the patented technology

Who keeps the official copy of the patent?

The TPO maintains the ribbon copy of the patent.  We will provide you a pdf copy of the patent and a plaque for your office.