Summary: You Have Developed a Patentable Product on an ATE Grant. Now What?

Judith Fitzpatrick shared this interesting summary from a workshop that she organized for the ATE PI conference.

This workshop was convened because the recent emphasis on entrepreneurial and research based ATE projects is beginning to yield significant intellectual property, i.e. copyright and patents. The panel consisted of Ned Isralesin, a practicing patent attorney, Patricia Campbell, Director, Maryland Intellectual Property Legal Resource Center at the University of Maryland Francis King Carey School of Law, and Dorian Grumet,  Director of Licensee Relations and Compliance at the Office of Technology Commercialization (OTC) at Rutgers University.  There was considerable interest discussion of the basics of patenting and copyrighting which is not included in this summary as the info was often specific.  The following is a summary of further discussion.

Prior to the Bayh Dole (BD) Act of 1980,Inventions developed under a Federal Grant belonged to the government.  As the government was unable to efficiently commercialize the products, the BD Act required that institutions receiving federal grants assume responsibility for patenting and commercializing  inventions and require all employees to sign agreements that any invention developed under federal funding be  assigned to the Institution.  Any invention developed/funded/performed in NSF funded environment is the property of the NSF funded institution and must be reported to iEdison.gov within 2 months of conception.   The act further requires that the proceeds of licensing be shared with the inventor – Rutgers assigns 25-28% to the inventor.  Should the institution decline to move forward with patenting of the invention, it  must be returned to NSF and at this point the inventor has the option of asking NSF for rights to the invention– and this is usually granted, however, the inventor then assumes the same responsibilities to NSF as the institution.  The responsibilities of the institutions receiving federal grants are extensive.  They must prosecute the patent and actively seek to commercialize and monitor/report to the NSF on progress throughout the life of the IP.   Obviously this function is not usually available except at larger institutions.  The issue is, how can community colleges meet these requirements.

The consensus seemed to be that computer products would most efficiently handled via copyright as their lifetime is shorter than the time required to prosecute a patent.  A trained grant staff could guide researchers to handle this task as copyright is quite simple and inexpensive and iEdison is user friendly.   Patents are expensive and are only warranted when there is prospect of commercial success, which must be evaluated by and secured by the institutional IP team.  

Two avenues available to commercialize products developed with NSF funding are the iCorp and SBIR grants.  iCorp grants are up to $50,000 and provide intensive business training to the entrepreneur – it was reported that recipients of this grant that applied for the SBIR grants (up to $150,000) had a 65% success rate.

Several models that would allow CC access to the infrastructure they would require were briefly discussed.

Patricia Campbell reported that Maryland offers any citizen of Maryland access to the Center for assistance with patenting (law students intern writing patents for the clients) and with commercialization.  Thus Maryland CC could access this resource.  It is not known if this model exists in other states.

Rutgers University is piloting an agreement with BCC to patent a product developed there.  Under this proposed agreement, Rutgers evaluated the invention, determined that it was patentable and had commercial potential, and has tentatively agreed to file the patent (BCC filed a provisional patent).  This will require an inter-institutional agreement, whereby Rutgers, BCC and the inventor share any proceeds. 
An ATE/NSF Center could create a team similar to that at larger institutions and service all of ATE grantees.   

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