NIST patent criteria

1. NIST patent criteria • Doing so provides an incentive for commercialization or use of the technology in the U.S., and use of the patented technology can be determined.   In reviewing an invention in light of this criterion, management should be willing and the inventors able to participate in conducting such activities as may be reasonable for the transfer and/or further development of the technology;

2. NIST patent criteria • and/or • It is likely that patent protection will have a positive impact on a new field of science or technology that falls within NIST's mission and will enhance the visibility and vitality of NIST. This may include such factors as: maintaining productive collaborative relationships with government, academic or commercial partners;  ensuring the free and open availability of background technology in standards, broad research, development, or commercial use; or addressing the expressed commercialization requirements of Other Agency funding sources;   

3. NIST patent criteria • Doing so or would further the obligations or goals of a CRADA or other collaborative agreement.

4. NIST Invention Disclosure Review Process • Invention disclosure prepared by inventors and routed through Laboratory management to OTP. Laboratory management does not typically screen at this point per NIST policy. • Rights Determination by NIST Counsel’s office

5. NIST Invention Disclosure Review Process • Technical review, prior art search, etc by OTP to clarify “what is new”, “what is non-obvious”. • “Dry runs” of the proposed presentation to the PRC by the inventors with OTP, lab PRC rep and perhaps lines management. This may actually entail several dry runs.

6. PRC presentation – Required Format • Describe what the invention is, what is new, how it works, what problem it solves, what its limitations are.  Describe how the invention is commercially and/or technically superior to current  practice.Describe what  research and/or development remains to be done and whether this s this best done by NIST, industry or through a collaboration.  • Which of the NIST patent criteria would be served by obtaining patent protection.

7. Makeup of the PRC • One voting rep from each of the nine labs • One voting rep from the NIST counsel’s office • Two voting reps from OTP (one of whom is chair) • Lab voting reps are selected by the lab – may be bench scientist, division chief, deputy director, etc.

8. PRC Procedure • PRC meetings are typically held once a month, featuring three one-hour sessions. • Inventors have a total of 30 minutes to make their pitch and answer questions • Inventors are excused and the PRC deliberates for up to 30 minutes before an oral vote is taken.

9. NIST Patenting Decision Process PRC votes to: • Recommend patenting • Recommend against patenting • Recommend that the disclosure be brought back before the PRC if/when further research warrants

10. NIST Patenting Decision Process • OTP prepares recommendation memo to Lab Director • Lab director makes final decision • Note: Patent preparation/prosecution done by contracted attorneys and paid by OTP

11. Lessons Learned • The process/procedures must be tailored to the agency’s mission and culture • It took awhile for the initial lab reps to reach an appropriate balance when questioning the inventors and to get the inventors to stick to a required format. The “dry runs” are especially valuable in the latter.

12. Lessons Learned • In the NIST culture, having the inventors makes the pitch and defend their position to the PRC is best. • Inventors who go through the dry run and PRC Presentations process learn a tremendous amount. Evidence is beginning to show up that they are much better at “self censoring” subsequent disclosures and serve as informal sources of information at the bench level.

13. Lessons Learned • The “dry runs” have turned out to be a very valuable step in the review process.