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NASA Goddard Space Flight Center. New Technology Assessment Making Informed Patenting Decisions. p r e s e n t e d a t Annual Meeting, Mid-Atlantic Region Federal Laboratory Consortium for Technology Transfer September 16, 2008. Ted Mecum Technology Manager

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new technology assessment making informed patenting decisions
NASA GoddardSpace Flight Center

New Technology AssessmentMaking Informed Patenting Decisions

p r e s e n t e d a t Annual Meeting, Mid-Atlantic RegionFederal Laboratory Consortium for Technology TransferSeptember 16, 2008

Ted MecumTechnology Manager

Innovative Partnerships Program (IPP) Office

NASA Goddard Space Flight Center

slide3
Goddard Innovative Partnerships Program Office

New Technology Assessment Process Map

IPP – Code 504

Start

IPP Chief

Assign new case to TM

TM

Small Business

Hold?

N

N

IP recommendations

LE?

Y

N

Y

N

Review new and open cases

Stat bar?

Final recommendation

LE waiver?

Y

Inactivate

Pursue protection

Assessment

Y

New Technology Reporting Assistant

Y

Send out updated spreadsheet to staff 2 weeks prior to next NTA meeting

Update TechTracS with notes and actions from recommendations

open case- 2 Year hold

Post NTA mtg w/ IPP Marketing & OPC to review notes

Small Business

2yr Hold?

Fuentek

Provide assessment

N

OPC

Follow up with Non- Provisional or Provisional patents as recommended

Post NTA mtg w/ IPP Marketing & New Technology Reporting Assistant to review actions

Resolve IP issues

N

Y

Inactivate case

Concur IPP/ Patent recommendations

Pursue patent

Technology Transfer Support Assistant

Implement passive marketing

Post NTA mtg w/ OPC & New Technology Reporting Assistant to review actions

Glossary of Acronyms/Terms:

TM – Technology Manager IPP Chief – Innovative Partnerships Program Office Chief

NTR – New Technology Report NTA – New Technology Assessment

OPC- Office of Patent Counsel LE- Large Entity

Revised MJ 2-4-08

End

stages of nta
Stages of NTA
  • Determine disclosure
  • Determine ownership
  • Screen technology
  • Recommend strategy/next steps
  • Implement recommendations
disclosure status
Disclosure Status
  • Has a stat bar been triggered?
    • Public disclosure starts 1-year clock for filing non-provisional patent application
    • Precludes international patent protection
  • OPC validates stat bar and patentability
    • Extent of disclosure
    • Consider filing provisional patent application
ownership
Ownership
  • Civil Servant Only
    • NASA (government) owns
  • Co-Owned
    • Negotiate joint-ownership agreements
  • Contractor owned
    • Small Business or College/University
      • Can take 2 years to decide whether to retain or waive ownership rights
    • Large Entity
      • Can request that government waive its rights, shifting ownership to the company
screen
Screen
  • Preliminary evaluation of technology against set criteria
    • IP strength
    • Market size, structure, significance
    • Tech’s level of development
    • Comparison to state of the art/competition
    • Ease of implementation
    • Time-to-market considerations
  • Consider strategic value of tech for NASA
recommendations
Recommendations
  • Inactivate
    • Lack of NASA ownership
    • Insufficient current or future commercial potential and/or strategic value
  • Pursue IP protection (patent)
    • Value is obvious (non-provisional)
    • Value is highly likely (provisional)
    • OPC confirms recommendation
  • Assess
    • More information needed to make patenting decision
assessment what and why
Assessment: What and Why
  • What it is
    • In-depth evaluation against key factors
      • Commercialization potential
      • IP protection possibilities
      • Market factors
  • Why we do it
    • To validate and verify technology’s potential for licensing
implement recommendations
Implement Recommendations
  • Patenting recommendation confirmed at NTA
  • OPC files patent application
  • Marketing
    • Passive: TT support/assistant submits technology to databases
    • Active: TM pursues potential licensees, developing and negotiating agreements as needed
summary
Summary
  • Ownership and patentability are key questions that should be answered first
  • Screening is a low-resource effort to guide future high-resource efforts
    • Assessment offers more “precision” in making the patenting decision
  • Quality tracking and information management systems are essential (TechTracS)
thank you
Thank You!
  • Ted MecumTechnology ManagerInnovative Partnerships Program OfficeNASA Goddard Space Flight Center(301) [email protected]://ipp.gsfc.nasa.gov
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