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Involving Inventors in the Technology Transfer Process. Dr. J. Scott Deiter IHDIV Tech Transfer Director FLC Chairman (301) 684-0289 FLC MA Regional Meeting Gettysburg, PA Sept, 2009. Training for Scientist/Inventor.

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involving inventors in the technology transfer process

Involving Inventors in theTechnology Transfer Process

Dr. J. Scott Deiter

IHDIV Tech Transfer Director

FLC Chairman

(301) 684-0289

FLC MA Regional Meeting

Gettysburg, PA

Sept, 2009

training for scientist inventor
Training for Scientist/Inventor
  • Annual training on IP patent processes and Partnering through CRADAs
  • Describe the lab’s “Patent Process”
    • Filing invention disclosure
    • Invention Evaluation Board
    • Writing patent applications
    • Assignment of rights
    • Tech Transfer Office contact info
    • Commercial fields-of-use
scientist inventor protection of an invention
Scientist/inventor protection of an invention?
  • ORTA reinforce the importance of the lab notebook
    • Proof of “First to invent”
  • Keep appropriate records, dates
  • Do not reveal your invention to non-government personnel
  • Make sure HOME address is on disclosure
  • After completion, EMAIL form and any supporting data, drawings, etc. to Tech Transfer Office
  • Inventor, ORTA Rep, try to identify commercial uses
  • IEB will be convened - 10-minute presentation
financial incentive for scientist inventor
Financial Incentive for Scientist/Inventor
  • Patents with “Dual-Use”
    • Government AND Commercial use
  • Commercial value means the potential for Licensing for royalty income to scientist/inventor
  • Agencies share the royalties with inventors:
    • the first $2,000 (each inventor)
    • plus 20% of any remaining royalty payment (divided among inventors)

Have inventor help identify commercial uses for your technology!

inventors determining commercial use
Inventors Determining Commercial Use
  • Identify possible fields-of-use for invention before completion of patent application
    • Nobody knows more about invention than inventor
    • Nobody cares more about invention than inventor
  • Commercial “claims/uses” in patent:
    • Easier to identify value of technology
    • Makes inventor think about non-federal value
inventors can help to commercialize their technology
Inventors Can Help to Commercialize their Technology
  • Aggressively seek interaction with businesses, which could utilize your invention
  • Report any interest in your invention to the Technology Transfer Office
  • Cooperate in providing appropriate data/information to prospective companies that have an interest in licensing your invention
  • Do NOT discuss anything related to:

Costs of a license

Royalty rate


Successful Technology Transfer Using Scientist/Inventor

Integrated Maritime Portable Acoustic

Scoring and Simulator Control (IMPASS)

Data Systems, Inc. develops marine technologies



Data Systems aware of IMPASS technology

through contact withscientist/inventor

Partially exclusive Patent License negotiated

Entered into CRADA, allowing Navy inventor to collaborate

on development of IMPASS for commercial market

IMPASS successfully commercialized for:

maritime portable scoring

simulation control

acoustic signature and sounding

Under CRADA, Navy and inventor receive:

royalty income from patent license

first hand knowledge of expanded capability of IMPASS