1	INTELLECTUAL PROPERTY by Robert M. (Bob) Hunter, Ph.D. Registered Patent Agent WebPatent.com
2	What is Intellectual Property? An intangible product of the intellect Must be placed in a “vessel” to protect copyright patent Can be sold, rented, licensed Some rights allocated by regulation technical data subject inventions
3	WHY SHOULD YOU CARE? INTELLECTUAL PROPERTY RIGHTS MAY BE THE ONLY ASSET REMAINING AFTER THE PROJECT ENDS
4	Technical Data Recorded technical information reports, invention disclosures software documentation Rights retained by small business for four years after each phase of project After those points, Government may use, release or disclose to others, or permit others to use!!
5	Rule No. 1 Do not rely on trade secret protection of intellectual property developed during SBIR or STTR projects.
6	Subject Inventions What is included? patentable technology, design or plant protectable plant variety How does a discovery qualify? invention conceived or first actually reduced to practice in performance of work date of determination of plant variety within period of performance
7	Rule No. 2 Make sure the members of your project team can identify an invention when they see one and understand their obligation to document it and disclose it to you.
8	Examples of Patentable Inventions Mechanical, electrical, optical devices Isolated microbial cultures, DNA, RNA Plants and seeds Genetically-engineered non-humans Ways of making or operating things Business methods Software systems, processes, interfaces
9	Patentability Criteria Legal-required to report? can patent? appropriate subject matter useful, novel, non-obvious Practical-business reason to patent? valuable long economic life enforceable FUD-Fear, Uncertainty and Doubt
10	Allocation of Rights Small business (or subcontractor) may retain title to a subject invention depends on who thought it up or built and tested it cannot require subcontractors to give up rights as a condition of hiring them Government receives a non-exclusive, nontransferable, irrevocable, paid-up, worldwide license for Government use
11	Rule No. 3 It is often a good idea for the “inventing” portion of an SBIR or STTR project to be performed by employees of the small business recipient of the award who have signed employment agreements assigning inventions to the business.
12	Your Responsibilities Report invention to Government within two months of disclosure by inventor(s) Elect to retain title within two years of initial report File a non-provisional U.S. patent application within one year of election File non-U.S. patent applications within ten months of U.S. filing
13	Conclusions SBIR and STTR programs are excellent wealth-building techniques But only if you commercialize your intellectual property rights Preserve and protect those rights and then sell, sell, sell them either embodied in products or outright!
14	IP MANAGEMENT WEBSITES Patent searching-expect surprises www.uspto.gov www.delphion.com www.surfip.gov.sg Invention reporting-an allowable cost www.iedison Protecting and licensing inventions www.webpatent.com