THE SBIR/STTR PATENT PROCESS

by Robert M. (Bob) Hunter, Ph.D., Registered Patent Agent, WebPatent.com

How to preserve patent rights (in general):

1. Ensure that employees know how to recognize inventions.

2. Require that employees agree to disclose inventions and assign them to the business.

3. In patent applications, claim each invention broadly as well as more narrowly, in all possible forms, and support claims in disclosure, by providing adequate written description, enablement and best mode of the invention. Develop a patent portfolio.

How to preserve non-U.S. patent rights (for inventions invented in the U.S.):

1. Do not publicly disclose (orally or in writing) "how to make" and "how to use" the invention, use the invention in public OR offer the invention for sale (publicly or in secret) before filing a patent application in the U.S.

2. Be the first to file a (provisional or regular) U.S. patent application. Make any biological materials deposits before filing.

3. File and prosecute an international patent application and/or national applications within 12 months of priority date. File national applications in countries designated in international application within 19 or 30 months of priority date.

How to preserve U.S. patent rights (only, business can lose non-U.S. rights if it follows this route):

1. Do not publicly disclose (in writing) the invention, use the invention in public in the U.S. OR offer the invention for sale (publicly or in secret) in the U.S. more than 12 months before filing a patent application in the U.S. Offering to deliver a prototype that embodies an invention in an SBIR or STTR proposal is an offer to sell if the invention is "ready for patenting" when the offer is made.

2. Be the first to invent and keep witnessed records about conception and diligence in (actual or constructive) reduction to practice in the U.S. Document monitoring of "experimental" uses in public.

3. File a (provisional or regular) U.S. patent application within 12 months of conception or before another independently invents the invention. If a provisional was filed first, file and prosecute a regular application within 12 months of priority date. Make biological materials deposits before or during pendency. Pay issue fee and maintenance fees on time.

How to preserve SBIR/STTR patent rights (consult www.iedison.gov and use it if possible):

1. Reserve the inventing role for employees rather than assigning that role to subcontractors because subcontractors own the rights to their "subject inventions." File and prosecute patent applications on pioneering inventions that were conceived and actually reduced to practice before performance of the SBIR project in order to control the practice of "subject inventions." Do not agree to give up more rights to the Government in STTR Model Agreement than required to by law.

2. Report any "subject invention," i.e., one first conceived or first actually reduced to practice during the performance of the SBIR/STTR project, to the awarding agency within two months of disclosure of the invention to the business by the inventor(s).

3. Elect (usually worldwide) title to the invention within two years of reporting the invention to the awarding agency.

4. File regular U.S. patent application in time to preserve rights and within one year of election or, if business wishes to relinquish rights in U.S., notify agency in time for it to file. Include Government license rights statement at beginning of application. Charge allowable costs associated with "subject inventions" to indirect cost pool. Remember that certain royalty income from inventions and software is exempt from Hawaii state income tax.

5. File any non-U.S. patent applications in time to preserve rights and within 10 months of filing regular application, or, if business wishes to relinquish rights in any other jurisdiction, notify agency in time for it to file or pay fee.