New Faculty
Proposal Preparation
&
Patent Submission
Presented by:
OFFICE OF SPONSORED PROGRAMS
1
OFFICE OF SPONSORED PROGRAMS
JOHN P. POLITANO JR
ASST. VICE-PRESIDENT FOR RESEARCH
DIRECTOR, OSP
X7239
DEB HARTEGAN
SUPERVISOR, GRANTS
ACCOUNTING
X7269
CAROLYN LOCKYER
ASST. DIRECTOR, OSP
X7490
Manfang Xu
Staff Accountant, OSP
X7279
Kelly Goodlick
Senior Accountant, OSP
X7418
2
Overview
• OSP Website
http://www.fit.edu/research/osp/
• What is a Proposal and what does it entail?
It lists the work we propose to do and
the required funding to perform the
work.
• The agencies we submit to:
NSF/NIH/NASA/SBA/NOAA/ONR/DOD
IMPORTANT NOTE: EVERY AGENCY IS
DIFFERENT REQUIRING DIFFERENT FORMS.
3
Types of Grants
• Types of Grants:
• Federal, State, Private
• Pass Through
• Fixed or Cost Based
4
Preliminary Steps
PI:
• Locate Funding Opportunity.
• Contact OSP.
OSP Staff:
• Assist in the development of the internal
budget form.
• Provide support on how to upload a
proposal into the Federal online
submittal portal (Grants.gov, NSF
Fastlane or NASA) or other areas, if
applicable.
5
• Once the proposal is complete, OSP will
review and submit in accordance with
the agency’s guidelines.
• If a Subcontractor is required for the
project, OSP will draft and negotiate the
subcontract, on behalf of the Institution.
• The internal budget must be routed for
signatures and returned, prior to
submittal of the proposal.
6
COLOR KEY:
RED Required to be filled in
GREEN Takes Fringe
PURPLE No Fringe or overhead charged
YELLOW Overhead charged
Office of Research and Sponsored Programs
TITLE
AGENCY
PI
DATE
Co-PI
REQUESTED MATCHING
BUDGET
FUNDS
FACULTY 9 MONTH
61060
$0.00
SUMMER FACULTY
61120
$0.00
FACULTY 9 MONTH
61060
$0.00
FACULTY 9 MONTH
61060
$0.00
GRADUATE ASSISTANTS
61070
$0.00
COLLEGE ROLL
61030
$0.00
TOTAL SALARIES
FRINGE BENEFITS
TOTAL SALARY W/FRINGE
$0.00
66104
29.80%
7.65%
$0.00
$0.00
7
REQUEST
FIT
ED
MATCHIN
BUDGET G FUNDS
TRAVEL
72605
$0.00
SUPPLIES - OTHER
72199
$0.00
TELEPHONE
72210
$0.00
POSTAGE/ MAIL
72220
$0.00
PUBLICATIONS COSTS
74250
$0.00
OUTSIDE SERVICES
$0.00
MISCELLANEOUS
SUBCONTRACTS
72299
First $25K
$0.00
74137
$75K for total of $100K
TUITION
73510
$0.00
CAPITAL EQUIPMENT
79130
$0.00
INDIRECT COSTS
MTDC
45.00%
TOTAL
76115R
#DIV/0!
$0.00
$0.00
8
PROPOSAL TYPE:
New
Renewal
Continuation
Supplement
Will the following be involved in this project, If the answer to any of the following questions is "yes", please secure signature as
indicated.
*Human
Subjects………………………..
no
yes
Institutional Review Board
*Vertebrate
Animals…………………..
no
yes
IACUC Committee Chair
Hazardous
Material/Chemicals……….
no
yes
Safety Committee Chair
Recombinant DNA
Molecules…………
no
yes
Biosafety Committee Chair
Ionizing
Radiation………………………
…
no
yes
Radiation Safety Committee
Chair
Is space (including Renovations, Utility Systems etc.) currently assigned adequate for this project, if no obtain College
Dean Signature.
*PRIOR APPROVAL REQUIRED
Yes
No
College
Dean
I have received, read and understand the University policy on Objectivity in Research which addresses conflict of interest.
There is no person responsible for the design, conduct or reporting of the proposed research who has a financial interest that could
be a potential and/or real
conflict of interest.
Principal Investigator (Signature Required)
There is a potential for a conflict of interest, and the financial interest(s) has been disclosed.
Principal Investigator (Signature Required)
DID YOU HEAR ABOUT THIS OPPORTUNITY THROUGH THE RESEARCH OFFICE _________Yes___________No
P.I.
Office of the Dean
9
University Contact
for
Tech Transfer IP and Patents
John P. Politano Jr.
Assistant Vice President for Research
Director, Office of Sponsored Programs
Email: jpolitan@fit.edu
Phone: 321-674-7239
Address: Keuper Bldg, Room 227
Additional FIT Intellectual Property
http://www.fit.edu/research
10
PATENT SUBMISSIONS
Stephen C. Thomas Reg. U.S. Patent Atty
Intellectual Property Legal Services Group
Lowndes, Drosdick, Doster, Kantor & Reed, P.A.
Melbourne (321) 215-0088
1901 S. Harbor City Blvd., Suite 720
Melbourne, FL 32901
(One Harbor Place Bldg.)
e-mail: stephen.thomas@lowndes-law.com
web: www.lowndes-law.com
11
Lowndes Drosdick Doster Kantor & Reed
Florida Institute of
Technology
Faculty Patent Briefing
Prepared by:
Stephen C. Thomas
U.S. Reg. Patent Atty
Prepared for:
Mr. John Politano
Asst. V.P for Research Director
Sponsored Programs
www.lowndes-law.com
Agenda
•
•
•
•
•
•
•
•
Patent Application Requests
What is an invention?
Who are the Inventors?
What level of disclosure is required?
Prior art & duty of disclosure
Types of patent applications
Bars to Patentability
Common issues
Intellectual Property
13
Stephen C. Thomas
stephen.homas@lowndes-law.com
www.lowndes-law.com
Patent Application Requests
• Requests for patent applications should be
made by:
– Completing the Invention Questionnaire found at
http://www.fit.edu/research/osp (see handout)
– Providing the questionnaire to Mr. John Politano,
Asst. V.P. for Research (see FH 2.19.2)
• Following the submission of the Invention
Questionnaire the IP committee will consider
it in due course and advise
Intellectual Property
14
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Patent Application Requests
• Ownership of discoveries and inventions
– Owned by University; assigned by inventor;
prosecution of patents determined by the
committee, unless:
• University has contributed nothing substantial;
• Invention is not related to any University research; and
• Invention was developed on faculty member’s own
time and without any expense to the University
(see FH 2.19.2 (2))
Intellectual Property
15
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
What is an invention?
• An IDEA is not an invention.
• A CONCEPT is not an invention.
• An invention is:
invention = conception + reduction to practice
• Reduction to practice may be:
– Actual (e.g. a prototype)
– Constructive (e.g. a written description)
• The patent application itself may serve as constructive
reduction to practice
Stephen C. Thomas
Intellectual Property
16
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Who are the Inventors?
• Anyone who contributes to either the
conception or reduction to practice
• Must be an individual (not a business entity)
• A person who “helped” but did not actually
contribute to either the conception or
reduction to practice is not and inventor
• Incorrect inventorship will invalidate a patent
Intellectual Property
17
Stephen C. Thomas
stephen.thomas@lowndes-law.com
W
www.lowndes-law.com
hat level of disclosure is required?
• Must clearly set forth the invention such that
a Person of Ordinary Skill in the Art (POSA)
would, just from reading the disclosure, know
how to practice (e.g. make and use) the
invention.
• Must set forth the best mode of the invention
– Cannot hold back “secret” best mode. This will
invalidate the patent
Intellectual Property
18
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
What level of disclosure is required?
• Drawings must be clear and unambiguous.
– Do not include dimensions unless they are
necessary to practice the invention
– Photographs are disfavored
• Generally they are not clear enough to be used
• They reproduce poorly
• They do not typically show all the features of the
claimed invention
Intellectual Property
19
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Prior Art & Duty of Disclosure
• What is prior art?
– Basically, it is everything that exists before your
filing date. Invention date is no longer as
important as in the past.
– Prior art may be a patents, a printed publication, or
any disclosure that teaches the same or similar
invention.
– Prior art may come from anywhere in the world,
in any language
Intellectual Property
20
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Prior Art & Duty of Disclosure
• In the university setting, prior art searching
may be easier and harder at the same time
– Easier, because most subject technologies have
only existed for a few years or decades
– Harder, because in the highly published
environment of academia, there may be many
papers published that are relevant (non-patent
literature, or NPL). A search of the NPL should be
performed by the professor prior to submitting.
Intellectual Property
21
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Prior Art & Duty of Disclosure
• Duty of Disclosure
– Inventor/applicant must disclose all materials that
are material to the patentability examination being
conducted by the USPTO
– Failure to provide will invalidate the patent and
may be construed as fraud on the USPTO
– This applies to non-provisional patent applications
only
– Best practice is to disclose everything, even if
unsure whether material to examination Stephen C. Thomas
Intellectual Property
22
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Types of Patent Applications
• Utility (provisional, non-provisional)
– Provisional (not examined by USPTO)
• Placeholder, least expensive filing
• Allows 12 months to determine whether to file a
non- provisional. Expires at 12 months.
• Must completely describe the invention
• Many provisionals are inadequate and lead to a false
sense of security because care is not take to generate a
completely enabled disclosure. This is the provisional
trap.
• Does not, by itself, result in a patent
Stephen C. Thomas
Intellectual Property
23
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Types of Patent Applications
• Non-provisional
– More expensive than provisional
– In addition to complete disclosure must include
claims setting forth the boundaries of the
invention. These claims are examined by the
USPTO
– May claim priority to provisional or other nonprovisional
– May result in a patent, if all conditions for
patentability are met
Stephen C. Thomas
Intellectual Property
24
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Types of Patent Applications
• International Applications (two types)
– Paris Convention
– Patent Cooperation Treaty (most common)
• Must be filed within 12 months of the earliest
priority document (typically a provisional)
• Are prosecuted separately in each country.
• Should identify at the outset if international
patent protection is desired.
Intellectual Property
25
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Bars to Patentability
• Prior art
– Anticipation under 35 USC 102
• A single reference that discloses all the elements of a
claimed invention
– Obviousness under 35 USC 103
• One or more references that, taken in combination,
teach or suggest all the elements of a claimed
invention
Intellectual Property
26
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Bars to Patentability
• Disclosure prior to filing date
– Printed Publication by inventor
• 1 year grace
– Offer for sale, Public use
• Statutory language is unclear. The grace period MAY
HAVE been eliminated by the recent America Invents
Act. We have not see a controlling case on this yet.
– Best practice is to file before these events occur.
Intellectual Property
27
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Common Issues
• Determining the scope of the invention
– Do you have an invention, or just an idea?
– Reduction to practice is the key
– Oftentimes, a scientific paper submitted as a
patent disclosure may only describe an idea or
suggestion, not an invention
– Clearly define exactly what the invention is before
submitting an invention disclosure
• What is the best mode? Disclose it in the write up
Intellectual Property
28
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Common Issues (cont.)
• Incomplete disclosure
– A simple write-up describing the concept of the
invention is generally not adequate as a patent
disclosure
– Incomplete drawings
– “fuzzy” photographs provided in lieu of drawings
– Missing parameters (optical wavelengths, power
levels, geometries, parameter ranges, etc.)
Intellectual Property
29
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Common Issues (cont.)
• Patent disclosure written as a suggestion for
future investigation (“we will investigate”, etc.)
– While this is necessary form when applying for
grants or other approvals, it is a red flag to the
patent examiner that the invention has not been
reduced to practice.
• Incorrect inventorship
– Typically, either failing to name an inventor, or
naming a non-inventor out of kindness
Intellectual Property
30
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
How to reduce patent costs
• Provide carefully written and complete
disclosure that clearly sets forth the invention
– Think … if you had never heard of this invention,
what would you need to know to practice it?
– Details matter. More detail is best. Sketchy detail
may lead to rejections or an invalid patent.
– Rework drawings so that they are clear, detailed,
and unambiguous. Avoid photographs unless
absolutely necessary. CAD drawings are preferred.
Intellectual Property
31
Stephen C. Thomas
stephen.thomas@lowndes-law.com
Orlando, Florida | www.lowndes-law.com
Contact Information
Stephen C. Thomas, Esq.
Stephen.thomas@lowndes-law.com
Kara.lane@lowndes-law.com
www.lowndes-law.com
1901 S. Harbor City Blvd, Melbourne, Florida 32901
(321) 215-0088
Intellectual Property
32
Stephen C. Thomas
stephen.thomas@lowndes-law.com
www.lowndes-law.com
Intellectual Property
33
Stephen C. Thomas
stephen.thomas@lowndes-law.com