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Intellectual Property and STI: Publishing and Patent Protection

Intellectual Property and STI: Publishing and Patent Protection. DOE STIP Meeting May 2011 Stacy Joiner. Ames Laboratory— A DOE National Laboratory. An FFRDC; a GOCO. Iowa State University is the contractor. Annual budget of about $35M. No Classified Research. The Ames Lab Workforce.

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Intellectual Property and STI: Publishing and Patent Protection

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  1. Intellectual Property and STI: Publishing and Patent Protection DOE STIP Meeting May 2011 Stacy Joiner

  2. Ames Laboratory—A DOE National Laboratory • An FFRDC; a GOCO. • Iowa State University is the contractor. • Annual budget of about $35M. • No Classified Research.

  3. The Ames Lab Workforce • 308 FTE’s • 50 Joint AMES/ISU Faculty • 73 Postdoctoral Researchers • 198 Undergrad and Graduate Assistants • 353 Associates (non-payroll) • 176 Technicians, Support Staff & Administrators (As of April, 2010)

  4. History of STI at the Ames Lab • Started in our Public Affairs Department (my first record, anyway). • Moved to Records Management Department. • Moved under Office of Sponsored Research and Administration in 2009. • Now integrated with our Technology Transfer functions.

  5. Why Integrate with TT? • Familiar with technologies and inventors. • Ensure adequate patent clearance before release. • Filing of Disclosure if needed before public release of information. • Placing a “Hold” on a Student’s thesis or dissertation. • Ensure STI resulting from a CRADA or WFO agreement has undergone proper reviews.

  6. Why are Patent Clearance Reviews of STI Important? • Gives STI and/or DOE Patent Counsel chance to identify potential IP that the PI may have missed. • In the U.S., you have just one year to file a patent application after a public disclosure. • In most instances, foreign rights are lost after public disclosure.

  7. Why does STI Resulting from a CRADA or WFO Require Special Consideration? • Generally contain publication review clause. • Clause generally specifies a period time for review. • Publication may contain Protected CRADA data.

  8. Researchers Struggle to Balance • Publish or Perish • Ames Laboratory is highly integrated with Iowa State University. • Publishing Delays • Hinders collaboration. • May affect a student’s graduate defense.

  9. What Can Be Done to Protect IP and Still Publish? • File an invention disclosure before public disclosure. • Make tech transfer office aware of pending publication dates or presentations. • Researchers need to keep in mind—many journals post articles on-line before hard-copy is available.

  10. Protecting IP and Publishing… • Do not provide “enabling” information until patent application has been filed. • Leave out technical details. • When in doubt, mark descriptive information as confidential.

  11. Summary • Both publishing and IP protection can be successful. • Be sensitive to STI that has not been publically disclosed. • When in doubt, check with your tech transfer or intellectual property office for guidance.

  12. Questions? Stacy L. Joiner Coordinator Intellectual Property and Technical Information Ames Laboratory 332 TASF Iowa State University Ames, IA 50011-3020 Tel: 515-294-5932 Email: joiner@ameslab.gov

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