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CHIPS Articles: Patents and technology transfer is important for Carderock and the Navy

Patents and technology transfer is important for Carderock and the Navy
By Naval Surface Warfare Center, Carderock Division - October 16, 2017
Naval Surface Warfare Center, Carderock Division’s (NSWCCD) engineers and scientists packed the patent and technology transfer course held at the Taylor room, Building 2 in West Bethesda, Maryland, Sept. 19.

The half-day training session, hosted annually by NSWCCD’s Office of Counsel, Invention Evaluation Board (IEB) and the Technology Transfer Office (TTO), introduced basic invention and patent fundamentals to potential Carderock inventors. The employees, about 60 in attendance, learned how they can recognize when they’ve made an invention, how the patenting process works, and how to partner with other organizations to further the development of ideas, research and technology.

Dave Ghatt, NSWCCD’s lead patent attorney, provided the patent part of the course devised to reach employees who may be considering inventing something and who are interested in filing for a patent for their invention. After the patenting overview and processing information, Dr. Joe Teter, director of technology transfer, covered the technology transfer part of the training to help employees understand how to make use of available technology transfer mechanisms at Carderock such as CRADAs (Cooperative Research and Development Agreements), EPAs (Educational Partnership Agreements) and PLAs (Patent License Agreements).

On the patent training, Ghatt started by explaining why the Navy is interested in patents as a protective measure and why Carderock employees should be interested in patents. “A patent is a legal document that protects new, useful and non-obvious inventions,” Ghatt said. “A patent lasts 20 years from the day you file it.

“Patents are a protective measure. When we develop inventions, if someone else patents it then it will prevent the Navy from actually using it without paying for it. Patents allow us as an organization to practice and promote our technologies without any restrictions.”

Patents are the recognition and preservation of Carderock’s tradition of innovation and inventiveness. This tradition was started more than 100 years ago by Carderock’s founding father, Rear Adm. David W. Taylor, who held several patents, the majority of them dealing with the design of ships’ propellers. World famous for his achievements in the field of ship design and model testing during his lifetime, Taylor was granted some 13 patents, from the late 1890s to mid-1930s.

“Carderock has a really strong tradition of securing patents,” Ghatt said. “We want our employees to continue that tradition.”

The patent process is time consuming, requiring discipline on the part of the inventor(s), and organizations must have appropriate funding and staff to shepherd a patent application through the entire process, which takes about two years to file a patent application, according to Ghatt.

Machines, manufactured items, composition of matter, software, hardware, and processes, including business methods, can all be patented providing they are new, useful and non-obvious. By operation of law, the Navy owns a high percentage of inventions by Navy employees, but there are situations in which ownership of an invention is retained by a Navy employee-inventor.

Ghatt gave an example of the inventor of the Slinky, Richard James. James was a naval engineer in Philadelphia in 1943 working to develop a way to support or suspend shipboard instruments in rough seas. In using the tension springs, he dropped one and thought it would make a neat toy. Since James didn’t use any Navy time or materials, he took the idea home. James patented the Slinky with his wife, and they sold millions.

Ghatt also talked about the consequences of publicly disclosing an invention before it is filed at the United States Patent and Trademark Office. If an employee publically discloses their invention anywhere in the world in any of various ways via e-mail, printed publication, conference presentation, Internet or actually use the invention, then that patent application must be filed within one year from the date of the public disclosure. “If you go over the year period, you will lose rights to a U.S. patent for the invention,” Ghatt said.

Along with prestige, accomplishment and career advancement for having invented something new, Carderock also provides monetary incentive awards to employee-inventors when they submit an invention disclosure and at other various stages of the patenting process. For example, “Five hundred dollars is awarded to the employee when the patent is filed and another $500 when the patent is issued,” Ghatt said.

One key method for technology transfer from the federal government to the public is by patenting new inventions and then licensing them to state and local governments, industry and universities.

If an invention is licensed by the Navy, under federal law, the employee-inventor receives a set sum of money from $2,000 per year in the first year up to $150,000, the maximum amount per year that an employee-inventor may receive from Navy royalties on an invention.

An employee-inventor should present their idea to the department’s IEB representative, and that person will assist them in filling out the invention disclosure. The IEB will evaluate the invention disclosure to determine if the invention will go forward for patent application.

Year after year, the Navy continues to lead in patent rankings based on source data from the U.S. Patent and Trademark Office. “The Navy ranks as the No. 1 producer of patents among all governmental organizations in the world,” Ghatt said.

Naval Sea Systems Command’s Warfare Centers contribute to nearly half of those Navy patents issued. NSWCCD engineering and science efforts have earned top honors and patents for innovations, from integrated stern bulb and flap to autonomous apps that streamline mission planning, and the Navy seeks patents only for inventions having licensing potential.

The hope is that a commercial entity will license a patent and create the product that the government can then buy back, Teter said. That’s where technology transfer comes in.

For technology transfer, the overall goal of NSWCCD is to bridge the gap with commercial entities so that federally funded laboratory resources and research can be shared with non-federal organizations to support the development and commercialization of new technology.

Teaming together in this way benefits more than just the individuals and organizations involved. The transfer of federally developed technology can have a positive effect on the greater scientific research community, the commercial sector, the economy, consumers and the public.

With this goal in mind, the Technology Transfer Office has been provided by Congress, through a series of legislation, giving the authority to make laboratory facilities, equipment, expertise and intellectual property available to academia, industry and local and state governments.

There are many mechanisms through which to partner with Carderock, via the CRADA and the PLA. Carderock engages educational institutions of all levels through EPAs that allow Carderock to support and encourage local and national interest, education and careers in science, technology, engineering and math.

Employees who think they have an invention and if they might have already publically disclosed the invention, for an invention disclosure or a non-disclosure agreement form, and for more information about patents and intellectual property, should contact the Carderock Patent attorneys at the Office of Counsel at 301-227-1834.

Before discussing any CRADAs, LPAs or EPAs with industry and academia, and for any questions, regarding technology transfer, contact Joe Teter at joseph.teter@navy.mil or 301-227-4299.

Dante Dobbins, a 2015 summer volunteer at Naval Surface Warfare Center, Carderock Division (NSWCCD) in West Bethesda, Md., helps Philip Dudt, a researcher at NSWCCD, test different applications of an explosive resistant coating on helmets. According to Office of Naval Research (ONR) scientist, Dr. Roshdy Baroum, early research sponsored by ONR, identified that a coating of explosive resistant coating polymers could mitigate blast exposure to the brain. NSWCCD has been engaged with a major helmet manufacturer to produce such a helmet and final blast testing will be commenced shortly. The coating is also just being explored for use in football helmets and may a wide application in this arena as well if research goes forward. (U.S. Navy photo by Devin Pisner/Released)
Dante Dobbins, a 2015 summer volunteer at Naval Surface Warfare Center, Carderock Division (NSWCCD) in West Bethesda, Md., helps Philip Dudt, a researcher at NSWCCD, test different applications of an explosive resistant coating on helmets. According to Office of Naval Research (ONR) scientist, Dr. Roshdy Baroum, early research sponsored by ONR, identified that a coating of explosive resistant coating polymers could mitigate blast exposure to the brain. NSWCCD has been engaged with a major helmet manufacturer to produce such a helmet and final blast testing will be commenced shortly. The coating is also just being explored for use in football helmets and may a wide application in this arena as well if research goes forward. (U.S. Navy photo by Devin Pisner/Released)
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