The Business of Science: Protecting Navy Medicine’s Inventions

Doris Ryan works at the Naval Medical Research Center. Her blog post was originally published in Naval Medical Research and Development News.

Patents protect Navy Medicine’s intellectual property and allow commercial businesses to license the patent for the benefit of our warfighters and also U.S. taxpayers.

Each year the Naval Medical Research Center (NMRC) Office of Legal and Technology Transfer Services (OLTS) team pursues patent protection for about 20 new inventions, and the team currently has over 50 U.S. and 20 foreign applications in various stages of the patent process. The invaluable patent application process is done behind the scenes, and when successfully completed a 20-year patent is issued by the U.S. Patent and Trademark Office that protects the unique work done by NMRC researchers.

The first step in the patent application process, before any public disclosure, presentation or publication, is for researcher to fill out a couple of forms. The “Record and Disclosure of Invention” form gives the OLTS team basic information on the nature of the invention and inventorship. The “Patent Rights Questionnaire” form lets the OLTS team determine whether the federal government has sufficient rights to the invention to allow for filing a patent application. These forms are available on the NMRC website or by calling 01-319-7503 or 301-319-9433.

The OLTS team then develops a detailed filing strategy to support the patent application process. U.S. patents are effective only within the U.S., U.S. territories and U.S. possessions.

The NMRC plan could include a foreign filing strategy, which means filing an application under the Patent Cooperation Treaty. The strategy could also include the decision to file a provisional or non-provisional patent application. A provisional application is not examined by the U.S. Patent and Trademark Office, but it does set a “priority date” that is subsequently incorporated into follow-on applications or foreign applications and allows a protected one year window prior to filing the provision application with the Patent Office. The process of patent prosecution and follow-on applications and justifications can take three to five years or longer.

Licensing can bring royalties to the laboratory and stimulates commercial development. Patent licensing opportunities include exclusive and non-exclusive rights to cutting-edge Navy Medicine technologies because many of NMRC’s patented inventions have dual use functions that meet the needs of both military medicine and the general public. Currently, NMRC has 71 active patents ranging from vaccines and drugs to medical devices with 57 percent licensed to the private sector.

A generic patent cover. (Photo: NMRC)

NMRC OLTS will offer two informational workshops in 2011.

Session 1: Cooperative Research and Development Agreements (CRADAs) and Patents

January 11 and 19; February 15 and 26 from 9:00 a.m. to 12:15 p.m.

Session 2: Patent Licensing, Support Agreements and Ethics

January 13 and February 15 from 1:00 p.m. to 4:25 p.m.