Obtaining a Patent

TABLE OF CONTENTS

OVERVIEW

1.1 What is the purpose of this chapter? This chapter explains what U.S. Fish and Wildlife Service (Service) employees should do if they identify something that they or the Service might want to patent. A patent provides the right to exclude others from making, using, offering for sale, selling, or importing an invention to which the patent is held.

1.2 What is the scope of this chapter? This chapter applies to:

A. All Service employees who invent something that they think may be patentable, and

B. Their supervisors.

1.3 What is the Service’s overall policy on inventions and patents? The Service:

A. Promotes commercialization of Service inventions by patenting and licensing them when it is beneficial to the Government to do so, and

B. Ensures appropriate protection of Government and employee rights on Service inventions.

1.4 What are the authorities that govern inventions and patents?

A. Department of the Interior (Department) Patent Regulations (43 Code of Federal Regulations (CFR) Part 6).

B. Executive Order (E.O.) No. 10096, 15 Fed. Reg. 389 (Jan. 23, 1950), as amended by E.O. No. 10695, 22 Fed. Reg. 365 (Jan. 16, 1957), and by E.O. No. 10930, 26 Fed. Reg. 2583 (Mar. 24, 1961).

C. Federal Technology Transfer Act of 1986 (15 United States Code (U.S.C.) 3701 et seq., Pub. L. No. 99-502).

D. Patents, Title 35, U.S.C.

E. Patent Law Amendments Act of 1984 (Pub. L. No. 98-622, 98 Stat. 3383 [codified as amended in sections of 35 U.S.C.]).

F. Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3701 et seq., Pub. L. No. 96-480).

G. 209 Departmental Manual (DM) 3, specifically sections 3.1A and 3.2A(4).

1.5 What terms do you need to know to understand this chapter?

A. Invention. An invention means any new and useful art, process, method, machine, manufacture, or composition of matter, or any new and useful improvement of such things, or any new variety of plant, or any new, original and ornamental design for an article of manufacture, which is or may be patentable under the laws of the United States.

B. License. A license grants the recipient the right to make, use, or sell the patented invention. The Service may grant a license for the entire patent period or for only a portion of the patent period. The license may grant any of the rights separately or in any combination and may be exclusive or nonexclusive.

C. Public Disclosure. Public disclosure is a written description of an invention or the oral presentation of a description of the invention. Written descriptions are often found in scientific journals, websites, and reports developed for the public, while oral descriptions are typically offered at workshops, seminars, conferences, or symposiums.

D. Royalty. A royalty is a percentage of receipts derived from the use of a patented invention.

PATENT BASICS

1.6 What are the types of patents, and what cannot be patented?

A. The types of patents include:

(1) Utility patents that cover inventions,

(2) Design patents that protect certain designs or visual characteristics in an article for manufacture, and

(3) Plant patents that are for new varieties of asexually reproducing plants.

B. In general, items that cannot be patented because they are outside of the scope of patentable inventions found in 35 U.S.C. 101 include:

(1) Laws of nature and natural forces,

(2) Basic principles,

(3) Chemical formulas,

(4) Mental steps, and

(5) Ideas.

1.7 What are the Government’s entitlements and the employee’s rights in an invention? Regulations at 37 CFR 501 and 43 CFR 6 and E.O. No. 10096 govern employees’ rights and the rights of the Government in an invention.

A. The Government is entitled to:

(1) The entire domestic right, title, and interest in the invention when:

     (a) The invention is directly related to or made as a consequence of official duties by any Government employee who conceives of the invention during working hours; or

     (b) The employee builds or tests it using Government facilities, equipment, materials, funds, information not available to the public, or the time or services of other Government employees on official duty (even if the invention is not directly related to or made as a consequence of official duties); or

     (c) The invention bears a direct relation to or is made in consequence of the official duties of the inventor under 37 CFR 501.6(a)(1), and E.O. 10096; and

(2) In any case where the contribution of the Government to the invention is insufficient equitably to justify a requirement of an assignment to the Government as stated in 37 CFR 501.6(a)(1), a nonexclusive, irrevocable, royalty-free license in the invention with the power to grant sublicenses for all Governmental purposes under 37 CFR 501.6(a)(2), and E.O. 10096.

B. In circumstances other than those we describe in section 1.7A, the Office of the Solicitor determines whether the inventor may retain the right, title, and interest in the invention (see section 1.10B and 209 DM 3, sections 3.1A and 3.2A(4)).

REPORTING, DISCLOSURE, and RECORDS

1.8 What should employees do first if they invent something that they think could be patented?  

A. Do not disclose your invention outside of contacting Headquarters and the Office of the Solicitor (see section 1.8B). You should not disclose inventions through publications, speeches, handouts at seminars, newspaper articles, websites, etc., until the Office of the Solicitor determines the Government's interests and rights in the invention. Employees should understand that there are serious consequences related to disclosures and the timing of disclosures of their inventions that will affect the ability to obtain a patent (see 35 U.S.C. 102(b)(1)(A) and (B) for more information). Some public disclosure prior to filing a patent application may bar the applicant from receiving a patent, which is why it is important to coordinate any disclosure with your supervisor and the Patent Liaison. This is important because:

(1) Once disclosure occurs, a grace period of 1 year starts.

(2) The Patent and Trademark Office will not grant a patent if the public disclosure of the claimed invention occurred more than 1 year prior to the filing of the patent application under 35 U.S.C. 102(b)(1)(A).

(3) The inventor will be barred from obtaining a patent if the public came into possession of the invention on a date before the 1-year grace period ending with the U.S. filing date. It does not matter how the public came into possession of the invention.

B. Contact the Patent Liaison in the Service’s Policy and Regulations Branch (PRB), which is in the Division of Policy, Economics, Risk Management, and Analytics (PERMA). PRB and PERMA are in the Office of Assistant Director – Management and Administration. The Patent Liaison will help you complete the reporting process (see section 1.9) and interact with the Office of the Solicitor.

C. Be mindful of how you use the invention in the field. Practical use—not experimental use—may keep the Patent and Trademark Office from granting a patent. Experimental use means operating a device or practicing the method for operating a device to determine whether an invention is complete or needs improvement. If you use the invention in its completed form to accomplish its intended purpose, the Patent and Trademark Office may not consider it to be experimental use. Any use or testing of an invention whether commercial or not can be a public disclosure and jeopardize the patent application if it was not filed before the use started. 35 U.S.C. 102(a)(1) states, in part:

     “(a) A person shall be entitled to a patent unless – (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”

D. Ensure you are keeping the appropriate records (see section 1.11).

E. Consider the commercial opportunities and other measurable benefits of a patented invention. It is Service and Departmental policy to only seek patents (which means spending Federal funds) for inventions where there is a potential for commercial or some other measurable benefit to the Government. The inventor should ask him/her/themself: “Is there a market for this invention?” “Is the cost of getting the invention or technology to market low enough?” “Could the Department license this invention?” “Does the patented invention promote commercial development for the public benefit?” If an inventor cannot identify such potential, it is unlikely the Service would pursue a patent.

1.9 How do employees report inventions?

A. The employee (i.e., the inventor) and his/her/their supervisor work together to complete a Report of Invention (Form DI-1215) and an Invention Rights Questionnaire (DI-1218).

(1) The employee completes DI-1215. The employee:

     (a) Includes a clear, step-by-step description of what the invention is or how it works.

     (b) Generally, inventions made by Government employees in the course of their official duties belong to the Government. If you believe this isn’t the case, you must check and sign the last entry on the Report of Invention that says you do not want to assign rights to the Government.

     (c) Attach descriptive graphs, test results, drawings, and photographs.

     (d) Give the completed form and attachments to your supervisor, who should check it to ensure that it is complete and accurate.

(2) The employee and supervisor work together to complete and sign DI-1218. This form includes:

     (a) Any additional information about the circumstances under which the invention was made,

     (b) Evidence surrounding the making of the invention (see section 1.11 for more information about what type of records to keep as evidence),

     (c) The supervisor’s opinion of the Government or commercial value of the invention, and

     (d) Any other relevant information.

B. The employee sends the two forms to the Patent Liaison in PRB. The Patent Liaison reviews the forms to ensure they are complete.

1.10 What happens after the Patent Liaison receives the DI-1215 and DI-1218?

A. The Patent Liaison:

(1) Reviews the material to ensure that it is complete,

(2) Contacts the Office of the Solicitor in the Department and sends the DI-1215 and DI-1218 and all other accompanying information to them, and

(3) Serves as the liaison between the inventor and other parties.

B. The Office of the Solicitor:

(1) Determines to whom any potential patent rights belong (i.e., whether they belong to the Government or to the inventor), and

(2) If the patent rights rest with the Government, works with the Patent Liaison and the affected Service program to determine whether or not the subject is patentable and if the Government is interested in retaining those rights and pursuing the patent.

C. Depending on the outcome of the Solicitor’s determination of rights:

(1) The Patent Liaison or the employee’s program may contract or enter into an inter- or intra-agency agreement with a third party to:

     (a) Study whether or not an invention is potentially patentable and marketable, and

     (b) Help with analysis and documents needed to file the patent.

(2) The costs associated with such a contract or agreement must be paid by the employee’s program office or the program office that will benefit from the patent. If there is a third-party collaborator or non-employee inventor, the Service may agree to share or shift patent costs to them. 

D. If an employee is not satisfied with the Solicitor’s determination, they may obtain a review by filing an appeal with the Commissioner of Patents and Trademarks within 30 days after receiving the notice of the Solicitor’s determination. The Commissioner’s decision on appeals is final (see 43 CFR 6.6 for more information).

E. If the Service files a patent application and it is successful, the Solicitor’s office, the Patent Liaison, the affected program office, and the inventor work together to determine licensure and how the patent will be maintained.

1.11 What records should employees keep about an invention? Inventors must maintain comprehensive written records on their inventions. If someone challenges a patent application, it is important that the invention report and all related papers are available to establish priority of the invention.

A. Your records should show the earliest date that you conceived of the idea and the date you began experimentation with the invention. The Service recommends that you keep your notes in a permanently bound notebook in which you have signed and dated each sheet that shows significant information or activities. You may want to ask a witness who is not a joint inventor and who understands the invention to also sign and date the notes. Number the pages consecutively and date them in permanent ink with no erasures. Cross out any errors and date and initial them. You can use a computer to assist with electronically documenting an invention and progress. You must follow a protocol that includes preserving your notes; printing out your online records, including observations, notes, and graphs; and properly affixing them to your notebook. The same recordkeeping practices apply to printouts attached to your inventor’s notebook with daily signatures by the inventor and signatures by any unrelated witness. Keep your dated notebook(s) indefinitely in case questions arise later.

B. Other records may include:

(1) Authenticated records pertaining to the conception of the invention,

(2) Operational data sheets,

(3) Letters, and

(4) Other documents pertaining to disclosure to others. You do not need to submit all of this information at the time of application.

AFTER PATENTS

1.12 What awards does the Service give employees for inventions? You may receive an award in compliance with Part 224 of the Service Manual for the invention, regardless of whether a patent was ultimately filed. The award may be monetary or non-monetary, depending on funds available, the significance of the work, and whether it can be patented and licensed.

1.13 How does the Service pay inventors royalties? The Stevenson-Wydler Technology Innovation Act of 1980 (amended as the Federal Technology Transfer Act of 1986, 15 U.S.C. 3710c) and other legislation permit the Government to license an invention and retain royalties from the licenses. The law also permits the Government to distribute royalties to the inventor.   

A. Each year, the Service must pay the inventor the first $2,000 in royalties we receive. After the first $2,000, the Service must recoup any funding spent on patent fees or contracts and agreements with third parties to patent and license the invention. When we’ve recouped that investment, we pay the inventor at least 15% of the royalties or other payments we get for patented inventions. See 15 U.S.C. 3710c(a)(1)(A)(i). The Service may elect to pay the inventor a higher percentage.

B. The Service will not pay more than $150,000 per year to any one person unless the President approves a larger award. Anything the Service pays an inventor over $150,000 per year is treated as a Presidential award. See 15 U.S.C. 3710c(a)(3). A Presidential award is a monetary or non-monetary award for:

(1) Contributing to the efficiency, economy, or other improvement of Government operation by an employee’s suggestion, invention, or personal effort;

(2) Achieving a significant reduction in paperwork; or  

(3) Performing an exceptionally meritorious special act or service in the public interest in connection with or related to official employment.

C. After paying royalties to the inventor, remaining funds received go back to the Service program or center where the invention occurred. Under 15 U.S.C. 3710c(a)(1)(B), we must use this funding to pay for:

(1) Expenses of patent licenses;

(2) Education and training of technology program/center personnel;

(3) Furthering scientific exchange among programs/centers; and

(4) Rewarding scientific, engineering, and technical personnel.

D. If royalties reach a specific threshold (>5% of a program’s/center’s budget for a fiscal year), the Service must send the remaining funds to the U.S. Treasury.