THE PATENT CHECK LIST

The key to winning a patent is being able to prove that you were the first person on earth to come up with the idea for a novel, useful product that is neither an obvious recombination of other inventions nor something everyone else knows about. Here are a few do's and don'ts from Jack Spiegel, acting director of OTT's Division of Technology Development and Transfer:

Do's

• Do keep good lab records. Save all notes, e-mail messages, and letters outlining the conception of an invention with potential commercial importance or wide-ranging benefits for public health. Each day, make sure to date and sign lab notebooks outlining experiments involving potentially patentable inventions. It's also a good idea to have an outside "witness" sign your experimental log daily -- perhaps someone else in the lab.

• Do let OTT know about your inventions. Each institute, center, or division has a technology-development coordinator whom you should contact as soon as you begin to draft an abstract or paper discussing your work.

• Do take patent application deadlines seriously. Delays in submitting the appropriate documentation can cost NIH thousands of dollars and may even cost you
  the patent.

• Do determine who your co-inventors are. Remember that co-authorship is not synonymous with co-invention. To be considered an inventor, you must have made an important and unique intellectual contribution to the development of a potentially patentable product. Also, unless specified otherwise, NIH patent agreements divide royalties equally among all inventors. So, for example, if one of four inventors deserves 75 percent of the credit -- and, thereby, 75 percent of the money -- for the invention, it must be spelled out in the agreement. If not, he or she, along with the other inventors, will each get 25 percent.

• Do remain actively involved in the licensing process. Getting a patent is only half the battle in technology transfer. The real test of whether your invention will fly in the commercial world is if -- and how -- it gets licensed to a private firm. An invention is most likely to be a commercial success if inventors continue to share their insights and expertise -- including the names of firms that may be interested in the invention -- with OTT during the licensing process.

Don'ts

• Don't talk about your invention before patent filing. OTT strongly recommends not discussing your invention with people outside NIH unless you have them sign confidentiality forms, available from your technology-development coordinator.

• Don't forget that meeting abstracts count as publications. Any written disclosure of your invention -- whether it is printed in a meeting abstract book or in a scientific journal -- can be used by other parties to initiate foreign patent rights. Give OTT several months' notice in advance of publication so NIH can get a head start in the highly competitive, international patent process.

• Don't be afraid of looking stupid. OTT urges you to notify your technology- development coordinator even if you think there's only a slim chance your invention is patentable. According to OTT, scientists are often not the best judges of what is patentable. In addition, OTT may be able to exploit routes other than the patent process for transferring your invention into use in the private sector.

• Don't trust non-NIH collaborators to look out for you. Even if you have a fantastic scientific relationship with collaborators outside NIH, OTT warns you not to assume that their universities or companies will act in your best interest when it comes to the patent process. Promptly notify OTT of any collaborations in which you have made substantial intellectual contributions or innovative technical contributions to a potentially patentable invention.

• Don't expect to get fabulously rich. Currently, the most an NIH scientist can collect in royalties from a patented invention that he or she helped to develop is $100,000 a year. Even if you leave the government, you cannot collect more.