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711th Human Performance Wing Ramps Up IP Efforts

711 HPW IP

The 711th Human Performance Wing is leading an Air Force Research Laboratory (AFRL) pilot program to embed intellectual property (IP) attorneys into research groups to see how they can support the laboratory’s IP needs.

One day each week, an IP attorney from the Air Force Materiel Command Legal Office will have office hours onsite at the Wing. Eventually the attorney will move around among different research areas to provide maximum benefit. For the pilot program, Human Language Technology (HLT) researchers within the Wing’s Airman Systems Directorate will work with the embedded attorney to identify technologies and products for IP protection.

“HLT was selected by the Chief Scientist for the work they do adapting tools for warfighter applications, as well as for their early stage research,” said Dr. Jim Kearns, the Wing’s technology transfer and domestic alliances manager. “In part based on their immersion with and feedback from the attorney, HLT will use this pilot program to explore opportunities to leverage outside resources using available technology transfer agreement mechanisms, and identify IP strategies and commercialization possibilities that will support transition of the associated technology to the warfighter.”

There are other unanticipated benefits of the office hours as well.

“What started as a goal of IP mining with the HLT group has morphed into an evaluation and assessment of the various open source licenses that are implicated by the software development and integration work they perform,” said Chuck Figer, IP attorney in the pilot program. “By the end of this effort, this group will know the do’s, don'ts and pitfalls associated with the open sources licenses that affect their work.”

Because the program is part of a larger Air Force initiative to increase the quantity and quality of intellectual property across the service, the Wing has ramped up other IP efforts.

Under the new plan, researchers must disclose any relevant invention disclosure before publishing an article or paper. The operating instruction for scientific and technical information clearance—the process all documents intended for public release must go through—will now include language asking whether intellectual property is present. If the document does discuss IP, the author must file invention disclosure and evaluation forms with the legal office’s IP attorneys.

Filing before publishing protects the inventors, Kearns stated, and is more important than ever under the new “first-to-file” patent laws.

“If our inventors publish something in the public domain without having filed through the patent office, someone else could read about the invention and file their own patent application first,” Kearns said.

The Wing’s IP plan will also streamline the patent application process, encourage collaboration and brainstorming, and incentivize inventors. The Wing is considering updating its patent application process with a web-based IP tool that some other AFRL directorates have adopted.

The tool is “self-guided and user-friendly,” said John Schutte, a Wing technology transfer specialist. “It completely automates and standardizes the process… And because it’s on a common portal, all key players have visibility throughout the process. Those of us in the tech transfer office can track the progress of a submission every step of the way, from invention disclosure to patent, and offer assistance when it’s needed. We can also assign a Wing priority, which helps the legal office with their triage process.”

The plan also includes participation in Innovation Discovery Events (IDEs), which are facilitated and supported by DOD partnership intermediaries TechLink and Wright Brothers Institute. At IDEs, researchers present their technology to a panel of experts with varied backgrounds; participate in a brainstorming session; and have their research rated based on technical fit, value, market attractiveness, and entrepreneurial start-up potential.

“What our researchers end up with after these events is an array of technology applications that previously might not have been considered,” said Kearns. “The goal is to push our researchers to the next step, regardless of what stage the technology is in. If an invention is in the disclosure stage, the brainstorming session can help broaden the patent application to cover areas our researchers perhaps didn’t think of. If the patent has already been granted, the feedback can suggest potential areas for licensing. Even if the technology is just in the paper stage, the IDE could help identify if there is an invention at all.”

The Wing is also taking steps to ensure greater recognition for researchers’ work. Inventors are already recognized internally, via a newsletter, lobby monitors, and an “Inventors Wall of Fame.” Now the Chief Scientist’s office will present them with “ribboned” patent copies from the U.S. Patent and Trademark Office. Perhaps most encouraging, Wing leadership increased inventor royalties from $2,000 plus 20 percent to $2,000 plus 50 percent.

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