An Inventors Perspective Harry K. Charles, Jr., Ph.D. presented
to Patents and Pizza October 3, 2006 Slide 2 06VG-024-2 Outline
Introduction Background Invention Experience Records Notebook
Disclosure Process How to invent? Environment Encouragement
Resources Recognition Inventors Responsibility Closing Thoughts
Slide 3 06VG-024-3 Introduction Background: H. K. Charles, Jr. BSEE
Drexel University (EE) Ph.D. Johns Hopkins University (EE) APL
Experience (~35 years) Post Doctoral Fellow (Research Center)
Engineer (Microelectronics) Section Supervisor (Microelectronics)
Group Supervisor (Microelectronics) Branch Head (Engineering,
Design, and Fabrication) Department Head (Technical Services) 200
publications Slide 4 06VG-024-4 Introduction Invention Experience
40 Invention Disclosures 10 Patents Technical Expert (consultant)
in three patent lawsuits (claims construction, lawyer education,
etc.) Deposed twice Testified at trial Slide 5 06VG-024-5 Records
Notebook diligence idea linking supporting documentation witness(s)
Disclosure (to APL) electronic form relatively easy with quirks
assigned case number and lawyer efficient process Disclosure (to
Others) exercise care check with case attorney notify case attorney
(about plans, etc.) Slide 6 06VG-024-6 Process How to invent?
typically inventions are the outgrowth of the performance of
everyday tasks (e.g., new way of doing something, a need for a
simplified method, an identified technology gap, etc.) individuals
should be alert and recognize when their solution or process is
different from the status quo (sometimes novel but most often not
just unfamiliar to you) do some homework (web, publications,
patents, etc.); if solution still seems novel, disclose it Can
inventions be planned? No! But certain environments are conducive
to the process need for intellectual property is key to business
success (planned activity) Slide 7 06VG-024-7 Environment
Encouragement colleagues, business area, department, and APL
climate of change (my own experience) Resources time to work on
ideas support in the patents process (legal, dollars) Office of
Technology Transfer (OTT) Recognition spot payments (patent
issuance) plaques royalty sharing 25 Years 1972 1996 10 Years 1997
- 2006 Invention Disclosures1723 Patents19 Slide 8 06VG-024-8
Responsibility Invention does not stop with the idea or the
disclosure It needs to be supported by the staff member throughout
the process including reviewing similar patents adding key
information reviewing patent text and claims helping lawyers define
what is novel Process time: 2 to 4 years typically after disclosure
Patent time: Since filing ~ 27 months (own experience) Work with
OTT on marketing and licensing Slide 9 06VG-024-9 Closing Thoughts
Important to the Laboratory (royalties, recognition, proof that our
work is challenging and state-of-the-art) Rewarding process
recognition by peers Supports credentials (just like publications,
etc.) Recognized by prospective employers
