711th Human Performance Wing ramps up intellectual property efforts

WRIGHT-PATTERSON AIR FORCE BASE, Ohio -- The 711th Human Performance Wing is leading an Air Force Research Laboratory pilot program to embed intellectual property attorneys into research groups to see how they can help 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 on-site at the Wing. Eventually the attorney will move around between different research areas to provide maximum benefit. For the pilot program, Human Language Technology researchers within the Wing’s Airman Systems Directorate will work with the embedded attorney to identify technology 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, technology transfer and domestic alliances manager for the Wing. “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, the IP attorney in the pilot program. “By the end of this effort, this group will know the dos, 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, as well.

One of the more direct parts of the plan has been to make any relevant invention disclosure mandatory before publishing an article or paper. The operating instruction for scientific and technical information clearance -- the process all documents intended for public release have to go through -- is being updated to include language asking whether intellectual property is present. If the document does discuss IP, the author is directed to file a Disclosure and Record of Invention and Invention Evaluation, Forms 1279 and 1981, with the legal office’s IP attorneys.

The requirement to file before publishing is to protect the inventors, as well, according to Kearns. This is more important than ever, since the U.S. Patent and Trademark Office has adopted “first to file.”

“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 also includes efforts to streamline the patent application process, encourage collaboration and brainstorming, and incentivize inventors.

In an update to the current patent application process -- which includes filling out forms, routing them for signature and submitting them via email to the legal office -- the Wing is considering adapting a web-based IP Tool that a few other AFRL directorates have started using.

“The tool has a number of benefits,” said John Schutte, one of the Wing’s technology transfer specialists. “It’s self-guided and user-friendly. It completely automates and standardizes the process, which translates to fewer errors during submission. 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.”

Collaboration is a key part of the Wing’s plan, which also includes participation in Innovation Discovery Events. The IDEs are facilitated by the Department of Defense’s Partnership Intermediary Agreements, with both TechLink and Wright Brothers Institute supporting the events. At the events, researchers have the opportunity to present their technology to a panel of between 10 and 12 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,” Kearns explained. “The top-rated applications are usually good areas to pursue. 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.”

With the increased effort devoted to intellectual property, the Wing also wants to ensure its researchers are recognized for their work.

IP accomplishments are publicized internally, via a newsletter, lobby monitors and an “Inventors Wall of Fame” created by AFRL. “Ribboned” patent copies from the U.S. Patent and Trademark Office will now be presented to inventors by the Chief Scientist’s office. And, perhaps most encouraging to the researchers, Wing leadership signed a memorandum in July increasing inventor royalties from $2 thousand plus 20 percent to $2 thousand plus 50 percent.

“The wing has brilliant people doing cutting edge research,” said Tim Sakulich, 711 HPW vice director. “Our emphasis on intellectual property is another way to celebrate their accomplishments and value of their contributions to the Air Force and the nation.”