Four Things to Know About Air Force Patent Attorneys

Four Things to Know About Air Force Patent Attorneys

Agency: 
Dept. of Defense

Read the original article here: http://www.wpafb.af.mil/News/Article-Display/Article/1504610/four-things-to-know-about-air-force-patent-attorneys/

Increased efforts to protect intellectual property while driving commercialization has scientists and engineers across the Air Force pushing harder to file patent applications and invention disclosures. 

At the center of the action is the Intellectual Property Division of the Air Force Materiel Command Law Office, which works with the scientists and engineers to accomplish these goals. Who are these folks and what does the Air Force community need to know about them? Keep reading to learn four important things about our patent attorneys!

1.) They speak your language.

All of the patent attorneys have science and engineering degrees. Each invention disclosure and patent application is assigned to the attorney with the appropriate background, making the patent writing process much easier than most realize.

“Many people don’t know that patent attorneys are required to have a degree in science or engineering before going to law school,” said Dr. Chastity Whitaker, one of the patent attorneys. “But you can’t be a patent attorney without having the appropriate educational experience.”

Here’s a look at the educational backgrounds of the attorneys in the Intellectual Property Division.

Wright-Patterson Air Force Base, Ohio
- Tim Barlow – Bachelor of Science, Chemistry
- Charles Figer – Bachelor of Science in Electrical Engineering
- Jeff Moore – Bachelor of Science in Aeronautical and Astronautical Engineering, Master of Science in Mechanical Engineering
- Steve Sayeedi – Bachelor of Science in Aerospace Engineering, Master of Science in Astrodynamics
- Jason Sopko – Bachelor of Science in Electrical Engineering and Computer Engineering
- Dr. Chastity Whitaker – Bachelor of Science in Chemistry, Bachelor of Science in Biology, Master of Science in Biophysics, Doctor of Philosophy in Biophysics

Rome Laboratory, New York
- Joe Mancini – Bachelor and Master of Science in Electrical Engineering

Kirtland Air Force Base, New Mexico
- James Skorich – Bachelor of Science in Aero-astronautical Engineering

2.) The attorneys develop the best patent strategies to protect Air Force inventions and intellectual property.

The Intellectual Property Division works to determine the most comprehensive way to protect Air Force IP. One of the ways to do to accomplish this task is by pursuing a patent family as opposed to a single patent. A patent family is a collection of patent applications that cover related content. One patent is considered the “parent” patent that covers the baseline invention. The related patents cover related aspects of the baseline technology such as manufacturing methods.

“It’s my job to look at the initial invention disclosure that is submitted to our office and determine the best way to file, the best way to broaden the patent protection,” explained Whitaker.

There are limits to how many claims can be made in a single patent. There are two types of patent claims. An independent claim can stand on its own while a dependent claim is tied to an independent claim. A patent generally contains three independent claims and no more than 20 claims, independent or dependent. So when it is applicable, a patent family provides broader invention protection because it increases the number of claims associated with the parent patent. It helps prevent someone from reverse engineering and designing around a patent to avoid paying royalties.

A patent family can also provide cost savings because each additional claim results in a fee. Additional independent claims above three or total claims above 20 incur additional costs, sometimes exceeding the cost of filing another application. Thus, part of the filing strategy for patent families also takes into account the filing fees and getting the best coverage for dollars spent.

Filing in this way also helps simplify and encourage licensing and commercializing the technology in the future.   

“Patent families can be more attractive from a licensing standpoint. Instead of a one-hit patent with narrow applications, a patent family can provide upwards of three or four or five patents that cover that much bigger space. That's will give a commercial company more protection to make the investment to go commercialize the technology,” said Charles Figer, a patent attorney with the division.

 

3.) They provide onsite informational briefings and office hours at various directorates and Air Force locations.

The division works with different Air Force technical directorates at Wright-Patterson Air Force Base and other locations to provide briefings on the patent process and protecting intellectual property. In the last two years, they began holding regular office hours at each technical directorate located on Wright-Patterson AFB to make themselves available to the scientists and engineers who are in the process of filing for a patent.

“We are physically present within the directorates every other week so that anyone with questions can stop by and see us,” said Whitaker.

The patent attorneys also travel to Air Force installations across the country to provide face-to-face time with scientists and engineers that don’t have a patent attorney located at their facility.

“I’ve also visited Eglin Air Force Base in Florida for a two-day stint,” said Figer. “I gave a briefing that provided them the need-to-know information and then spent the next day and a half meeting with individual inventors. Other attorneys have visited the Air Force Academy in Colorado and Lackland Air Force Base in Texas.”

The division provides remote office hours for scientist and engineers at other locations who have a patent in progress or those who just have questions.

4.) The Air Force team is “lean” compared to other Department of Defense agencies, but they still cover the entire Air Force.

The Air Force currently has eight full-time patent attorneys and contracts out a portion of the work to outside law firms. By comparison, the Army and the Navy have 40 to 50 attorneys on staff. 

Even with a smaller staff, the division’s output is impressive.

“While the total Air Force patent numbers are lower than our sister services, we produce the same number of patents, if not more, per attorney as the other services,” said Figer.

Six of the attorneys are located at Wright-Patterson Air Force Base, Ohio, where AFRL headquarters is located. They also provide patenting support to Air Force installations without a dedicated attorney. One of the remaining attorneys is located at Rome Laboratory in New York, with the other is at Kirtland Air Force Base, New Mexico.

 

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