by ScienceDocs SBIR Grant Writer Dr. Marcy
Patents, trademarks, copyrights and trade secrets are all types of intellectual property (IP) that can have legal protection for companies. We will focus on presenting patent information as most applicant entities for SBIR/STTR funding are at the earliest stage of product development, and patents are a key part of a company’s foundation. An issued patent is a clear demonstration that a company has a novel solution to a problem, and underscores the “Innovation” aspect of an application’s review criteria. Patents de-risk a technology by limiting potential competitors, thus enhancing the probability of success in the marketplace. Additionally, patents have intrinsic value as they can be sold or licensed to other companies or institutions to generate revenue. Taken together, it is important for patent information to be clearly stated in SBIR/STTR applications, but it can be confusing about how best to do this. We suggest including the information in the following sections for NIH SBIR/STTR applications; other agencies may have different formats, and the content can be changed accordingly.
The principal investigator(s) and senior personnel performing the research under the grant application along with consultants are required to supply a biographical sketch (biosketch) using a template that is essentially a modified resume. Company founder(s) and personnel with patents relating to a company’s technology can describe this in the Personal Statement paragraph and add other details in the Contributions to Science section, with an appropriate patent citation. Key contributors or consultants with patents in other areas can list selected ones in the Contributions to Science section that have relevance to the proposed research as evidence of area expertise and ability to innovate. Those with extensive patent publications can summarize them with a broad statement of “XX issued patents in the areas of A, B and C” and explain how that expertise is important to address the company’s current needs.
SBIR/STTR Phase I Applications- Research Strategy
The patent status for the technology described in the application can be inserted with a few sentences in the Research Strategy section under the Innovation subheading. If the company owns the IP, include a statement about the IP status, with the patent application number and application date or the issued patent number and application date. If the company does not own the IP and has a licensing arrangement, provide this same information along with a description of the licensing partner (licensor) and the basic features of the license including whether it is exclusive or non-exclusive, the geographical territory (selected countries or worldwide) and any time limitations of the license.
SBIR/STTR Phase II Applications- Commercialization Plan
All Phase II and Fast Track SBIR/STTR applications are required to attach a Commercialization Plan that includes an Intellectual Property Protection section. If a company has more than a few patents, it is useful to provide a table with entries for issued patent or patent application number, title, country, filing date, and expiration date. A broad overview of the important claims for each entry can be reported as text in a separate paragraph. Describe the licensing arrangement as for Phase I applications above if the company does not own the IP. Include a summary of the findings of a Freedom to Operate legal opinion if available. Lastly, set out any strategies to expand the protection of company innovations in the future.
You Got this Covered
A clear description of patent information will reinforce the innovative aspect of a company’s technology, one of the review considerations for SBIR/STTR applications and provide assurance that steps are being taken to enhance the likelihood of future commercial success.
SBIR/STTR Instructions for Applications to NIH
National Library of Medicine citation guidance for patents
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