SBIR-STTR Award

The information produced by the Human Genome Project and related research is expected to revolutionize biology and medicine in general and recombinant DNA technology in particular. At present, however, obtaining patent protection for inventions involving recombinant DNA technology is an acknowledged bottleneck in the development of the U.S. biotechnology industry. While much attention has been focused on the problems that occur during prosecution of patent applications, little has been focused on the quality of those applications. This research will assess the technical feasibility of developing a knowledge-based expert system for facilitating the authoring of recombinant DNA invention disclosures. The purpose of the software is to improve the quality of international and U.S. patent applications for the purpose of reducing the duration of their pendency and associated uncertainty regarding the scope of their claims. International and U.S. invention disclosure requirements will be reviewed to provide a basis for development of a software requirements specification. Object-orlented programming techniques will then be used to prepare high- and low-level software design documentation. Finally, a software prototype will be constructed and subjected to alpha testing.Awardee'sstatement of the potential commercialapplications of the research: Over 170,000 US patent applications are filed annually at an estimated cost exceeding $1.4 billion. Over 9,700 of these are biotechnology patent applications. A software product that would facilitate authoring of high quality biotechnology invention disclosures could reduce the cost and length of pendency of such applications.National Institute of General Medical Sciences (NIGMS)

The information produced by the Human Genome Project and related research is expected to revolutionize medicine in general and recombinant DNA biotechnology in particular. At present, however, obtaining patent protection for novel, useful, and unobvious inventions involving the human genome is a recognized bottleneck in the development of a globally- competitive U.S. biotechnology industry. While much attention has been focused on problems that occur during prosecution of patent applications, little has centered on the quality of the input to this process: the invention disclosure. This research will investigate whether a knowledge- based expert system can help scientists/inventors produce better collaboratively-authored recombinant DNA invention disclosures in partnership with their technology managers and patent attorneys. The system will help scientists/inventors better understand how an intellectual property technology portfolio is created and managed, resulting in better communication among the inventor, technology manager and patent attorney. The specific objectives of this research are to: (I) expand the project team's understanding of the communication and information needs of the scientist/inventor, technology manager and patent attorney system users, (2) iteratively develop a Phase 11 system prototype using an object-oriented programming approach, and (3) conduct a field test of the prototype to evaluates its impact on invention disclosure quality. PROPOSED COMMERCIAL APPLICATIONS: Worldwide sales of biotechnology products are expected to reach $100 billion by the year 2000. The U.5 continues to lead all other countries in international patent activity in this field. Preparation of biotechnology patent applications is a business which exceeds $70 million in the U.S. alone. The system proposed herein will enable preparation of higher-quality invention disclosures and more informed intellectual-property protection decisions.