IP costs associated with SBIR and STTR | Kilpatrick Townsend & Stockton LLP


The National Institutes of Health (NIH) small business programs, which include Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) programs, are the largest source of capital for life sciences startups in the United States. The grant money helps startups accelerate their discoveries and bring their discoveries to clinical trials. The grants granted are just that, a grant and not a loan; there is no obligation to repay the money. The NIH grants $ 1.2 billion each year in the combined SBIR and STTR programs.

In addition to the sponsorship award, the sponsored companies own their data and intellectual property. The state does not take any equity stake in the grant. Advantageously, the scholarship holder can use the scholarship to obtain additional funding from angel investors, venture capitalists, and various partnership opportunities.

More recently, the NIH has included Technical and Business Assistance (TABA) support requests in the grant application. The purpose of TABA is to help award winners identify, address, and resolve their most pressing product development needs. TABA can help small businesses make better technical decisions, minimize technical risks, and accelerate commercialization. TABA is essentially a mechanism to help award winners cover commercialization and business costs that might otherwise not be included in the SBIR / STTR proposal.

As part of the application, applicants can apply for $ 6,500 per year for Phase I. Phase II applicants can apply for USD 50,000 per project period. TABA funds can also be used for intellectual property (IP) procurement. Applicants must note the requested “Technical Assistance” costs in one of lines 8-10 under “Section F. Other direct costs” in the application. Applicants can apply for funding to help protect intellectual property, including developing patent applications, performing freedom-to-operate analysis, patentability research, analyzing existing IP and competing products, and filing fees. Applicants can use the TABA to pay the costs of the patent application.

For SBIR and STTR grants from the Department of Energy (DOE), the costs of patent prosecution in connection with obtaining US patent protection for the grant recipient’s inventions from the award can also be estimated as part of the commercialization aid. DOE specifically states that patent prosecution costs include attorney’s fees and US Patent and Trademark Office (USPTO) fees. US patent protection includes filings with the USPTO relating to provisional, Patent Cooperation Treaty (PCT), non-provisional, continuation and partial continuation patent applications. Under the DOE parameters, patent prosecution costs in connection with foreign patent protection (e.g. foreign lawyer, foreign patent office or translation fees) are not permitted.

We encourage start-ups to apply for TABA funds in their funding applications. These TABA funds will help cover the cost of drafting and preparing patent applications and patent acquisition fees.

Source link


Comments are closed.