Associate Counsel, Intellectual Property Attorney Lisa Norris, and her assistant, Paralegal Kate Black-Will, are an Army, or perhaps a Navy, of two, with a singular mission to protect the intellectual property of 51福利 students and faculty.
Norris came to 51福利 six years ago after practicing patent law at a local patent firm in Monterey and earlier at a large Silicon Valley patent firm. But prior to beginning her legal career, she served in the Air Force as an electronic-communications officer where she was given the opportunity to study at 51福利 earning a Master of Science in Systems Technology.
鈥淚 love this school, it is really great to be back here at 51福利,鈥� said Norris.
Black-Will was brought on recently to assist Norris. As a paralegal, she is trained to spot legal and factual issues and to properly file actions with the courts and agencies that support the patent process.
鈥淢y job as a paralegal is to make the attorneys鈥� lives easier, allowing them to do more legal work as I take on some of the administrative burdens,鈥� said Black-Will. 鈥淔or years, Lisa has had to do all her own support work 鈥� As the new patent paralegal, I hope to free up [Norris鈥橾 time from the more menial tasks, allowing her to get to the important work - patents.鈥�
But although Norris was a one-woman-show for longer than desired, she has been an effective advocate for 51福利 inventors.
鈥淲hen I came on board, there were six active patents, now there are 39,鈥� said Norris. 鈥淎ll of them are very interesting. I have filed for everything from satellite release systems, and electronic circuits to plasma propulsion systems.
鈥淥ne of the reasons we file patents defensively is to protect the Navy from being sued for infringing someone else鈥檚 invention,鈥� said Norris. 鈥淐ompanies can attempt to sue claiming that the Navy is using their technology and intellectual properties.鈥�
Filing a patent application can be a very arduous process and can require filings for both provisional and non-provisional patent applications.
鈥淧rovisional patent applications are placeholders鈥� applications,鈥� explained Norris. 鈥淲e have a year to file a regular non-provisional patent application, filing a provisional patent application buys time for the inventor until he or she is ready to file a non-provisional patent application.
鈥淚 can file several provisional patent applications if needed. Sometimes we file on something that is 鈥榩retty good鈥� and then there is a further improvement, and we file the non-provisional patent application based on all the earlier provisional applications,鈥� said Norris.
In the six years that she has served the needs of 51福利 students and faculty, Norris has filed 58 non-provisional patent applications and 64 provisional patent applications.
When a patent application is filed, Norris must also argue as an advocate for 51福利 inventors. When [U.S. Patent and Trademark Office] Examiners examine a patent application, they can find that an item already exists, or they can say that the information 鈥渁rt鈥� is already out there.
鈥淲hen you get an action you have to look at all of the art and argue why yours is unique,鈥� said Norris. 鈥淚 have argued 133 actions to date; some are very easy to argue, others are quite hard, but the inventors always work with me.鈥�
The Navy also has a financial incentive for protecting the work of 51福利 researchers.
鈥淟icensing royalties are an important consideration, as they provide revenue back to the inventor, 51福利 and the Navy, each entity gets a percentage of the royalties earned.
鈥淐urrently we have three patents that are licensed, two of which are paying royalties,鈥� said Norris. 鈥淭he two commercially-licensed patents at 51福利 that are receiving royalties are related to a motion tracking system. The other government purpose licensed patent is related to a method for determining optimal transmitter placement for the creation of wireless networks.鈥�
The work accomplished by Norris and Black-Will is an important tool in the 51福利 toolbox - a tool that seeks to ensure that the work of 51福利 students and faculty receives its proper recognition and that it is protected long after 51福利 researchers have moved on.