The Tech Transfer Process for Tufts–NEMC Investigators

The Office for Technology Licensing and Industry Collaboration (OTL&IC) handles Tufts–New England Medical Center as well as Tufts University technologies. Jennifer Nock, senior licensing associate, is the primary OTL&IC contact for Tufts–NEMC. She can be reached at 617-636-0338 (jennifer.nock@tufts.edu) to answer investigators’ questions about intellectual property protection.

Do you have an idea that could benefit your patients?
We'd like to highlight that new uses for existing technologies may be patentable. Most physicians work on a daily basis with drugs, devices, and procedures and know first hand what works well and what needs to be developed. Intellectual property that would be worth bringing to the attention of the OTL&IC includes devices, molecular pathways (or proteins) that are potential targets for new drugs, and new uses for existing devices or drugs. For example, a doctor’s research or clinical observations may bring to light a new use or indication for a drug that is already on the market. Before contacting the drug company about the possible new use, or embarking on a clinical trial, the investigator should contact the OTL&IC. The office will look at patents already in place for the drug and see if the new use has the potential for a patent. The OTL&IC will also help the investigator get a confidentiality agreement in place that will provide evidence of the investigator's conception of the new use prior to any discussions with the drug company.

Time commitment
The time investigators commit to tech transfer depends on how deeply they want to get involved. The first step toward protecting an invention is filing an Invention Disclosure Form with the OTL&IC. This should be done before any public disclosure of the invention (even an academic or professional talk or a published abstract) and often takes less than an hour. Rather than writing out a new description of the technology, for example, the investigator can simply attach a draft of a manuscript that describes the invention. After the OTL&IC reviews an invention disclosure it will ask the investigator to meet for a brief discussion of the technology and its commercial applications. If the OTL&IC decides to apply for a patent on the invention, the investigator will need to devote some time to corresponding with the OTL&IC and patent attorneys over the course of weeks to months. This time investment helps create a strong patent application and ensures that the invention can be marketed to the best possible commercial developers. An investigator can choose to get involved more deeply or even to seek the office’s help in starting a company around the technology, which would entail a more significant time commitment. For more information on startups, please see the Research News article Tufts Technology Startups.

Corporate sponsors to further research
If an investigator and an OTL&IC licensing associate decide an invention has the potential to be patented and developed, the OTL&IC staff will file a provisional patent application and begin marketing the technology. They will
search databases and talk to industry counterparts to try to find a corporate sponsor interested either in licensing the technology or in collaborating with the investigator by sponsoring additional research on the technology.

Confidentiality and material transfer agreements
OTL&IC handles confidentiality agreements for all clinical trials based at Tufts–NEMC as well as the hospital’s material transfer agreements (MTAs). MTAs are required when research materials are exchanged between Tufts–NEMC and another hospital, an academic institution, or a private company. MTAs establish an agreement about how the materials will be used and what rights each party will have to the results of research involving the materials. MTAs also determine who is liable for damages that could result from mishandling of hazardous materials. Please see the Research News article Material Transfer Agreements and the OTL&IC website page Material Transfers for more on this subject.

For more information, please go to http://techtransfer.tufts.edu/

 

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