September 2004, Issue 3

Patenting and Licensing Technologies

The mission of the Office for Technology Licensing and Industry Collaboration (OTL&IC) is to make Tufts technology available for public benefit, to promote research by facilitating collaboration with industry, and to generate research-supporting income. Researchers who think they've discovered a new technology, be it a process or a material, are encouraged to speak with someone at the OTL&IC about filing an Invention Disclosure Form.

Once the OTL&IC receives an invention disclosure, it evaluates the technology for commercial potential and decides whether to seek a patent. Evaluation involves researching the invention, its possible commercial uses, and its patentability — the likelihood that the University will obtain patent protection. The evaluation may indicate that the best route for commercializing the technology is not to seek a patent, even though the invention may indeed be patentable. Instead the OTL&IC may market the technology through a fee-bearing material transfer agreement. Usually an MTA is appropriate for a research material, such as a new antibody or a polymer. (MTAs were reviewed in the January 2004 issue of Research News @ Tufts, which can be found in the Archives.) Patents are usually sought for technologies that could lead to new products or methods.

For a limited time, the holder of a patent has the right to exclude others from using the invention without permission (that is, a license to the patent). In exchange for this exclusionary right, the inventor is obliged to disclose the invention fully in the text of the patent, so that others can build on this knowledge. Utility patents expire 20 years from the date of filing with the US Patent & Trademark Office, if maintenance fees are paid. After a patent expires, anyone may use the invention without the patent holder's permission.

A patent's exclusionary period provides a company with a window of no competition or limited competition, which translates to the possibility of recouping the investment it takes to develop and launch new products or methods. This right to exclude others is especially important for inventions that require a commitment of significant resources before a product can be marketed and sold, such as a medical device or drug.

Patent applications include background experiments and a description of the best mode of operation for the invention. They also establish the claims, or scope, of the invention. The OTL&IC works with inventors and patent attorneys to develop the broadest possible claims for new inventions. An example of a claim for discovering the relevance of a particular biochemical pathway might be for the use of that pathway to identify inhibitors that could then be used as pharmaceuticals for preventing or treating a disease. Occasionally during the dialogue of claim development additional experiments become apparent that could strengthen a specific claim and increase the value of the invention.

Time is of the essence when it comes to disclosing an invention. According to US patent law, the inventor has a year after public disclosure to file for a patent, but in other countries patent rights are lost once an invention has been disclosed publicly. Before publishing inventions or speaking about inventions in public, investigators are advised to disclose them confidentially to the OTL&IC so that it is possible to obtain patent rights worldwide. It's best to file an Invention Disclosure Form as early as possible because early disclosure allows the OTL&IC case manager to monitor companies working in the area on an ongoing basis. The OTL&IC recommends that investigators also keep track of possible industry partners working in their field, and that they make contact with industry scientists at scientific meetings.

The OTL&IC begins looking for an industry partner once a patent application is filed. The staff negotiate a variety of agreements to effect technology transfer, including exclusive and nonexclusive commercial licenses, options, material transfer agreements, and sponsored research agreements. The OTL&IC is creative in its approach to licensing, in order to maximize the possibility of commercial success for a Tufts technology. Occasionally Tufts technologies are broad enough to support entirely new Startup Companies (also see the May 2004 issue of Research News @ Tufts, which can be found in the Archives).

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

 

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