Hospital Inventions and Intellectual Property/Patent Protection
My latest medical research could become a useful technology and I'm about to present it publicly. Is there anything I need to do first?
CALL THE TECHNOLOGY & INNOVATION DEVELOPMENT OFFICE!
We will immediately set up a meeting with you to discuss your work. We recommend that you come to us when preparing to submit a manuscript or abstract, ideally four weeks before your abstract is published, or if there is no abstract, then four weeks before your poster or oral presentation. We will evaluate your technology and if needed, we will arrange for a patent application to be filed. In a pinch, we can arrange for a patent filing, but this is not ideal. Keep in mind that abstracts are often posted online up to a month prior to scientific and clinical meetings.
How does the hospital decide what discoveries to patent?
TIDO analyzes each invention, and finds answers to the following questions:
- What is the ultimate medical product?
- What impact will this invention have on clinical care or life science research?
- What is the market size and opportunity for this medical or healthcare product?
- How long will it take to develop and what steps will be required to bring the product to market?
- What is the likelihood that this invention, in its current stage of development, will be licensed by a company for further development?
- What is the best form of intellectual property protection for this invention?
- Will this invention reduce the cost of medical care?
How long does it take to file a patent application? How long does it take to get an issued patent?
TIDO and patent attorneys prefer at least four weeks of lead-time to draft, review, finalize and file a patent application. During the process, attorneys identify the most advantageous and supportable claims and apply legal standards to identify actual inventors. Once a patent application is filed, it takes three to six years for the U.S. Patent Office to evaluate the patent application, in light of the scientific literature and other patents, to decide to issue a U.S. patent.
Would filing a patent protect my idea from being taken by someone else?
In some respect yes but the protection is not all inclusive. A patent establishes not only who first conceived the idea, but also who first reduced it to practice. During the evaluation by the US Patent Office, a patent application is published and its specific contents become public information. Those who would like to use your invention to develop a commercial product or sell your invention as a product must contact TIDO to license the patent. However, if someone would like to use your idea for research purposes at a non-commercial institution, such as a university, in most cases a patent will not prevent them from doing so.
I'm collaborating with colleagues at another institution and we've come up with a valuable invention. What should we do?
Contact TIDO. We will meet with you to evaluate your invention. If it is patentable, we will work with the Technology Transfer office of the other institution to file and manage the patent application. We will also negotiate a joint invention agreement that will define the rights of each institution to the invention.
Material Transfer Agreements (MTAs)
Can I do experiments with drugs or assays that are in development by a company?
If the company is willing to provide its proprietary drugs or materials for your research, the company will send a copy of their MTA to you or TIDO. In many cases, TIDO will have to negotiate changes in the MTA that ensure you and the hospital maintain certain rights, such as the right to publish results and to retain ownership of intellectual property and inventions. Although the company may ask you to sign, please keep in mind that TIDO’s Executive Director has to sign these agreements.
Many people are asking me to send them research reagents that I've recently made. What should I do?
*It is important that you do not distribute the material without an MTA*
- Contact TIDO at x43019 and they will arrange an MTA with the other institution.
- If there is a lot of interest in your research reagent or drug discovery tool, we may be able to license it to a research tools company like Life Technologies or Sigma who can distribute and sell your reagent. As discussed in Question 5, if we license the research tool and it generates income, you receive a share.
- If your research tool is a plasmid, you might want to consider submitting it to Addgene.com, a service organization who will manage the distribution.
I am joining a lab at Boston Children's Hospital and I'd like to bring some research tools and reagents from my old lab. What do I need to do this correctly?
Talk to the PI of the lab you are leaving to confirm it is acceptable to bring the reagents to your new lab at the hospital. In addition, call TIDO at x43019. They will put in place a simple MTA with your old institution that allows you to freely publish your future work and protect any new inventions relating to the transferred research reagents.
A company has asked me to be a consultant. Can I say yes, and how much can I do for them?
Harvard Faculty of Medicine are permitted to pursue certain external activities within the Policy on Conflicts of Interest and Commitment. Always check with your department chair and, if needed, principal investigator before signing a consulting agreement. For more information please see the Policy on Conflict of Interest and Commitment for Harvard Faculty of Medicine. If you still have questions, please contact the Office of General Counsel at 617-355-2146.