FAQ’s

Technology Transfer

What is Technology Transfer?

Technology transfer is a broad term used to describe the activities that take place to formally transfer rights to use or commercialize new discoveries/inventions/innovations from scientific research to another party. The process of technology transfer usually involves protecting an invention using patents and copyrights and then licensing to an identified partner. A detailed description of MSIP’s technology transfer process can be found in the Inventor’s Guide.

What is the Bayh-Dole Act?

Enacted on December 12, 1980, the Bayh-Dole Act (P.L. 96-517, Patent and Trademark Act Amendments of 1980) created a uniform patent policy among the many federal agencies that fund research, enabling small businesses and non-profit organizations, including universities, to retain title to inventions made under federally-funded research programs. This legislation was co-sponsored by Senators Birch Bayh of Indiana and Robert Dole of Kansas. The Bayh-Dole Act was especially instrumental in encouraging universities to participate in technology transfer activities. For further details please visit The Association of University Technology Manager’s (AUTM) description here.

What are the benefits of university technology transfer efforts?

Academic technology transfer – the licensing of innovations by universities, teaching hospitals, research institutes and patent management firms – adds billions of dollars to the U.S. economy and supports hundreds of thousands of jobs. It contributes to the spawning of new businesses, creating new industries and opening new markets. Most important, technology transfer from universities to the commercial sector has led to new products and services that improve our quality of life. From new cancer treatments to faster modems, from environmentally friendly metal processing to beautiful flowering plants, technology transfer from academic institutions is advancing the way we live and work. Specific examples can be found in the AUTM “Better World Report.”

 

Intellectual Property

What is intellectual property?

The term “intellectual property” generally relates to four distinct kinds of legal protection: patents, trademarks, copyrights, and trade secrets. Each kind of intellectual property is governed by its own body of federal and/or state law. The kinds of things that are protected by intellectual property law include scientific and engineering inventions (including new methods and apparatus), distinctive marks for identifying products or institutions, computer software, “know-how,” and forms of expression that are affixed in tangible form (i.e., books, movies, artistic works of art).

How is intellectual property protected?

Generally, by federal patent law, federal copyright law, federal trademark law, state trademark law, state laws regarding trade secrets and other laws related to businesses and contracts.

Who owns the intellectual property created at the Icahn School of Medicine at Mount Sinai?

If the intellectual property was developed by an employee of Mount Sinai or invented at Mount Sinai facilities under the supervision of Mount Sinai personnel, the intellectual property is owned by Mount Sinai. Each inventor must assign his or her rights in the intellectual property to Mount Sinai. This includes all faculty, staff, fellows, trainees, post-docs, and graduate students who have an appointment at Mount Sinai. Information on Mount Sinai’s IP policy can be found here.

What are the benefits of disclosing my invention?

The benefits of disclosing your invention through MSIP may include:

• Using commercial channels to bring products and other solutions to patients to address unmet needs

• Enhanced personal and institutional reputation in impacting public health

• Participation in the development of important solutions and products

• Revenues for research, teaching, and personal use

How do I disclose my invention?

The first step in disclosing is to contact MSIP directly, using either the “Submit Technology” button on our homepage or calling or emailing us. After contacting us, a Business Development Director will reach out to schedule a time to review technology. If it is determined that your technology has sufficient commercial potential, the Business Development Manager will work with you to fill out a Technology Disclosure Form and begin our commercialization process.

What happens if my invention is publicly disclosed?

Once the invention has been described in a printed publication or has been in public use or on sale, a patent usually cannot be obtained.

What constitutes public disclosure?

There are some gray areas to this question, but public disclosure includes journal publications, website publications, and presentations at conferences. More generally when the intellectual property is made publicly available and accessible to those skilled in the art to which the invention relates.

What if a collaborator from another institution has contributed to my invention?

Mount Sinai has inter-institutional agreements with many universities, research institutions and other organizations, and may negotiate such an agreement with your collaborator or institution. This type of agreement determines which institution would take the lead in patent and licensing of the invention, as well as how any royalty income would be shared. Each inventor should separately disclose the invention to his or her home institution.

 

Patents and Copyrights

Who is an inventor?

Inventorship is specifically defined under US law. An inventor is a person who makes an original, significant intellectual contribution leading to the conception of the invention. This concept is significantly different from authorship on an academic publication.

What can be disclosed to the public or to a company before a patent application is filed?

In the absence of a signed and valid confidentiality agreement (see below) or a filed patent application, it is generally not a good idea to make any kind of public disclosure of your potential invention if you believe that the disclosure contains any patentable aspects. What constitutes a public disclosure depends greatly upon the circumstances under which the information is being disclosed and the nature of the disclosure. Accordingly, it is strongly advisable for you to discuss a pending disclosure (including a publication submission, a presentation of a poster, paper or abstract at a meeting, or meeting with a company) with someone in MSIP to determine how to best preserve patent rights.

What is a patent?

A patent is a legal monopoly that allows the patent holder to prevent others from making, using, or selling an invention covered by the patent. Patents are granted by governments. Generally, patents may be enforced only in the jurisdiction that has granted them.

What is patentable?

For the standard type of patent, called a utility patent, an invention must be either an apparatus, a composition of matter, a process, or an article of manufacture (i.e. an artificial, man-made thing rather than an unprocessed, natural object or material). An improved version of previous technology may be patentable, as well as a new use for an existing technology. To be patentable, the invention or discovery must possess:
Utility: The patent statute specifies that an invention must be useful; i.e., it has a real-world application.
Novelty: The patent must be new, i.e., the exact same thing must not have existed or been done before.
Non-Obviousness: Even if novel, the invention must also be different enough from past technology that the average worker in the field would not have come up with the new invention from what was already known. If the invention does not meet this test, it may be rejected as obvious. Remember that the average worker in many scientific fields may be a Ph.D. researcher. In order to meet this requirement, inventors need to be aware of issues related to prior art, barring events, and bar dates.

There are other legal requirements for patentability that relate to the kind and amount of description, language and supporting data that must be present in the patent application itself. If you have questions about these other requirements, please contact MSIP.

What is prior art?

Prior art is any relevant publication, patent, or event prior to invention that may be considered by the patent office in evaluating patentability of the invention. Anything that has been published, used in public, offered for sale or sold by anyone before the inventor(s) made the invention may become a part of the prior art for that application.

What is a provisional patent application?

The provisional patent application is an application that can be filed with the US Patent and Trademark Office (USPTO) that establishes the effective filing date of a patent application. The provisional application is not examined by the USPTO, and may remain pending for one year. At the end of the period, Mount Sinai must elect to either drop the filing and allow the information to become public or convert the provisional application to a regular patent application. The OTBD works with the inventors to make this decision on behalf of Mount Sinai. The decision to continue with an application is based on the commercial potential as well as the patentability of the invention.

What is a copyright?

A copyright is the grant of protection by the laws of the United States to the authors of ‘original works’ including literary, dramatic, musical, artistic, architectural and certain other intellectual works, and is available for both published and unpublished works. An owner has the exclusive right to authorize others to reproduce the work; create derivative works; distribute copies of the work; perform the copyrighted work publicly, display the work publicly, and if it is a sound recording, perform the work publicly. Software may be copyrighted, but may also, in certain circumstances, be protected by a patent.

How do you file for copyright protection?

Copyright protection automatically exists from the moment a work is created and is fixed in a tangible form. Therefore, no publication or registration or other action by the Copyright Office is required to secure a copyright, although certain advantages are retained for registered copyrights, such as the right to seek damages for copyright infringement.

 

Commercialization

What is a confidentiality agreement?

A confidentiality agreement is an agreement whereby one party agrees to hold the proprietary technical and/or business information of the other party in confidence. Confidentiality Agreements (CDAs) or Non-disclosure Agreements (NDAs) are a standard tool of the trade, and many companies are amenable to having access to a technology under the terms of this type of agreement.

Who can sign a confidentiality agreement?

Only authorized individuals can sign a CDA on behalf of Mount Sinai. PRINCIPAL INVESTIGATORS ARE NOT AUTHORIZED TO SIGN THIS AGREEMENT ON BEHALF OF Mount Sinai. If a company wishes to obtain confidential information from Mount Sinai or an the investigator wishes to obtain confidential ifnroamtion from a third party, please contact MSIP for assistance.

What is a Material Transfer Agreement?

A Material Transfer Agreement (MTA) is an agreement where material is provided under specific conditions. MTAs should always be considered when conducting any outside collaborations with industry or other academic institutions. MTAs are typically used to protect materials that may be proprietary and/or embody a trade secret.

Who can sign MTAs?

Only authorized individuals can sign a MTA on behalf of Mount Sinai. PRINCIPAL INVESTIGATORS ARE NOT AUTHORIZED TO SIGN THIS AGREEMENT ON BEHALF OF Mount Sinai. If a company wishes to obtain materials from, or provide materials to, a Mount Sinai investigator, or if an investigator wishes to send or receive materials to or from industry, the investigator should contact MSIP for assistance.

How are licensees found for new technologies?

Licensees can be identified in many ways. First, the inventors often are aware of the commercial companies who would be interested in the work. Industry-specific marketing efforts including trade show participation, affiliations and market research carried out by MSIP also serve to identify potential licensees. Additionally, issued patents listed by the USPTO can provide names of companies who currently have patents similar in nature, and often times these can prove to be potential licensees as well.

What is an Exclusive, Non-Exclusive, Option Agreement License?

Option Agreements are used so that companies can evaluate a technology and consider whether or not securing a license makes sense. An option can be either exclusive, where for a given limited timeframe no other options will be granted to evaluate a piece of intellectual property, or can be nonexclusive where other options may also be granted from Mount Sinai.

How much inventor involvement is there in the licensing of technology?

MSIP encourages the participation of inventors. The more involved and interested the inventor(s) are in commercialization of a technology the higher the chances are that successful licenses will be secured. Normally the inventor(s) are often the first best source of information on what companies might be interested in licensing the technology.

How long does it take to execute a license agreement?

Every license is unique in that it brings together university intellectual property to solve a company’s specific problem(s). Once the intellectual property is identified by the company, terms of a license need to be negotiated and an agreement signed. Execution can take as little as a few weeks or many months, depending on the complexity and the response times of all involved.