OHSU Technology Transfer works to commercialize inventions developed at OHSU. We provide feedback throughout the process to keep the inventors well informed on the invention's commercialization progress. Input from the inventor(s) during the commercialization process is also key to successful outcomes. Please follow the links below to learn more about the typical steps taken to commercialize OHSU inventions.
If you have questions about any part of the commercialization process please contact OHSU Technology Transfer at email@example.com
Submitting a brief description of your technology (form available on the OHSU Innovators page) tis the first step in the commercialization process. If you have questions about whether your technology qualifies as an invention or is too early to disclose, the technology development managers are happy to meet with researchers one-on-one to discuss ideas and determine how we can assist you. Reach out to firstname.lastname@example.org to start a conversation.
The timing of your disclosure is very important and OHSU Technology Transfer highly encourages inventors to speak with our staff well ahead of publishing (preferably a few months before) or discussing new discoveries with anyone outside of OHSU. This is because patents may need to be filed to protect the intellectual property before the information is made publicly-available. If you have a quickly-approaching presentation, publication or discussion and want to check whether a rush patent application needs to be filed, please contact us directly to start the conversation as soon as possible at email@example.com.
Upon receiving your disclosure OHSU Technology Transfer will evaluate the technology, and be responsible for protecting, marketing and licensing the technology when appropriate. OHSU Technology Transfer will keep the inventors informed during the entire process.
Following the submission of the technology (form available on the OHSU Innovators page), a preliminary review and a discussion with the inventor(s) takes place. A further assessment is performed to evaluate the type of IP protection that may be appropriate for the technology; the likelihood of obtaining protection, opportunities to strengthen the IP position; the overall potential of a product or service, licensability, and competitive landscape; along with a preliminary licensing strategy. In addition, timing considerations are addressed, dependent upon the state of the technology at time of disclosure. Any pending experiments, developments, or relevant dates (such as upcoming public disclosures, publications, presentations) that may affect the invention are discussed.
The technology development manager will keep inventors well informed and discusses their findings, and may follow-up to ask for additional prototypes, laboratory results and discuss next steps in the process. If you have any questions, please feel free to contact a technology development manager. If the invention shows strong commercial potential and the intellectual property has been defined, then the invention may move forward in the process.
Copy right protection
Any written or tangible material in the US is automatically protected by copyright. This includes software, teaching materials, videos, and questionnaires. Copyright material can also be registered, which provides additional remedies in case of infringement. In some cases, these technologies may also be patentable. The decision to pursue one or more forms of IP protection often comes down to the costs versus benefits of each.
A patent is a set of exclusive rights granted by a governing state to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of an invention.
Usually, the first step in seeking patent protection is to file a US provisional patent application. There is never a cost to the inventor or department - OHSU, through Technology Transfer, pays the patent costs until a patent is licensed. When a technology is licensed, OHSU will be reimbursed by the licensee or from license revenues. Provisional patent applications have a life of only one year after filing. Prior to the expiration of the provisional patent application a decision must be made of how best to proceed.
Essentially three options exist: 1) abandon prosecution and release the technology back to inventors or public domain, 2) pursue protection in multiple countries through the filing of a Patent Cooperation Treaty (PCT) application, or 3) pursue patent protection only in the US by filing a non-provisional application.
Because patents are issued in individual countries, a large patent portfolio can be very expensive, costing tens of thousands of dollars per country. All decisions regarding patents must include the cost of prosecuting and maintaining the patent, the market, the manufacturing capabilities of licensees, and the ability to recognize and prevent infringement in each country. Your technology development manager will continually re-evaluate the invention, taking into account such things as, the inventor's interest in the project, scientific developments, feedback from potential licensees, and other information found or made available when patenting decisions must be made.
The path to patent protection takes a long time - generally three to five years to complete. As we receive feedback from the patent office, the OHSU Technology Transfer Patent Team and technology development manager will work together with you in formulating responses to the examiner's rejections and on other aspects of your commercialization plan. In most cases we receive at least one "office action" requiring changes or defense of a patent application.
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Biological materials protection
Some biological materials such as antibodies or animal models cannot be patented, or it may not be economically feasible to do so. In many cases, however, the effort that has been put into producing these materials, and the expertise at OHSU makes it simpler and more economic for a company to license them than to reproduce them. Non-patented biological materials have a high potential of being commercialized to end users or by research reagent suppliers.
Biological materials such as mice, antibodies and cell lines can often be out licensed and commercialized even without patent or other intellectual property protection. Biological materials that have been previously described in a publication should be disclosed to OHSU Technology Transfer.
A trademark protects a brand name such as any word, name, symbol, device, or any combination thereof, that identifies and distinguishes the source of the goods of one seller or provider from those of others. Trademark protection is typically handled by OHSU’s Legal Department, but OHSU Technology Transfer can assist.
In order for most technologies to be commercialized, marketing to prospective commercial partners is a key step. OHSU Technology Transfer plays an active role in marketing technologies to these prospective licensees, but that doesn’t mean inventors can’t help. Data suggests that a high number of licensing leads come from the inventors themselves. Successful marketing of new technologies is often a joint effort between the inventors and the Technology Development and Licensing Team.
OHSU Technology Transfer’s goal is to find not just one potential licensee, but several potential licensees in order to identify the ideal fit for the technology. Potential licensees are evaluated based on their ability and desire to bring a product or service to market. This information is shared with the inventors and may influence the next steps in marketing the technology. Through marketing, feedback from companies is invaluable information for both OHSU Technology Transfer and the inventors that is used to help influence next steps.
Once a company expresses interest in acquiring rights in a technology, one of three things may happen:
- An Option Agreement is signed– this allows a company may to tie-up the technology for a short period of time so they can evaluate it further.
- A Term Sheet is negotiated - A company may prefer to work out the financial terms for a License Agreement (term sheet). The term sheet can be worked out during the Option Agreement or separately.
- A License Agreement is signed – This allow a company to maintain rights for a longer period of time to a technology and for a company to sell products based on the technology. The License Agreement will incorporate terms from the Term Sheet as well as other rights and responsibilities. The execution of a license is just the beginning of a long-term relationship between OHSU and the licensee.
The assigned technology development manager will handle all negotiations and will do their best to keep the inventor(s) informed as much as possible. Any questions or comments or concerns may be shared with the technology development manager at any time.
Once a technology is licensed, OHSU Technology Transfer collects any revenue due under the agreement. Inventors share a portion of the Net Royalty Income in accordance with OHSU’s Intellectual Property and Royalty Distribution Policy No. 04-50-001. Below is a brief description of what inventors can expect to receive after OHSU has reimbursed its out-of-pocket expenses.
Inventors receive 40% of the first $50,000, 35% of the next $50,000 and 30% of everything thereafter. This money is taxable income and will be reported to the IRS on a Form 1099.
The remaining Net Royalty Income is divided equally between the unit for which the inventors worked at the time of the invention and OHSU.
A Royalty Sharing Agreement will discuss how the inventor(s) share of the Net Royalty Income will be distributed among the inventors.
Where income in exchange for the transfer of OHSU intellectual property is to be in the form of equity or its equivalent, OHSU will instruct the licensee to transfer the inventor(s) portion of the University shares directly to the inventor(s).