Salk Institute

Office of Technology Development

Other Frequently Asked Questions

Salk faculty and scientific staff should disclose inventions to the OTD if they believe their research could be commercialized for public use and benefit. Salk inventions are typically in the very early stages of development and require a significant investment before a product can be brought to market. Intellectual property protection often provides the necessary incentive for a company to pursue such a project.

The Salk patent policy requires that potentially patentable inventions be disclosed to the Institute in a timely manner. This allows the Institute to fulfill its obligations both to the federal government under the Bayh-Dole law and to other companies or organizations that sponsor research at Salk. Frequently, these sponsors are interested in transferring the technology through licensing.

After disclosing their inventions to the OTD, inventors may place them in the public domain if they believe that this would best serve the purpose of technology transfer (to promote public use and benefit) and if doing so does not violate the terms of any agreements that supported or were otherwise related to the work.

In accordance with Salk’s policy, revenues from license fees, royalties and equity—minus the OTD’s administrative fee and any unreimbursed expenses—are shared with the inventors (see Royalty Sharing). Also, if an invention is licensed, the inventors often enjoy new and enhanced relationships with businesses, which can enhance teaching, research and consulting.

You should complete an Invention Disclosure form whenever you feel you have discovered something unique with possible commercial value. Ideally, this should be done well before presenting the discovery through publications, poster sessions, conferences, or other communications. A good rule of thumb is to submit an Invention Disclosure form at the same time you submit a manuscript or grant for review, or three to four weeks before an abstract, poster presentation, or talk is made public. Typically, three or four weeks is enough time for the OTD to review the Invention Disclosure form for patentability and file a provisional patent application, if warranted.

Be sure to inform the OTD of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal, Ph.D. dissertation, master’s thesis, publication, or other public presentation of the invention.

Authorship of a scientific publication and inventorship have different criteria and are not equivalent. Inventorship is a matter of law, depending on what is specifically claimed in the patent as written. A patent that fails to name the correct inventors may be ruled invalid under certain circumstances. The law does not recognize as inventors individuals who merely follow someone else's instructions or simply provide lab space, funding and/or equipment. Because patent claims may change while the patent application is undergoing review by the patent office, inventorship may change as well.

When filling out your Invention Disclosure form, name any individual who has made a creative/intellectual contribution to the invention. The OTD will have outside patent counsel confirm inventorship during the patent drafting process.

The order in which inventors are listed bears no relationship to their contribution to the invention. In the eyes of the patent office, all inventors have an equal and undivided interest in the patent.

Ownership depends upon the employment status of the creators of the invention and their use of Institute facilities. Considerations include:

  • The employment status of the creator at the time the intellectual property was created
  • Whether Institute resources were used in creating the intellectual property
  • The terms of any agreement related to the creation of the intellectual property

As a general rule, the Institute owns inventions conceived or reduced to practice in whole or in part by members of the faculty or scientific staff of the Institute in the course of their Institute responsibilities, or with more than incidental use of Institute resources. The Institute’s copyright policy describes the applicable rules for copyrightable works. In some cases, the terms of a sponsored research agreement or materials transfer agreement may impact ownership. When in doubt, please call the OTD for advice.

If the invention was created in the process of research funded by the government, the government retains certain rights to the invention.

Absent any contractual obligation, the OTD relies on patent law, which allows joint inventors joint rights to an invention.

Intellectual property, also known as "intangible property," is different from “tangible property” such as land, a building, a computer, etc. Intellectual property may be protected under patent, trademark, trade secret and/or copyright laws.

It typically costs $25,000 to $35,000 to file and prosecute a U.S. patent application. This includes the filing fees paid to the United States Patent and Trademark Office and the more significant patent attorney costs. If the technology is unlicensed, Salk pays the patent costs. These expenses are reimbursed by the licensee if the technology is licensed.

Review the application to make sure that it accurately and completely describes the invention and that all those who contributed to the conception of the invention are named as inventors. It is important to respond to the attorney in a timely manner so that he or she can make the necessary revisions and file the application in the patent office prior to any deadlines (and before a public disclosure of the invention).

There are certain types of technologies, such as software and biological materials, that do not require patenting in order to be successfully licensed. For other inventions, if the OTD decides not to pursue patent protection and/or chooses not to actively market the invention, the inventor can request that the invention be released him or her for further development and commercialization. In such cases, the inventor typically pays all the patent costs. OTD licensing specialists can discuss alternatives based on the specific circumstances of a particular invention.

There are many possible routes for transferring technology, including licensing of intellectual property, collaboration and co-development projects, and the establishment of start-up companies. However, all of these routes will, at some point, require the transfer of intellectual property through a license agreement in which the Institute (commonly known as the “licensor”) grants its rights to the defined technology to a third party (commonly known as the “licensee”) for a period of years, sometimes for a particular field of use, and sometimes limited to certain regions of the world.

The process of protecting the technology and finding the right licensing partner may take months—or even years—to complete, and sometimes it is never completed. The amount of time required will depend on the stage of development of the technology, the market for the technology, competing technologies, and the amount of work and money needed to bring the new technology to the marketplace. Because Institute technologies are often at too early a stage for industry to invest in, the OTD is not able to find licensees for all technologies.

A license is permission granted by the owner of intellectual property to another party to act under all or some of the owner’s rights, usually under a written license agreement.

A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established business with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a start-up company is a better option.

Different inventions require different licensing strategies. For example, a basic new scientific tool likely to be widely used is typically licensed on a non-exclusive basis. In contrast, an invention that requires a significant investment of resources by a company is typically licensed on an exclusive basis. The exclusive license provides an incentive for the licensee to risk capital investments required for product development. Also, license terms for a start-up company are typically different than those for large companies. Salk license agreements usually stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good and provide a reasonable return to the Institute.

Sample license agreements can be found here>>.

The inventor plays a role at many stages of the licensing process. For example, the OTD relies on the inventor to:

  • disclose new technologies
  • work with attorneys to help prepare patent applications and respond to the patent office
  • review marketing materials and suggest companies as possible commercialization partners
  • help respond to technical questions and host visits from interested companies
  • keep the OTD informed of upcoming publications and interactions with companies related to their inventions

The OTD is responsible for managing the intellectual property assets of the Institute for the public good. Specifically, the OTD, with input from the inventors:

  • evaluates promising technologies generated by Salk faculty, scientific staff, and students
  • determines intellectual property commercialization strategies and manages patent prosecution (including payment of patenting costs for unlicensed technologies)
  • markets the invention to industry with the hope of finding one or more companies interested in developing products based on the technology
  • determines licensing strategy
  • negotiates license agreements with interested companies (i.e., licensees)
  • maintains long-term relationships with the companies developing products based on the licensed technology
  • collects and distributes royalties from licensing the invention

Each licensing associate has industry experience, an area of technical expertise in life sciences, or both. In addition, the licensing staff includes several registered patent agents. More information about the background and experience of individual licensing professionals can be found here.

The OTD does not negotiate or review consulting agreements on behalf of inventors. If a potential licensee is interested in having an inventor consult with the company, negotiations would be directly between the inventor and the company.

If an inventor is planning to remain at Salk while consulting with a company, he or she should become familiar with the Institute’s policies regarding consulting and conflict of interest. The inventor is expected to ensure that the terms of the consulting arrangement are consistent with Institute polices, including those related to intellectual property ownership and employment responsibilities. Refer to the Salk Conflict of Interest policies, which differ for faculty, scientific staff and students.

Please notify the Office of General Counsel and your appropriate department official(s) if you have or are contemplating a consulting agreement.

Inform the licensing associate responsible for the invention so he or she can take that into consideration when planning patenting, marketing, and licensing strategy. OTD staff can help with many aspects of company formation, including connections to legal resources, business experts and consultants; advice on business strategy; and connections to potential funding sources. Although Salk does not give preferential treatment to its inventors and their start-up companies, the OTD and the Institute recognize the importance of the inventor’s role in helping to transfer technology and in evaluating the ability of a company to develop licensed products.

Please contact your licensing associate.

 


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