Office of Technology Development

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WHEN/WHAT do I disclose? Whenever you have developed something through your research that you think is truly remarkable or innovative—whether an invention or tangible materials such as cell lines—you should disclose it to the OTD. Don’t worry about whether or not you have an “invention”—we will help you figure that out.

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HOW do I disclose? Disclosures of inventions and tangible materials can occur in the following ways: Invention Disclosures:

1. 1. Fill out the Invention Disclosure form and submit it to the OTD.

or

1. Call the OTD and schedule a meeting with a case manager, who will work with you to fill out the Invention Disclosure form.

Tangible Materials Disclosures:

1. 1. Fill out the Tangible Material(s) form and submit it to the OTD.

or

1. Call the OTD and schedule a meeting with a case manager, who will work with you to fill out the Tangible Material(s) form.

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Do the inventors benefit from licensing the invention? 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. Also, if an invention is licensed, the inventors often enjoy new and enhanced relationships with businesses, which can enhance teaching, research and consulting.

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How should I disclose an invention to the OTD? Use the Invention Disclosure form.

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When should I disclose an invention to the OTD? 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.

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How will we know which inventors should be listed on the patent application? Does the order in which inventors are listed matter? 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.

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Who owns what I create? 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.

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Why does the OTD need my work and home addresses? We need your work address to contact you and your home address to mail royalty checks to you. Please keep us updated if either address changes.

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Why is contract/grant information important to the OTD? Under federal law, the Institute is required to report inventions created through government-sponsored research to the federal government. If the Institute decides not to take title to such an invention (that is, decides not to keep it), then the federal government has rights to it. If the government doesn’t wish to retain these rights, the ownership of the invention may be reassigned to the inventors. Non-government research sponsors may also attach intellectual property clauses and obligations to such sponsorship, and the OTD must comply with them.

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How detailed should the description of the invention be? he description should be as detailed as possible. All information provided to the OTD will be kept confidential. Without adequate information, the OTD cannot perform a complete evaluation of the invention’s patenting and licensing potential. At the first meeting between the licensing associate and the inventor(s), the invention may be discussed in greater detail, if necessary.

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If I publish a paper or make an oral disclosure before the OTD files a patent application, are the patent rights lost? The U.S. rights are not lost. The OTD has one year from the date of first publication (or public disclosure) in which to file a U.S. patent application. Foreign rights are lost, but the OTD does not file many foreign patent applications, since there is often a larger potential market in the U.S.

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What is considered a public disclosure of an invention? A public disclosure is any form of communication that is readily available to the public (e.g., a journal paper, a conference presentation, a publication on the World Wide Web, even a dissertation indexed at the library) and that describes the basic ideas in enough detail that someone else would be able to make and use the invention(i.e., those ideas that are new). Showing or telling these ideas to others may also constitute disclosure, as does selling or offering for sale a prototype of the invention.

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

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What if I invent with someone who is not from Salk? Absent any contractual obligation, the OTD relies on patent law, which allows joint inventors joint rights to an invention.

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What is intellectual property? 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.

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How much does it cost to file and obtain a patent? Who pays the patent costs? 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.

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The patent attorney sent me a draft patent application. What do I do? 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).

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What happens if the Salk Institute doesn’t file a patent application? 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.

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How is technology transferred through the OTD? How long does it take? 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.

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What is a license? 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.

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How is a company chosen to be a licensee? 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.

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What are typical license terms? 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».

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What is the role of the inventor in the licensing process? 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

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What is the role of the OTD? 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

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What are the qualifications of the licensing professionals at the OTD? 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.

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If I want to consult with a licensee, what do I do? 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.

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If I want to start a company with my invention, what do I do? 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.

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How can I find out the status of my invention? Please contact your licensing associate.

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How do I find technologies that may be of value to my company? If you do not find what you need on this website under “Technologies Available for Collaboration” or “Technologies Available for Licensing and Collaboration,” please contact: Ha Nguyen Senior Director Office of Technology Development hnguyen@salk.edu 858-453-4100, Ext. 1612.

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How are collaborations with Salk faculty structured? All collaborations are driven by the science. Once the scientists from Salk and the potential partner have reached agreement on a work plan, the OTD staff will help structure the agreement that is most appropriate to that collaboration.

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Are there areas of particular concern to Salk when structuring collaborations? As a non-profit institute conducting research, we reserve the right to continue that research following any collaboration. Additionally, publication of research results is a primary mission of Salk. We must be permitted to publish the results of any collaboration while accommodating the need to protect intellectual property and confidential information.

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Opportunities for Collaboration Collaboration with a leading institute such as Salk could have a major impact on your company’s competitiveness and productivity. If you have a pre-existing relationship with a researcher at Salk and have identified a collaborative project, the OTD staff can help you structure an agreement that is appropriate to that collaboration. These agreements can include CDAs, material transfer agreements, collaboration agreements, options, licenses and sponsored research agreements. If your company does not have an existing relationship with a researcher, the OTD can help guide you to the most appropriate faculty member based on your capabilities and needs and can facilitate discussions. Click here to view technologies available for collaboration»

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Do you have suggested Inventor Resources?

• America Invents Act
• America Invents Act Potential Items for Patents
• Strategies for Managing University and Small Business Patent Portfolios in View of Recent Fundamental Changes in the Law

Presentations and Media Why is Academia Suddenly So Interested in Patents? June 9, 2011 [ video ] Weak Patents, Strong Patents, and Getting from One to the Other July 21, 2011 [ video ] The Four Flavors of Intellectual Property: Patents, Copyright, Trademarks, and Trade Secrets August 25, 2011 [ video ] “Translational”: Dirty Word, Black Hole, or Opportunity? September 29, 2011 [ video ] Academic Inventions that Changed the World October 27, 2011 [ video ] The Art of Inventing Things December 13, 2011 [ video ] Who are these OTD People? January 26, 2012 [ video ] What’s patentable and what’s not? March 01, 2012 [ video ] Got an idea? Now what? A user’s guide to the OTD April 12, 2012 [ video ] Biotech Patents After Prometheus May 24, 2012 [ video ] How to get a Patent July 26, 2012 [ video ] How to Negotiate Anything! January 22, 2013 [ video ] Can you Patent Genes? March 27, 2013 [ video ]