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The Office of Technology Transfer works with inventors to secure and protect CHOP’s intellectual property. Find a list of Frequently Asked Questions and other resources below to better understand the Intellectual Property protection process.
You should disclose your discovery to the Office of Technology Transfer as soon as you feel you have discovered something novel with potential commercial value and/or well in advance of a public disclosure. A public disclosure is defined as a publication (in print or online), lecture, poster, research proposal, abstract submission, dissertation or master’s thesis, commercial use, offering for sale, or a conversation with those outside CHOP related to your discovery. Failure to disclose discoveries with adequate time for OTT to review and file a patent application before the public disclosure, if appropriate, may result in the irrevocable loss of rights to the invention in foreign countries and the US. The invention disclosure should be made through the Inventor Portal.
In accordance with CHOP’s Patent and Intellectual Property Policy, CHOP owns all intellectual property of Hospital Personnel, including any inventions conceived, reduced to practice or developed in whole or in part by Hospital Personnel in the course of research, teaching, clinical duties, or other Hospital duties or activities or involving the use of Hospital Facilities, Hospital Funds, and/or other Hospital Resources, unless it can be proven to the contrary This excludes copyrights in books, articles, or similar works that contain no IP owned by CHOP where the intended purpose is to disseminate the results of academic or scholarly activities.
An inventor is an individual who, individually or jointly, conceives of a definite and permanent idea of the complete and operative invention such that it is capable of being reduced to practice, or otherwise inventively contributes to the conception of an invention, and in any case, an individual who meets the criteria for inventorship under United States Patent laws. A test of inventorship is whether an individual has made an original, conceptual contribution to at least one of the claims of the patent.
It is important to note that inventorship and authorship are not the same. Co-authors may not necessarily be co-inventors if they do not meet the criteria described above.
Intellectual Property is defined in CHOP’s Patent and Intellectual Property Policy and means any and all creations of the mind, including, biological materials, confidential information, data, inventions, patents, copyrightable works, trademarks, and trade secrets.
A patent is a time-bound, legal right to exclude others from practicing (making, using, selling) useful, novel, and nonobvious inventions. Since it is a right to exclude others, a patent does not necessarily provide an affirmative right to practice the invention. A patent is comprised of a specification (a description of how to make and use the invention) and claims (define the scope of the protection of the patent).
From the commercial standpoint, the exclusivity provided by a patent is an incentive for the patent owner or licensee to invest the resources that would be required to further develop and commercialize the invention.
For an invention to be patentable, patent laws usually require it to be subject matter that is eligible for patent protection, novel and non-obvious or involve an inventive step. U.S. Patent Laws specifically define a patentable invention as:
- Patentable subject matter: process, machine, manufacture, composition of matter, or any new and useful improvements thereof
- Useful: the invention must have a utility
- Novel: the invention must be new.
- Non-obvious: the invention must be not obvious to one of ordinary skill in the art
The average time to obtain a U.S. patent is between two to three years. More complex filings such as life science inventions can take longer.
OTT assesses each invention or discovery based on several criteria including whether it can be protected by a patent, the impact the invention will have on science, research and society, the market size and opportunity for the potential product, the amount of time it will take to develop and bring the product to market, the likelihood that the invention will be licensed to a company, existing right obligations or rights to the intellectual property, and competing technologies/products.
A license agreement is a contract between the owner of the IP and a third party (licensee) that defines the terms under which the licensee may make, use or sell the invention. It also defines the obligations of the licensee back to the IP owner. A typical license agreement will specify the rights granted, the term of the grant, the financial considerations in exchange for the grant, as well as other provisions. A license agreement, therefore, gives the licensee the ability to use CHOP’s intellectual property rights to develop and commercialize a technology, and provides CHOP with revenue to support the research enterprise and at the same time, reserves the inventor’s rights to continue to use the IP for educational and research purposes.
In return for licensing CHOP’s intellectual property, the inventor(s) and the hospital receive fair consideration, which may include a license issue fee, royalties, annual maintenance fee/minimum annual royalty, sub-licensing fees, and other fees on a case-by-case basis. All income generated under a license agreement is distributed under the CHOP Patent and Intellectual Property Policy as follows: 45% to hospital research, 30% to the inventor(s), 12.5% to the inventor’s department and 12.5% to the inventor’s lab.
Yes. In most license agreements, CHOP retains the right to use and permit others to use the invention and intellectual property for internal, non-commercial, educational, or research purposes. You may also continue to publish on the research.
License agreements include diligence obligations on the licensee to develop and commercialize the IP. Such terms are included to ensure that the IP is used diligently and developed and not just put on the shelf. License agreements typically include milestones that must be met in order for the licensee to maintain the license. The license agreement also requires submission of periodic reports regarding the licensee's activities related to the development and commercialization of the products covered by the licensed IP. The OTT licensing associate monitors these milestones and follows up with the licensee to ensure these obligations are being met and that the licensee is complying with all the diligence terms and conditions.