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Working With the Office of Technology Transfer
The Office of Technology Transfer evaluates and commercializes promising technologies developed within CHOP by the faculty, staff, and researchers. The team at OTT safeguards ideas, secures appropriate intellectual property protection, and makes connections with people and companies who would be interested in further developing the ideas and products to bring them to the market for the welfare of society. Visit OTT’s Resources section for a patent timeline, frequently asked questions, and more.
Technology Transfer Process Overview
Research, observations, and experiments conducted in the laboratory or clinical setting often lead to new inventions. An invention is any useful composition of matter, process, machine, or improvement of the same.
Disclosure submission through the Inventor Portal is a confidential, internal written notice of the invention to the Office of Technology Transfer. Importantly, a complete disclosure should fully document the invention, supporting data, contributors, and funding sources so that the commercialization potential and pathway can be accurately evaluated.
An intellectual property (IP) and market opportunity assessment is performed by a licensing associate upon receipt of a complete disclosure. An assessment comprises determining patentability of the invention, a prior art search focused on determining novelty and non-obviousness, and research on the market potential and competitive landscape. This assessment will guide timing of IP protection and the commercialization strategy.
Based on the assessment, which is presented to the licensing group for feedback, the Office of Technology Transfer will determine if a patent application should be filed on an invention. Patent applications are drafted and filed by outside patent counsel with input from the inventors. The process of patent prosecution costs thousands of dollars and takes several years, which is why it is important to assess a potential return on this investment before filing. In some cases, IP, including software, can be protected through other means such as copyrights.
A commercialization plan based on many factors, including the inventor’s future plans, IP strength, and the market opportunity for the invention, will be developed by a licensing associate with feedback from the team. Typically, inventions are commercialized through out-licensing to an existing company or through the creation of a start up company.
A licensing associate, with input from the inventor, will conduct market research identify to potential licensees in the relevant technology area. Out reach to companies with non-confidential descriptions of the invention are done through OTT’s existing network, at industry meetings, or through emails. Licensing associates will also facilitate in depth discussions between the interested companies and CHOP inventors that are protected by confidentiality agreements.
When an invention is licensed to a third party, whether it is an existing company or a new startup company, a license agreement will grant the rights to commercialize the invention and specify terms, conditions, and royalties due to CHOP for the grant of those rights. For example, the third party may have the exclusive or non-exclusive right to commercialize the invention. The license negotiation process is often lengthy with a back and forth that can take several months. If successful, the license agreement is executed, and forms the basis for a partnership to bring the invention to the market for public benefit.