Office of Technology Transfer & Business Development
Confidential Disclosure Agreement
License Revenue Distribution
ROI & Assignment Forms
Release of an Invention
Invention Disclosure Process
Office of Technology Transfer &
Thomas Jefferson University
1020 Locust Street
Jefferson Alumni Hall, Suite M34
Philadelphia, PA 19107
(215) 923-5835 (fax)
Contact Ms. Tsai
A Report of Invention (ROI) form is available to guide TJU inventor candidates to translate their discoveries into writing for review and record keeping purposes. An inventor candidate can download the ROI form from the above navigation tab or request to receive a copy by email. The OTT team is available by phone or in person to help the inventor candidate better understand the ROI form.
Please click here to view the “Invention Disclosure Fundamentals” presentation by a patent attorney.
Please click here to view the flowchart “Process for Handling Invention Disclosures”.
Submission of Invention
When submitting an ROI to OTT, TJU inventor candidates need to provide OTT with any unpublished manuscripts, posters, abstracts, presentations, publications, or any pending public disclosure deadlines related to the discovery/invention.
Review of Invention – OTT Works with Inventor Candidates, Technology Reviewers, and Patent Attorneys
Assuming no pressing public disclosure deadline, within 4-5 business days after receiving an ROI, OTT completes an initial review and contacts the inventor candidate group with a docket number for the ROI and to request any missing information, such as funding information, publication information, Institutional Review Board (IRB) certification for findings based on human samples/human testing.
OTT reviews the ROI and any supporting information and may schedule an ROI meeting with the TJU inventor candidates, if necessary, to better understand the stage of development, novelty, and advantages of the discovery/invention. After the conversation or meeting with the inventor candidates, OTT provides a summary and action item list for their review and follow-up and to make sure they have the opportunity to raise any further questions or concerns
At the same time, OTT initiates the internal and sometimes external review (under a confidential disclosure agreement) of the invention. OTT considers the following criteria in determining whether to move forward to request a patentability assessment.
Market need and advantages of the invention.
Whether the inventor candidate group has clearly described the market need and advantages of the invention compared to current/other technologies.
Preliminary patentability criteria.
Based on the information in the ROI, whether the invention appears to meet preliminary patentability criteria (e.g., novelty, utility, non-obvious, not a research tool, not know-how).
The type of the invention (e.g., therapeutic, diagnostic, medical device).
If the invention is a mechanism, target, or pathway, OTT may request a patentability assessment to confirm the invention does not involve modulators, but will not seek patent protection on a mechanism, target, or pathway per se. The United States patent law has changed greatly in the past ten years. In a landmark case, the court ruled that patent protection on a mechanism, target, or pathway provides methods and tools for identifying and screening modulators, but does not cover the modulators that will be identified. Unfortunately, the modulators are the key intellectual property that companies seek to license. OTT often works with the inventor candidate group to explore alternative opportunities for such inventions, such as collaboration with commercial partners who have expertise or funding in identifying modulators.
Research tools, such as an animal model, research antibody, or a cell line, are licensed without patent protection, consistent with the current common practice of other academic technology transfer offices.
Supporting data for the invention.
The factors OTT considers include but are not limited to: the submitted data, if any; the grant support to conduct additional or preliminary validation experiments; a working design and/or prototype for medical device inventions; a relevant manuscript or meeting abstract.
If there is no supporting data, while the inventor candidate group obtains enabling data and results, the case will be inactivated and marked as incomplete. When the inventor candidate group submits the data and results to OTT, the case is reopened and the invention is re-evaluated. OTT also reopens the case when it receives confirmation from the inventor candidate group of secured funding to obtain supporting data.
Other issues that need to be sorted out.
For example, potential intellectual property rights of an inventor candidate’s prior institution, the use or incorporation of 3rd party materials in the invention; industry/foundation-sponsored research obligations, external collaborator(s); inventorship; public disclosure; prior art; potential consulting obligations.
If the TJU inventor candidate has been a TJU employee for less than 3 years, OTT shares with the TJU inventor candidate’s prior institution(s) a copy of the ROI and any supporting information. If any non-TJU personnel are listed as inventor candidates, OTT shares with such non-TJU inventor candidate(s)’s employer(s), a copy of the ROI and any supporting information. As is common practice among technology transfer offices, OTT works closely with any potential joint owner(s) of the discovery/invention on how to proceed with a discovery/invention.
If any commercial entity’s funding or biological materials are used for generating data on the discovery/invention, TJU may report such discovery/invention to such commercial entity pursuant to the terms in the agreement between TJU and such commercial entity. Such commercial entity may be entitled to make a patent protection decision and/or enjoy option or license rights.
If any biological materials provided by commercial entities or academic institutions are used for generating data on the discovery/invention, but no Material Transfer Agreement (MTA) was established prior to the transfer of the materials, OTT contacts the material provider(s) to determine whether the material provider(s) require TJU to establish a retroactive MTA. Any TJU obligations will be stated in the retroactive MTA.
If any federal or foundation funding is used for generating data on the discovery/invention, TJU is required to report such discovery/invention to the appropriate funding agencies. TJU may be obligated to comply with the funding agencies’ profit sharing policy on license revenues, if any.
The funding information helps to determine whether the inventor candidate group has adequate resources to further validate the invention in the event a provisional patent application is filed
If the inventor candidates have applied for grant funding but have no preliminary data, OTT asks the inventor candidates to inform the office when the grant has been approved, which will notify OTT of pending public disclosure of the invention through publication of the grant or grant abstract and the availability of resources to obtain the enabling proof-of-concept data to support the invention. If the invention was supported in part by a commercial sponsor or foundation, OTT must check the appropriate intellectual property policy or obligations of the sponsored research agreement.
Determination of Proper Commercialization Path
After carefully evaluating the above-mentioned factors, OTT determines whether a patent protection strategy is appropriate for the ROI or if the technology is better suited for an alternative commercialization path. If the decision is to seek patent protection, OTT sends an ROI, together with any related information, to a patent attorney for a patentability assessment prior to proceeding with patent protection.
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Office Hours at OTT
Dec 13, 2013 at 9am