Office of Technology Transfer & Business Development
Confidential Disclosure Agreement
License Revenue Distribution
ROI & Assignment Forms
Release of an Invention
Release of an Invention
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
Report of Invention
At times, TJU may decide not to seek patent protection on an invention. There are four primary reasons for such decision:
- There is insufficient data to support the invention. In this situation, OTT notifies the inventor candidate group that the case will be inactivated as incomplete while the inventor candidate group obtains enabling data and results or secures funding to obtain such data and results. When the inventor candidate group submits necessary supporting data and results to OTT or the evidence of secured funding, the case is reopened and the invention is re-evaluated.
- The invention is a research tool (such as an animal model, research antibody, or cell line). Such research tools are licensed without seeking patent protection.
- The invention is a mechanism, pathway, or target molecule. 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, pathway, or target provides methods and tools for identifying and screening modulators, but does not cover the modulators. Unfortunately, the modulators are the key intellectual property that companies seek to license.
- The invention is not patentable based on a patentability and prior art assessment by a patent attorney.
OTT often arranges for the inventor candidate group to speak with the patent attorney for further clarification prior to concluding its evaluation. In addition, OTT sometimes, under a confidential disclosure agreement (CDA), obtains feedback on an invention from external venture and pharmaceutical/biotechnology business executives and from internal reviewers with expertise in the research or clinical field of the invention.
OTT reports to and consults with the Vice President (VP) for Research, who is also the Chairman of the Intellectual Property Patent Committee (IPPC), at weekly and monthly meetings on the patent prosecution and technology commercialization strategy. In cases in which TJU has elected not to pursue patent protection on an invention, due to any one of the above-mentioned reasons, OTT will notify the inventor candidate group. If the inventor candidate group is interested in taking over the rights in the invention, the inventor candidate group indicates its interest by submitting a written request to the VP for Research. The VP for Research will arrange for the IPPC to review the request of the inventor candidate group and vote to determine whether such request is granted. If the IPPC approves the request of the inventor candidate group, the VP for Research will issue a release letter and provide it to the inventor candidate group for execution.
The IPPC consists of the VP for Research (Chairman), the VP for Finance, a research faculty representative (two-year term), a clinical faculty representative (two-year term), a University Counsel representative, and the Executive Director of OTT as stated in the Patent Policy. As stated in the Patent Policy, the IPPC members meet periodically to provide advice to the Executive Director of OTT in the implementation of the Patent Policy and other matters pertaining to the University intellectual property. From time to time, the IPPC reviews the Patent Policy and recommends to the President improvements in the content and implementation of the Patent Policy. Please click here for the most recent TJU Patent Policy and a reference copy.
Pending Patent Applications or Issued Patents
TJU may decide in some cases not to continue to prosecute a filed patent application or maintain an issued patent on an invention. The primary reason for such decision is the lack of commercial interest in the invention despite OTT’s aggressive marketing. Further, a decision not to continue the patent prosecution is also triggered by a patent office action which the patent attorney considers will be difficult and expensive to overcome. In the absence of a licensee, OTT will evaluate the industry feedback on the invention and determine the feasibility of continuing to argue with the patent office when no company has expressed interest in licensing and developing the invention into a commercial product.
OTT consults with the VP for Research on whether to make difficult decisions to discontinue patent prosecution. OTT will notify the inventor candidate group of the potential opportunity to take over the patent prosecution and related patent expenses, subject to approval by vote of the IPPC. The inventor candidate group indicates its interest by submitting a written request to the VP for research for TJU to release its rights in the invention to the inventor candidate group. In the event the IPPC approves the inventor candidate group’s request, the VP for Research will issue a release letter and provide it to the inventor candidate group for execution.
In the event that the inventor candidate group decides to engage TJU’s patent attorney who was responsible for prosecuting the case, TJU’s patent attorney will be notified and must sign a waiver in order to continue to prosecute the case on behalf of the inventor candidate group at the inventor candidate group’s expense.
Inventions Funded by Federal Government – Transfer of Title to Invention
If the invention was funded in whole or in part by the National Institutes of Health (NIH), OTT will complete its reporting obligations and return TJU’s title to the invention back to the NIH. In the event the inventor candidate group wishes to take over the rights in the pending patent prosecution or patent maintenance on the invention, the inventor candidate group is responsible for contacting the NIH to request the transfer of title from the NIH. Without such written approval from the NIH funding agency, TJU may not proceed to execute the assignment of rights to the inventor candidate group.
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