What Is the Bayh-Dole Act?
In 1980, the Bayh-Dole Act created a uniform patent policy among the many federal agencies funding research. As a result of this law, universities retain ownership to inventions made under federally funded research. This led to the development of technology transfer by academic and other non-profit research institutions. In 2002, the Economist referred to it as “perhaps the most inspired piece of legislation to be enacted in America over the past half-century.”
What Is Technology Transfer?
Technology transfer is the process of transferring discoveries, including knowledge, methods and products from a research institution to others, typically companies or investors. This starts with the investigator submitting an Invention Disclosure Form, followed by patenting the invention for protection and licensing the IP rights to a third party that can further develop &/or commercialize the invention.
How Does Technology Transfer Work?
The essential steps of technology process include (1) submission of a disclosure form, (2) filing a patent application, (3) marketing the invention, and (4) licensing or partnering with an entity that can further develop or commercialize the product.
Invention Disclosure Process, IP Process, Marketing Strategy
Why Should Investigators Get Involved in Patenting and Technology Transfer?
Most importantly, technology transfer is by far the most efficient and effective way of helping ensure that a Baylor researcher’s findings get translated into a products that help patients and society. In addition, the investigator benefits from personal revenue, as well as revenue that directly supports his/her research and Baylor.
Who Owns the Intellectual Property (IP)?
Baylor owns all Intellectual Property (IP) developed by employees during the course of their employment at Baylor. In recognition of the importance of an Inventor’s contribution, Baylor has a generous revenue sharing policy.
When Should Investigators Disclose an Invention?
Investigators must disclose an invention to the Baylor Scott & White Research Institute Innovation Office when something new and useful has been conceived or developed, or when novel, unusual, unexpected research results have been obtained. In addition, investigators should disclose novel research tools, such as mouse models, cells, antibodies, reagents, nucleic acid constructs, chemical reagents, computer software and algorithms. If an Investigator is not sure whether his or her research findings should be disclosed, please contact the Baylor Scott & White Research Institute Innovation Office.
How Can Investigators Disclose an Invention?
Investigators must fill out an Invention Disclosure Form when something new and useful has been conceived or developed, or when novel, unusual, unexpected research results have been obtained. It is important to disclose an invention in a timely manner, as the US and the rest of the world grants patents on a “first to file” basis, rather than a “first to invent” basis. In addition, once a patent application is filed, the inventor will be able to publish and discuss his or her research with others in the scientific community.
Invention Disclosure Form
What is an Invention Disclosure Form?
The purpose of the form is to document the nature of the discovery and the circumstances leading up to its development. Since this form will provide the basis for determining patentability and commercial potential, in addition to providing data for the patent application, investigators should provide as much detailed information as possible. It is imperative that investigators submit an Invention Disclosure Form before publicly disclosing the novel findings.
What is a Public Disclosure?
If an invention is disclosed to the public in any manner, the ability to obtain patent protection will be severely compromised. ‘The public’ includes anyone outside of the inventor’s institution that is not covered by a confidentiality agreement. ‘Disclosure’ includes written documents, such as publications, posters, conference abstracts or emails, as well as oral presentations and conversations.
What is a Confidentiality Agreement?
A confidentiality agreement (CA), also known as a confidentiality disclosure agreement (CDA) or a non-disclosure agreement (NDA) allows parties, such as a Baylor investigator and someone from another institution or a company, to freely discuss details of the invention and related matters without making a public disclosure. In the event that an investigator wishes to discuss research findings with another party, please contact the Baylor Scott & White Research Institute Innovation Office.
How Does Publication Affect Technology Transfer
Publication of research is an extremely important part of technology development, as it provides objective validation of the science, and provides a valuable catalyst for securing licensees, partners and investors. However, it is extremely important to have the invention protected before it is described in a publication. Prior to submitting a manuscripts, poster or conference abstract, investigators should contact the Baylor Scott & White Research Institute Innovation Office and seek guidance as to whether a patent will need to be filed before the research can be published.
What is a Material Transfer Agreement?
A material transfer agreement (MTA) allows Baylor investigators to share research tools and reagents with non-Baylor researchers, and vice versa. Tools and reagents include biological samples, mouse models, antibodies, nucleic acid constructs, chemical reagents, computer software and algorithms.
Material Transfer Agreement