Office of Technology Management

Office of Technology Management

The Office of Technology Management (OTM) facilitates the translation of MBICR research from bench to bedside for public benefit. We foster MBICR researchers in exploring the entrepreneurial potential of their discoveries by providing education and resources. We file both the US and PCT patent application for intellectual property generated by MBICR employees. We catalyze relationships with industrial partners to bring our scientific breakthroughs to the market. Two law firms in the US routinely assist the office in conducting various tasks listed at below.

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License Technologies

MBICR offers a variety of licenses and agreements to handle the transfer of our technologies to the marketplace.

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  • Exclusive License ? ?Exclusive licenses grant only a solo business partner the right to commercialize an invention in a particular market or market segment. Exclusive licenses are typically issued for a patented therapeutic or technology that demands substantial additional financial input from a partner in order to bring the intellectual property (IP) to the market. In this situation, exclusivity right is necessary for the partner to recuperate the financial investment in the product development.
  • Non-exclusive License ? ?Non-exclusive licenses provide multiple partners with the rights to commercialize the same invention. Such licenses are typically granted for research tools, screening assays, and diagnostics. Non-exclusive licenses engender the maximum extent of public benefit by permitting broad access.
  • Option Agreement ? ?Option agreements provide one or more external partners a specified time frame to evaluate technology before entering into a full license agreement.
  • Letter of Intent (LOI) ? ?LOIs are simple, short-term agreements that authorize MBICR to reserve a technology for an external partner exclusively while both parties negotiate the terms of a full license or an option agreement. In return for taking the technology off the market, the external partner pays a fee.

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Material Transfer Agreement (MTA)

MTAs govern the transfer of research material both into and out of MBICR. An MTA is needed any time when an MBICR investigator sends out research material to another institution or receives research material from another institution. Examples of such research material include physical materials such as tissue samples, transgenic mice, cell lines, gene constructs, compounds, and antibodies, as well as computer software and data. Incoming MTAs govern the transfer of material from an outside institution into MBICR, whereas outgoing MTAs oversee the transfer of research materials developed or collected at MBICR to an outside institution.

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Confidentiality Agreement

Confidentiality agreements (CDAs), also known as Non-Disclosure Agreements (NDAs), are used to protect proprietary information that is disclosed during the process of evaluating a possible research or business collaboration. CDAs protect MBICR and its researchers in at least three ways.

  • ???CDAs allow MBICR researchers to disclose new findings without compromising their patentability.
  • ???CDAs record what was exchanged between an MBICR researcher and an outside collaborator, so that if any questions arise later about who initially developed an idea, we have a proof of what had been discussed and when the discussion took place.
  • ???A CDA allows MBICR researchers to review and share intramurally a collaborator’s data or protocols to better evaluate opportunities for collaboration.

Industry sponsors will often ask MBICR to sign a CDA before proceeding to discuss a sponsor-initiated research project. If you have received a CDA from an external institution, please forward the MTA to the OTM.

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IP Protection and Commercialization Plan

The Office of Technology Management evaluates the patentability and commercial value of inventions created by MBICR employees. Our team will work closely with you to assess new technologies, guide you on optimal strategies that support commercialization of your idea, and devise a tailored commercialization and IP protection plan. If a favorite assessment is reached, the office usually submits a US provisional patent application followed by filing a US non-provisional patent application and a PCT application within one year to acclaim the priority date of the provisional patent application. Licensing the technology to an external partner for further development or spinning off a startup company are two of many possible options that the office is striving to achieve. If you have an invention or technology that you think is new, exciting and has potential as a commercial product or application, please disclose it to our office.

  • The Obligation to Disclose ? ?MBICR wants to ensure that any innovations its employees create are used for public benefits. MBICR employees must report any inventions that arise as a result of using MBICR facilities, funds or equipment. You can find the details of this obligation in MBICR Patent Policy.
  • Disclose Early to Protect Patent Rights ? ?Talk to us early about your ideas. We can guide you on when and how to disclose to the public, therefore ensuring that your innovations will be protected and positioned to have a meaningful social impact.
  • Actions Bar to Patentability ? ?Public disclosure, public use and offer for sale are typical activities that compromise your ability to patent your innovation.?The US patent law offers one year grace period but foreign patent rights are governed by foreign laws, which generally do not have a grace period after the mentioned actions. Under many foreign patent laws, one public disclosure can prevent an inventor from obtaining a patent. Consequently, one should file a patent application before any public?disclosure of one’s invention.

Public Disclosure?A public disclosure occurs when you discuss your invention to anyone outside MBICR in enough detail that the audience can understand and replicate your idea or invention. Public disclosures often happen in poster sessions, public talks or presentations, social conversations, and website postings.

Public Use?Public use describes a situation in which your invention becomes accessible to the public in any way that does not represent experimental use. An example is the use of a pharmaceutical therapy to treat patients in a clinical setting that is not part of a research study.

Offer for Sale?An offer for sale action happens when an invention is offered to a buyer in exchange for compensation or the promise of compensation. This is called an on-sale bar to patentability.?Inventors need to be aware that offers to sell potentially patentable inventions, even if made under a nondisclosure agreement, even if no sales are ever made, and even if only for a single product, can start the one-year grace period within which a patent application must be filed in the United States.

Industry-sponsored Research

MBICR partners with industry for basic research and product development in two ways.

  • Sponsored Research Agreements ? ?Sponsored research agreements are used when an industry sponsor funds a specific research project for a defined term and in return receives specific deliverables such as research data, reports and certain rights to the intellectual and tangible property.
  • Collaboration Agreements ? ?Collaboration Agreements are established between MBICR and an industry partner when both parties work together on the same research project and agree to contribute resources. In a typical collaboration agreement, an industry partner and MBICR each provide materials, equipment, personnel and/or specialized expertise to the project. Both parties share and discuss their experimental data and often publish them in scientific journals jointly.