Office of Technology Transfer & Business Development
OTT Standard Operating Procedure Guidelines
OTT is guided by the highest principles of academic technology transfer in managing the operations of the office. Business practices align specifically with the values and policies of TJU and TJUH and generally with principles related to nurturing future research and using the innovations of university research to provide the broadest possible benefit to the public.
OTT has managed to evolve operation processes that efficiently and effectively drive OTT’s business practices regarding invention disclosures, patent prosecution, technology marketing, disclosure of proprietary information of TJU and TJUH, license revenue distribution, biological material transfer, and service of consulting agreements. The guidelines for OTT’s operations are outlined here and described in detail in the individual sections on the website menu and navigation tabs.
General Inquiries & Communication with OTT
OTT normally responds to all inquiries or requests on the same business day, or responds promptly within three business days.
Many university technology transfer offices receive invention disclosures that are not complete, and OTT is no different. OTT understands that technology transfer is not the primary focus of faculty research and education, and, therefore, works closely with the inventor candidates to obtain the information and thoroughly explain the need for such information.
What constitutes a complete Report of Invention? The critical information includes: (i) prior or imminent public disclosure; (ii) external inventor candidate(s) and joint owner(s); (iii) the funding source(s) for the invention; (iv) the source(s) of materials that led to the invention; (v) the clear description by the inventor candidate(s) of the invention and its advantages compared to current technologies; (vi) supporting data to validate the invention.
OTT then applies the information it receives to formulate a strategy appropriate for the specific invention disclosure.
TJU's external patent attorneys are responsible for conducting patentability and inventorship assessments on Reports of Invention, and for providing patent prosecution strategy and opinions on pending TJU and TJUH cases and responding to patent office actions.
With respect to patentability assessments, university technology transfer offices often obtain such assessments on invention disclosures as a first step in anticipating the potential challenges and expense in proceeding with a patent application. In addition, changes in patent law over the years have altered patent attorney evaluations and academic technology transfer office practices with respect to the suitability of patent protection for various types of invention, particularly pathways and research tools.
Not all technologies garner the marketing feedback to warrant the future cost of continued prosecution. When TJU must make the difficult decision to discontinue the patent prosecution for a technology, it informs the inventor candidate group, who has the opportunity to submit a formal notice to the Vice President (VP) for Research, who is also the Chairman of the Intellectual Property Patent Committee (IPPC), requesting TJU to release the invention patent rights to the inventor candidate group for continued prosecution at its own expense. The VP for Research schedules IPPC meetings and refers the request to the IPPC for a discussion and vote at its next scheduled meeting.
A crucial point that any technology reviewer must bear in mind is the often significant time lag between the submission of a Report of Invention and the conclusion of a license agreement. OTT conducts aggressive and continuous marketing to identify potential licensees and R&D partners for TJU and TJUH innovations, and frequently licenses the know-how accompanying the technology in the absence of patentable intellectual property assets. Industry feedback is critical for Jefferson’s licensing and patent prosecution decisions. In addition, it has been OTT’s experience that established relationships are more likely to yield beneficial agreements than those that have been created de novo.
Confidential Disclosure Agreement (CDA)
The Confidential Disclosure Agreement (CDA) is a key step in the commercialization process. OTT seeks to protect the intellectual property of TJU and TJUH by establishing a CDA prior to the disclosure of confidential information.
OTT includes the CDA process in all of its educational outreach presentations. It is essential for the faculty member and/or inventor candidate to contact OTT and provide any necessary information to fully protect the intellectual property asset.
License Revenue Distribution
OTT distributes license revenue twice a year according to the TJU Patent Policy in effect at the time the Report of Invention (ROI) was submitted to OTT. Revenue from the licensing of non-patented research tools, know-how, or copyrighted or trademarked works of TJU is distributed according to the TJU Patent Policy or Tangible Research Property Policy.
There are currently eight versions of the TJU patent policy, issued over the years, which determine the license revenue payout to inventors. Distribution of license revenue is based on the patent policy in effect at the time the ROI was submitted to OTT.
Like all university technology transfer offices, OTT has specific concerns regarding the transfer of biological materials, because of the strict obligations and restrictions imposed by third parties as stated in the Material Transfer Agreement (MTA). OTT has been appointed by the University to ensure that TJU can meet the obligations. At the same time, OTT’s primary concern is ensuring the fastest possible response to TJU’s investigators. OTT keeps TJU faculty members informed during the MTA review process by copying the faculty on the related correspondence if they request, and by enabling the faculty members to use their Campus Key to check the status of their own pending MTAs through OTT’s website. OTT is sensitive to the importance of safeguarding each TJU researcher’s scientific interests. The secured web-based access provides researchers with the convenience of viewing their individual MTA status anytime.
When a biological material is being provided to TJU, OTT puts in place procedures to ensure that the reasonable demands and expectations of the material provider are met. One of the primary concerns is the funding that the TJU faculty will use for the research with the material. Often, there are very strict restrictions against use of the material in commercial sponsored research, including Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) subcontract research. In addition, there are often demands by the material provider regarding publication of the results, intellectual property arising from the use of the material, modification of the material, and further distribution of the material by the recipient scientist, which must be negotiated and agreed upon by both parties. Most importantly, the TJU scientists have to understand and agree to the obligations.
For requests to ship a biological material from TJU or TJUH to another academic institution or a company/commercial entity, among the issues requiring attention is the ownership of the material and whether TJU or TJUH has the right to ship out the material. OTT also works to facilitate faculty special requests, such as co-authorship on the recipient researcher’s scientific paper which includes research results generated by using the TJU or TJUH material.
OTT provides services with the University Counsel’s office (UC) to review consulting agreements for TJU employees. A TJU employee, who wishes to provide work-for-hire, independent contractor consulting services to a third party entity, must (i) first notify UC and OTT, (ii) describe the scope and nature of the proposed consulting services, and (iii) confirm that the proposed services are not related to his or her ongoing research at TJU or similar work for any other entities.
In addition, the TJU employee must provide the third party entity with a copy of his or her existing TJU Assignment of Inventions Agreement. The original signed Assignment of Invention Agreement is filed at the Office of Research Administration (ORA).
Further, consulting activities must be conducted off campus, and must not use TJU resources or facilities (which include phones and computers) or any other TJU personnel. Any consulting compensation of $10,000 or greater must be reported to the University Conflict of Interest officer. For further information, please click here to view the TJU Conflict of Interest Policy and Industry Relationships Policy.
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Office Hours at OTT
Dec 13, 2013 at 9am