BLG News Spring 2004
What is the difference between a patent and a license?The goal of the Baylor Licensing Group (BLG) is to license Inventions developed at Baylor College of Medicine to industry and others for the public good. In the context of this newsletter, the term “Invention” is broadly defined to include materials (cell lines, mouse models, etc.), patents, copyrights and other forms of intellectual property. In our day-to-day activities, we receive and review invention disclosures, coordinate patent prosecution (if necessary), market the Inventions and negotiate license agreements. This newsletter discusses the difference between a patent and a license.
1- What is a license?
A license is a contract in which the owner of an Invention grants another entity the right to use the Invention.
2- What is the purpose of a license?
The purpose of a license is to define the terms under which the use of an Invention will be governed. Specifically, for Baylor College of Medicine, a license is a mechanism to enable outside third parties (for-profit companies, individuals and non-profit entities) to use Inventions developed at Baylor to develop new products, processes or services that improve patient care or aid in research.
3- What is a patent?
A patent is granted by the United States Government to a patent owner and provides the right to exclude others from making, using, offering for sale, or selling the Invention throughout the United States or importing the Invention into the United States.
4- What is the purpose of a patent?
A patent provides the patent owner with the right to exclude others from practicing the invention as described in the claims of the patent. When Baylor licenses a patent to outside third parties, we allow them to develop and sell new products, processes or services based on the patented invention.
5- What is patentable?
To be patentable, an invention must be novel, non-obvious and have utility to humans. Therefore, a biochemical pathway in itself is not patentable because it does not show utility. In addition, the patent office requires that the applicant must have the invention in hand before he patents it. Therefore, an idea that does not have any data or a prototype to support it is not patentable.
6- What is the difference between a license and a patent?
A license is a contract that allows others to use an Invention that is owned by someone else. A patent is a property right granted by the United States Government that allows the owner of the patent the right to exclude others from using the claimed invention. As a licensing office, we grant rights to use Baylor-owned patents to others through a license.
7-If an Invention is patentable, why might Baylor’s licensing office choose not to patent it?
The goal of our office is to license Inventions developed at Baylor to industry, not to patent everything that is patentable. If the Invention can be licensed without a patent, or if it is not commercially viable, it does not make financial sense to pay for the very expensive patenting process. Or if monitoring the use of an invention is virtually impossible, as is usually the case for a method or screen, then it is unlikely that we would be able to detect infringers even if a patent were issued.
8- What are examples of Inventions that aren’t patented, but can be licensed?
Mouse models, cell lines and vectors and other research tools are usually not patented but are licensed to industry for internal research programs. Industry researchers value the research tool for its utility, and do not care if it is patented. In addition, they do not care if others are using the research tool so there is no need to patent these type Inventions.
9-What are examples of Inventions that Baylor’s licensing office might choose to patent?
Inventions are patented if they have broad commercial potential, an interested company willing to license the invention AND, but for that patent, would not otherwise be of interest. Such Inventions generally fall into the following categories: devices (medical and laboratory), diagnostics, drug candidates and drug targets.
Examples of non-patented materials being licensed:
Our office recently executed a license with a company that sells research reagents. The license provided material and rights to sell four polyclonal antibodies developed at Baylor; anti-PDX-1, anti-PDX-1b, anti-SSTR-2, and anti-SSTR-5. Even though patents were not filed on these antibodies, we are having no trouble interesting licensees to sell them. We anticipate a total of three semi-exclusive licenses with three separate reagent companies allowing all three to sell the antibodies to researchers. Baylor receives an upfront and a percentage of royalties on net sales of the antibodies that is distributed per the patent policy.
Several non-exclusive licenses have been executed for a series of cell lines developed from the TRAMP mouse model. TRAMP is a prostate cancer model developed by Baylor and University of Manitoba researchers. These cell lines are being used by various companies in drug discovery programs for compounds that treat prostate cancer. Even though the cell lines are not patented, companies desire to license them because of their utility and reputation. The licenses include an upfront fee and a maintenance fee due annually on each anniversary of the license agreement.