When should I disclose and what should I disclose?
Too early is better than too late. An ideal time to disclose is when a rough draft manuscript describing the technology is being assembled, however a manuscript is often not necessary. We prefer to have a chance to review supporting documents prior to any public disclosure (meeting abstract, poster, or seminar) to assess the need for filing a patent. A wide range of technologies are disclosed and licensed by BLG. If you've developed a new technology that solves an unresolved problem or may have utility in the diagnosis, prevention or treatment of human disease, we'd like to know about it. If you've developed a research tool that may be useful to your scientific colleagues in industry, we'd like to learn about it as well. Examples of disclosed technologies include: cell lines, antibodies, mouse strains, medical devices, compounds, vaccines, immunotherapeutics, gene products and mutations as diagnostics, software, and smart phone applications. If you are not sure whether to disclose a technology that you have developed, call us at (713) 798-6821.
Who should be listed as technology developers on the disclosure form?
Those individuals listed as developers should be determined by the primary investigator and discussed among all parties who contributed to the disclosed technology. All individuals listed on the disclosure form will receive compensation arising from income (if any) gained from licensing the technology. However, all developers may not necessarily be inventors on a patent filed in association with the technology. Income distribution is conducted according to the Baylor Policy on Patents and Other Intellectual Property (BCM Intranet login required) using the percentages listed on the disclosure form.
I have collaborators at other institutions. What do I do?
Please note the collaborators and their institutions on the disclosure form. BLG will work with our counterparts at other institutions to determine how best to proceed with a joint disclosure. Also, make your collaborators aware that you are submitting a disclosure form with their names on it.
Is a patent always necessary for commercial success?
No. We often license technologies that are not patented. Companies frequently license items for internal research use, such as mice, cell lines and vectors, in order to save the time and expense of independently creating such research tools. In fact, almost 50 percent of the licenses executed by BLG are agreements for non-patented research tools.
Does participation in the patenting and licensing process mean that I cannot share my reagents with other academic colleagues?
No, participation in patenting and licensing will not impede your ability to conduct research in the academic setting and will not harm your ability to collaborate with scientists at other institutions. Patenting and licensing allows for companies to use your technology to develop a commercial product. Despite the fact that the college may file a patent on an invention, the research tools and reagents utilized in your research can be made available to your academic colleagues for non-commercial research purposes with a Materials Transfer Agreement (MTA).
Is patenting and licensing just a way to make money for the school?
No. Technology commercialization is all about maximizing the impact of the research from your laboratory through commercial relationships. The purpose behind licensing is to catalyze the development of promising technologies into products and services that will benefit the public. The income derived from licensing is distributed according to the Baylor Policy on Patents and Other Intellectual Property (BCM Intranet login required) and is described below. This distribution is used for both cash and equity compensation from a licensee.
Net Income is Gross Income from licensing: 100 percent - Less:
BLG: 15 percent and Patent costs, if any:
*Net Income is distributed as follows:
Developers: 40 percent Distributed as per the percentages listed on the disclosure form.
Department: 30 percent One or more departments represented by the developers.
BCM General Fund: 30 percent
*Net Income may be different in circumstances where the invention resulted from research funded by a non-profit foundation. Each foundation has different policies which we negotiate to try to minimize the income-sharing impact on the developers. This is also the case with joint disclosures with other academic institutions discussed above.
How will you contact companies regarding my technology?
Because your expertise in your field of study, you may be our best source of information regarding a licensee. Your relationships with scientific colleagues in the corporate world are often a key catalyst in the effort to find a licensee. Technology transfer works best when there is a spirit of partnership between you and the BLG team. After discussing the technology with you in detail, we will prepare a brief, non-confidential, non-enabling summary (NED) that will give a basic description of your technology, with a focus on its unique advantages. We will use this summary as part of our marketing efforts to stimulate interest in your technology. Alternatively, if the technology is a published mouse model or other research tool we may use the paper for marketing.
We use a number of tools, including online information retrieval services, to locate and identify companies that present good candidates for licensing your invention. However, you may be our best source of information regarding a licensee. Your relationships with scientific colleagues in the corporate world are often a key catalyst in the effort to find a licensee.
A company is interested in licensing my technology. Tell me about license agreements - what do they convey and how do they work?
The information presented here is only designed to give you a general idea about the structure of a license agreement. Every negotiated agreement is different. License agreements can be split into two general categories, exclusive and non-exclusive:
Exclusive licenses are the type of agreement that we typically execute when the technology is a patented medical device or therapeutic invention. In this case, the patent rights are licensed to a single company (or several companies, each exclusive with respect to different fields of use or geographic locations). Exclusive licenses typically include an upfront payment, milestone payments (when company reaches a certain stage in product development, Baylor receives a payment), and royalties on sales of licensed products. The term of an exclusive license is normally for the duration of the last to expire patent associated with the licensed patent rights, so this represents a long-term relationship.
Non-exclusive licenses are the type of agreements we typically execute when the technology is a non-patented research tool. In this case, the licensed subject matter will be the research tool itself, since there are no patent rights. Non-exclusive licenses usually involve a lower fee structure than an exclusive license. When the agreement is for a research tool that has not been patented the reward to the developer is more immediate because there are no legal costs to reimburse before the developer can receive income. Non-exclusive licenses typically involve an upfront payment and sometimes an annual maintenance fee.
Will I still be able to do research if some of the intellectual property that I developed is licensed?
Yes, you will still be able to continue your research in the area that was licensed.
Why does BLG need my work and home address?
We need both addresses so that we can always reach you when needed. Please keep us updated if either address changes.
Why is the contract/grant information important to BLG?
Under federal law, Baylor College of Medicine is required to report technologies developed from federally-funded research to the United States Government. The United States Government has certain rights to technologies resulting from federal funding, including a free license to use the technology for government purposes. Non-government sponsors may also have intellectual property clauses and obligations attached to such sponsorship with which BLG must comply. Examples of these are non-profit private foundations including the American Cancer Society, the American Heart Association, and others. Agreements associated with industry-sponsored research almost always contain language governing rights to technologies resulting from the sponsored research. For this reason, it is important to submit copies of any MTAs that might have been executed in association with the technology along with the technology disclosure form.
How detailed should the description of the technology be?
As detailed as possible. All information provided to BLG will be kept confidential. Without adequate information, BLG cannot perform a complete evaluation of the technology's licensing potential, nor can we obtain an accurate legal opinion as to whether it is patentable.
If I publish a paper or make an oral disclosure before BLG files a patent application, have we lost patent rights?
Not immediately in the United States. In the United States we have one year from the date of first publication (or public disclosure) in which to file for a patent. Outside the United States rights generally are lost immediately upon public disclosure.
Why does Baylor College of Medicine not always pursue foreign patents?
Foreign patenting can become extremely expensive, very quickly. Baylor strives to have a licensee signed by the time these decisions must be made.
Should I refrain from publishing a paper or making an oral disclosure of a technology before BLG has filed for a patent?
No. The one-year grace period for the United States permits later patent filing. If possible, however, disclose your technology well before it is to be publicly disclosed. This allows for plenty of time for BLG to evaluate your technology for possible protection of foreign patent rights.