WHOI COMMUNITY AND INVENTORS
WE ARE HERE TO HELP
OTT is dedicated to realizing the full impact of WHOI innovations. We do this in part by providing support, guidance, and helpful resources to WHOI staff and innovators. We understand that whether you are a first time inventor, or seasoned entrepreneur, the process can be intimidating. Whether speaking with industry for the first time, knowing when to disclose an idea to OTT, or understanding IP ownership and protection - we're here to help you understand what to expect from the process.
For additional information or to request additional resources here, please contact Allison Markova.
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The Bayh-Dole act of 1980 created a uniform patent policy among U.S. federal agencies that fund research in the non-profit and small business sectors. The Act provides recipients of both complete and partial federal research funds with the right to retain ownership of their patents with the understanding that federally funded inventions should be licensed for commercial development in the public interest.
How does this impact your research?
To Administer US Grant Money, WHOI Must:
• Identify all patentable discoveries and inventions arising from research funded by federal grants
• Report patentable discoveries if electing to file patents
• Educate its staff in IP and patents
• Show preference for small business licensees
• Provide an annual report to the government on invention utilization
The government maintains “march-in” rights if effective steps have not been taken to achieve practical application of the invention.
Granting agencies may also have their own requirements
Any questions regarding the Bayh Dole Act, please contact email@example.com
To ensure the most up-to-date forms are being used, form downloads are not available through the website. If you are planning to do any of the following, please contact OTT for assistance and we will provide the necessary forms:
– Initiating a collaboration with an academic partner
– Planning to have a confidential discussion with a company, non-WHOI colleague, or foundation
– Transferring or exchanging research materials
– Agreeing to joint development with a company
– Agreeing to sponsored research with a company
– Agreeing to do contract research with a company
Non-Disclosure and Confidentiality Agreements do not bind the Institute unless they are signed, or assented to in writing, by an individual who is specifically authorized by the WHOI Board of Trustees to bind the Institute.
The Principal Investigator is not authorized to sign a Non-Disclosure or Confidentiality Agreement in the absence of written authority from OTT.
Learn more about OTT
- IP assessment, IP protection & patent filing
- Forms & agreements (NDAs, MTAs. etc.)
- WHOI start up company support
- Marketing, outreach, & licensing
- Identification and coordination of translational funding sources for WHOI PIs (e.g., SBIR)
- Guidance and support for WHOI PIs speaking with outside companies
- IP & commercialization education & resources
We suggest you disclose your idea as soon as possible- the earlier the better. Patents for a specific idea or invention are now awarded based on the first person to file a patent application, not the first person to invent. In general, the first person to file a patent on an idea/invention is the most likely to have a patent granted.
Also, disclosing your idea early allows our office to learn more about your future plans for publications, presentations, and any commercial endeavors, lets us ensure your publications will not compromise the patenting process for your idea.
WHOI OTT handles obtaining IP and pursuing commercialization for all WHOI scientists, engineers, and staff, and it costs the inventor nothing (but a small amount of their time) to pursue patenting and commercialization.
In general, if you are the first person to solve a problem in a specific way, you may have a patentable invention. WHOI requires OTT to do the patentability analysis and make the decision whether or not to file a patent. If you have a new idea, invention or research result, please contact our office, and we will perform a patentability evaluation. Should we elect to forgo filing you may request a detailed report summarizing the evaluation process. Once a patent is filed, the patent office will request documentation that your invention is new, useful, and non-obvious. OTT will manage that process and contact you for needed information. More information on what is patentable can be found on the USPTO website.
Your idea could still be protectable or otherwise commercializable- you should still disclose to OTT and speak with the team about options
After you disclose an idea to OTT, your idea is prioritized for patent filing relative to other WHOI ideas based on:
– Commercial potential
– Cost recovery
– Market risks
– Other factors
Based on this prioritization, patents will be filed for a portion of idea disclosures but not all. If you are interested in understanding more about the prioritization process, our office will create a report for you summarizing the prioritization score, please contact the office and we would be happy to go through it with you.
Prior art is defined as any prior disclosure, either by publication, patent, or public event prior to the filing of the patent application that may be considered by the Patent Office in evaluating patentability of the invention. Prior art may contain evidence that your invention is already known. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale, or sold by anyone other than the inventor(s), or more than one year before the inventor(s) file a patent application, becomes a part of the prior art for that application.
Give us a call as soon as possible. We can make sure a patent application is filed in a timely manner so as to not interfere with your work or your publication.
Please contact OTT for resources and assistance- a Non-Disclosure Agreement (NDA) may also be necessary. Please see Planning to Talk to Industry in the Inventor’s Portal.
Whenever possible, we use WHOI NDAs, MTAs, Licenses, and Sponsored Research Agreements. These agreements were drafted by WHOI for industry and corporate partnerships to protect our staff. Agreements provided by a company are usually prepared for relationships with other companies and may be inappropriate or will not apply to an academic not-for-profit organization like WHOI. Use of agreements provided by a company may mean extensive re-writing, legal review, and most importantly, time delay before a final agreement can be reached. When offered an agreement by a company, please refer them to the OTT. We will work with the company to find the best approach for agreement preparation.
An NDA is necessary when there will be any disclosure of proprietary information between parties (a researcher and a company, for example). The Office for Technology Transfer will execute an NDA on behalf of the inventor(s) looking to engage in discussions with companies regarding their technology.
Transfer of materials to a third party may affect the patentability of a related invention unless it is done in a confidential manner. A Material Transfer Agreement (MTA) is a legal document for the protection of tangible research materials created by researchers that may be useful to others for research or for commercial development. Please contact the Office for Technology Transfer before initiating a materials transfer so that an appropriate MTA can be developed to protect both you and WHOI.
For budgetary reasons, WHOI is only able to file a small number of patent applications per year. If your invention has not scored as a top priority technology and OTT does not pursue a patent – we may be able to provide you with a license to the technology. The license will allow you to pursue patent filing, patent prosecution, and commercialization. Please give our office a call to discuss the matter.
Inventorship is a legal matter and is NOT determined in the manner of authorship for a journal publication.
An inventor is someone who made significant contributions to the complete and working invention. Merely following the plan or direction of a manager or faculty member is NOT inventorship. Similarly, stating an objective to be met without describing one or more of the inventive details of the working invention does not make one an inventor. Getting inventorship right is important, because an issued patent may be deemed invalid if inventorship is not correct. WHOI’s OTT will work with you, your co-inventors, and our patent counsel to resolve the difficult cases.
Royalties are received by OTT and distributed through Finance & Accounting to the inventors, WHOI, the Translational Research Fund (TRF), and the inventor’s department. See below for general royalty disbursement.
– 1/3 to Inventor(s)
– 2/9 to WHOI
– 2/9 to TRF
– 2/9 to the Department
The above breakdown can differ dependent on inventor involvement in the company. Royalties are disbursed twice per year, generally in June and December. Please read the WHOI IP Policy for more details