What is the role of the Technology Transfer Office?
The responsibility of the Technology Transfer Office is to identify, assess, protect, and assist researchers to market commercially viable intellectual property (IP) developed at Roswell Park. The Technology Transfer Office reviews intellectual property disclosures submitted by Roswell Park employees and initiates steps to protect the intellectual property rights in the discovery, including the filing of domestic and foreign patents, when appropriate. The Technology Transfer Office seeks, negotiates, manages, and monitors commercial licensing agreements. It also ensures compliance with certain government regulations.
How are Health Research Institute (HRI) and Roswell Park Cancer Institute related?
HRI administers grants and scientific research contracts and other funding agreements relative to the mission and objectives of Roswell Park Cancer Institute. HRI also performs similar functions for the Technology Transfer Department. HRI is also the assignee of all intellectual property developed at Roswell Park Cancer Institute.
Why disclose an invention or discovery to the Technology Transfer Office?
There are several reasons.
1) Disclosure to the Technology Transfer Office starts a process of protecting and commercializing the innovation which provides the greatest opportunity for the innovation to be used in practice for the public good.
(2) The same process provides the greatest opportunity for the innovation to generate revenue to be shared among for the innovator(s) themselves and the Institute.
(3) Empolyees of Roswell Park Cancer Institute are required (link) as a condition of employment or matriculation to disclose their inventions or discoveries.
Who is required to disclose an invention or discovery to the Technology Transfer Office?
According to policy (link), all Roswell Park employees, as a condition of employment, both while employed by the Institute and thereafter, and all graduate students performing research, shall report to the Technology Transfer Office any invention or discovery which they have conceived or developed, or which has been conceived or developed under their direction during their employment or enrollment. Even if you believe that you are not required to assign the intellectual property to the Roswell Park, you still must disclose it to the Technology Transfer Office.
What should I do when I have created intellectual property?
You should complete an new Technology Disclosure (NTD) form (link) as soon as possible and submit it to the Technology Transfer Office. The form asks questions including specifics about the innovation, important dates in the history of the innovation, the investigators involved, and any funding sources or other obligations.
When should I disclose an innovation to the Technology Transfer Office?
As soon as you believe you have created new intellectual property, and definitely before any public disclosure of the IP. Public disclosure of the innovation can prevent a patent from being granted, and without patent protection, companies are less likely to invest in turning the innovation into an actual product. Thus, public disclosure of the innovation (before protecting the IP) can actually prevent it from being used for the public good.
Any disclosure of the IP outside your Roswell Park colleagues may be considered public disclosure. Examples include a published paper, a talk at a conference, or even a discussion with a colleague from another university or a company. The following events are all good times to consider whether you have IP to disclose to the Technology Transfer Office: drafting a paper to submit for publication, applying to speak in a public setting, writing a grant proposal, seeking or being invited for collaboration outside Roswell Park. If possible, disclose the IP to the Technology Transfer Office at least two months before any public disclosure of the innovation, so there is time for the Technology Transfer Office to evaluate the IP and file for patent protection if warranted.
The requirement for IP disclosure must not impede the course of research at the Institute, but early disclosure to the Technology Transfer Office can ensure that the benefits of patent protection are retained without any negative impact on the course of academic research. Feel free to call the Technology Transfer Office (845-3010) to discuss whether it is the right time to submit an ID on your research.
Who owns the intellectual property created?
Intellectual property must be assigned to HRI, giving HRI ownership, if it meets any of the following criteria:
(1) it is the result of research carried on by or under the direction of any employee of the Institute and/or having the costs thereof paid from Institutional funds or from funds under the control of or administered by the Institute, or
(2) it is made by an employee of the Institute and which relates to the inventor's field of work at the Institute, or
(3) it has been developed in whole or in part by the utilization of resources or facilities belonging to the Institute.
Roswell Park and HRI employees and graduate students are required to follow this policy as a condition of employment or matriculation. The Technology Transfer Office will evaluate each individual innovation to determine whether it must be assigned to the HRI under this policy.
What happens once the intellectual property has been disclosed?
The Technology Transfer Office reviews the innovation and investigates the patentability and possible commercial benefits of the innovation. Normally, this process starts with a meeting between the Technology Transfer Office and the primary investigator of the innovation (link)
If the Technology Transfer Office chooses not to pursue protection or commercialization of the innovation, the Technology Transfer Office may negotiate and assignment of the innovation back to the innovator.
How does the patent process work?
If the Technology Transfer Office pursues patent rights covering an innovation, it will choose a patent attorney who will work with the primary innovator to draft and file an appropriate patent application (link). The involvement of the innovator is crucial to this process, as the commercial value of the IP is directly related to the accuracy and generality of the patent claims. Since patent applications are expensive, the Technology Transfer Office does not immediately patent every innovation that is disclosed
Once a U.S. patent application has been filed, in parallel with prosecuting the U.S. patent the Technology Transfer Office must decide whether to invest in seeking foreign patents. As with the U.S. application, this decision will be made weighing the cost of these applications versus the possible benefits, and there are delaying tactics available (notably the Patent Cooperation Treaty, or PCT) which can delay the expense of filing applications while preserving priority dates.
How does the license process work?
If the Technology Transfer Office pursues licensing of the IP, the Technology Transfer Office will seek organizations that may be interested in licensing the IP. In some cases, the innovator has identified the companies (and even individuals within the companies) most likely to license this technology. In other cases, the Technology Transfer Office researches companies in the field and markets directly to them through direct marketing, third party marketing contracts, or other methods.
Once one or more interested companies are identified, the Technology Transfer Office negotiates license agreements. This can be an involved process, as there are issues of exclusivity, cost, and payment terms, among others.
Once a license agreement is signed, the Technology Transfer Office monitors this agreement for compliance, distributes revenue received per Institute policy, and (if the agreement is non-exclusive) may seek other license agreements.
If no license agreements are reached, the Technology Transfer Office may eventually decide to delay further licensing efforts or to negotiate an assignment of the IP back to the innovator(s).
How long will it take to patent my innovation?
Although timelines for each innovation will vary based on a number of factors, the following outlines the typical process. The initial meeting between the innovator and the Technology Transfer Office will generally take place within one to two weeks. Next, a preliminary phase of market research and patentability study may take place. Assuming that this study indicates that patent protection and technology marketing is warranted at this time, it will take about four to eight more weeks to file a provisional patent application. After filing, communications go between the Technology Transfer Office, its patent attorney, and the U.S. Patent and Trademark office periodically, but it may be several years before the patent is granted or denied.
In sum, even though the Technology Transfer Office, like you, wants to protect and commercialize your innovation as soon as possible, the process does take time. We encourage you to participate (on the patent front) in carefully reviewing and editing the patent application draft, and (on the marketing front) in working with the Technology Transfer Office and keeping them informed if you become aware of new marketing opportunities. We highly encourage researchers to attend poster sessions as these have proved highly efficient in marketing technologies to interested commercial companies. We, in turn, will keep you informed of the status of patent applications and commercialization opportunities.
How is revenue from any commercial licensing of RPCI innovations distributed?
License revenues received are distributed quarterly by the Technology Transfer Office. The RPCI inventor or co-inventors receive 40% of licensing revenues after deduction of expenses such as patenting costs.
If there are multiple inventors involved, the distributed funds are allocated to the inventors according to the Revenue Distribution Agreement entered into by the co-inventors.
May I, as the inventor, commercialize the intellectual property myself through a startup company?
Roswell Park encourages start-up company formation and has the Committee to Oversee Employee Affiliated Companies (COREAC) and a policy (link) to address issues associated with employee owned start-up companies to ensure the process moves forward smoothly.
The Technology Transfer Office negotiates license agreements with employee owned start-up companies but must also compare the potential benefits to the public and the Institute of licensing to the start-up company versus licensing to an established company.
As part of the process the Technology Transfer Office will consider your business plan, your management team, your funding, and the current economic environment for startups, for example, as it considers whether licensing to your company is the best decision for Roswell Park. Note that there are many costs of starting a company. As just one example, the Roswell Park license agreements generally obligate the licensee to pay all patent costs, which alone may cost your company $15,000 per patent in the first year of patent prosecution. You must also consider possible conflicts of interest (link) with your Roswell Park employment. Startup funding may be available through the Technology Transfer Office.
What does the Technology Transfer Office do to comply with government regulations?
The Technology Transfer Office reports to NIH and other government agencies about certain events in the life of any IP generated using funding from that agency. These events include the filing of an intellectual property disclosure, the granting of a patent, and revenue gained by licensing the IP. If the Technology Transfer Office decides not to pursue the commercialization of an innovation funded by a government agency, it waives the IP to that agency and, if requested, assists the innovator in his/her petition to obtain IP rights to innovation from the specific government agency.
Does the Technology Transfer Officeever release IP ownership to the innovator or anyone else?
Yes. If the Technology Transfer Office determines that it has no plans to pursue patenting or commercialization of an innovation, it pursues the release of the IP. If the research was funded by a government agency (NIH is a common example), and the innovator wishes to obtain rights to their IP, the innovator may contact the Technology Transfer Office who will in turn notify the federal government agency of the request. The Technology Transfer Office will then assist the innovator with the necessary documentation.
If the research was not funded by a government agency, the Technology Transfer Office may negotiate an assignment of the IP to the innovator. The assignment agreement will usually provide some benefits to the Institute in the event of successful commercialization of the innovation; for example, the repayment of any patent expenses incurred, and/or a share in future revenue or equity.
Note, however, that improvements to the technology are not covered in the assignment agreements. Even after the release of an innovation that may have been deemed not commercially viable, Roswell Park innovators are required to disclose to the Technology Transfer Office any improvement they make to the technology, and this new IP will be governed by all the policies listed here.
What if the information on this site conflicts with official Institute policy?
Though we intend for this site to be accurate, official Institutional policies are the final word.
Where can I find more information?
United States Patent & Trademark Office : http://www.uspto.gov/
USPTO Patent Application Information Retrieval (PAIR) : http://portal.uspto.gov/external/portal/pair
The Association of University Technology Managers (AUTM) : http://www.autm.net/Home.htm
Entrepreneurship and Education at the Kauffman Foundation : http://www.kauffman.org/
Small Business Innovation Research Program (SBIR) and Small Business Technology Transfer Program (STTR) : http://www.sba.gov/aboutsba/sbaprograms/sbir/index.html
Health Research, Inc. Internal-RPCI website for office in Buffalo, NY : http://internal.roswellpark.org/document_5951_182.html
Patent Fetcher : http://free.patentfetcher.com/Patent-Fetcher-Form.php