Protecting Your Discoveries
There are many things to consider when protecting your technologies. Some commonly asked questions are below:
Should I patent or publish?
These options are not mutually exclusive- the Inventor can publish AND patent without losing any patent rights. Remember, a patent provides you with the right to make, use and sell the product and/or services. The decision on patenting is a business decision. Publishing is a scientific decision.
What are some of the potential disclosures?
- Technical presentations
- Posters sessions
- Other informational and disseminating material
What standard forms and agreements might I need?
How is the Technology Transfer Office (TTO) structured?
Whom do I contact at Technology Transfer with questions about inventions or intellectual property?
Questions can be directed to the Director, Dr. Carlos Encinas and/or the Manager/Science Officer, Dr. Cristina Bertolotto. For contact information, please click here.
Why should I report an invention?
The TTO can assist in the commercialization of the invention. Commercialization can lead to benefits for everyone – the inventors, the Medical Center, businesses, and society.
Please click Marketing New Technology for more information.
How can I report an invention?
You will have to complete an Invention Disclosure Form . Please contact the TTO to initiate this process.
When should I report an invention?
It is recommended to report inventions to the TTO as soon as possible and certainly before submitting results and papers for publication and presentation. Reporting an invention to the TTO is a confidential process between the Medical Center and the inventors. Inventors should contact the TTO when they have questions or concerns regarding intellectual property protection and its commercialization; believe or suspect that they have developed a valuable invention or discovery; plan to release information about an invention they have created in a publication or through a presentation; or are identified as an inventor of a technology created at another institution or company.
Can I publish my work if I report an invention to the Technology Transfer Office?
While the TTO is reviewing your disclosure, you may be asked to temporarily delay publishing your work. Once an intellectual property strategy is identified and initiated, the TTO will advise the inventors on how to proceed.
How do I protect my invention against early disclosure?
The best way to protect against disclosure is by not sharing your research with anyone prior to intellectual property protection. This includes not only the methods and results, but also any statement about your future research plans. Please consult with the TTO prior to any disclosure.
What and who determines if an invention is patentable?
An invention is patentable is it is novel, not obvious to anyone who is considered skillful in the field of your invention, and has utility. Ultimately, it is the patent examiner in the patent office who will determine whether an invention sufficiently satisfies the above requirements and allows the patent to be issued.
Is there any guarantee my invention will be protected by at patent?
No. To be patentable, an invention must be novel, useful, non-obvious and of a suitable subject matter. However, an invention may still have commercial value even if it is not patentable.
Also, during the assessment, we might find prior art (i.e., other public information covering aspects of your findings) which may eliminate the possibility of filing for patent protection, or we may identify that the market is too small or too crowded to warrant the filing of a patent.
Who owns the patent?
For information on who owns a patent, please follow these links, Patent and Invention Policy for more information.
Who receives the licensing income from an invention?
After the Medical Center recovers its overhead cost and any third party costs incurred from the IP protection and marketing of the invention, the inventor(s) shall share 30% of the net licensing income and the Medical Center shall receive 70%.
What can the TTO do to help you as an inventor?
If, after the technology evaluation process, the Medical Center and the researcher decide to work together towards commercialization, the TTO will manage the commercialization process. Some specific activities of the TTO include:
- Counseling researchers on a wide variety of IP matters;
- Provide information to researchers on the technology transfer and commercialization processes, and assisting researchers in recognizing the commercial potential of the research
- Assisting researchers with the preparation of invention disclosures;
- Protecting the IP generated by the Medical Center’s researchers, and facilitating IP development;
- Promoting and marketing the opportunities for technology transfer to potential industry partners.
Please contact the Director, Dr. Carlos Encinas or the Manager/Science Officer, Dr. Cristina Bertolotto for information regarding intellectual property and commercialization.