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Expectations By University
1. Timeliness
We expect you to respond to our requests for information, technical details etc. in a timely manner. This is a collaborative process. We do poorly if sent a set of galley proofs with a cover sheet saying: “This is coming out in Monday’s PNAS”.
2. Candid disclosure
a) Technical issues
We expect you to be candid with us, in disclosing any prior publications, technical difficulties, prior art from others and so forth. Better to surface the issues now than during patent prosecution, or, even worse, after a license has been issued and a lot of money invested. Dispute resolution is painful, messy and expensive.
b) Scope and potential value
We expect you to be honest about the value of the technology. The technology transfer world is full of “Golden Garbage” stories – technology in which there appears to be little interest as long as the University is paying, but which mysteriously attracts a flock of suitors as soon as it is returned to the inventor. These stories may be mythical but this is not a culture that we want to see at Boston University.
c) All Contributors to Invention
It is critical that all inventors be disclosed and that there be no “courtesy” or “politically expedient” inventors be included on the invention disclosure form. Either can invalidate a patent. In particular, it is critical that everyone involved in the invention outside Boston University be identified at the outset so that we can obtain an assignment of their rights. We don’t want to pay for a patent filing and only later learn that there is someone who needs to be included on it who has no obligation to assign their interest to the University, so that we cannot grant exclusive rights. In particular you should focus on:
(1) Students
Students may not have signed the patent policy and not have a duty to assign their interest to the University. Students have to sign the patent policy to go on the student payroll.
(2) Collaborators at other Institutions
Collaborators at other institutions will have to assign to their own institution and it is important that we know about their existence so that we can negotiate an Inter-Institutional Agreement with that institution in which we agree who will manage patent prosecution and licensing, and how we and they will share in both the expenses and income from the invention.
d) Conflicts of Interest
We need to be informed of any conflicts of interest – e.g., if you are a member of the Scientific Advisory Board of a company and one of the company’s scientists is listed as a co-inventor and hence has an inside track to license the invention.
3. Co-operation
a) Patent protection and prosecution
We expect your cooperation and prompt responses during the preparation of the patent application and its subsequent prosecution. These requests for assistance may come from either us or the law firm we’re using.
b) Marketing
We expect your help in marketing the technology – helping us identify the uses for the invention, preparing materials to use in marketing and in identifying suitable prospects.
c) Maintaining the relationship
If a license is concluded, we will need you to play a major role in managing our relationship with the licensee. We expect you to tell us if technical issues emerge with the translation of the technology.
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