Bring to Market

Inventor contacts Technology Development via web form, phone or e-mail or, if ready, submits an idea to Technology Development via Technology Disclosure Form.

Disclose Early, Disclose Often! It is never too early to discuss your ideas with us.

Our role is to help you develop both a strategy and a work plan to bring your ideas to market. If the concept is early (e.g., at the formative stages of ideation), then our office can help you identify the key milestones in the commercialization path that may help shape your work. If the concept is mature (e.g., reduced to practice and the killer application identified), then our office can help identify the best commercial collaborators in industry or from the entrepreneurial ecosystem and then help structure a formal relationship through IP licensing, sponsored research, or personal consulting.

The most important action is to connect you with experienced people that are knowledgeable about the relevant markets. We do this through networking, mentoring, and market research.

If your idea requires patent protection then it is important to note that any public disclosure of your idea will limit the patent rights. Below are some suggested guidelines for you to consider when deciding when to interact with our office.

To get the process started you can either complete the Technology Disclosure Form or contact us via phone or e-mail so that we can assign the idea to the proper person in our office.

Meet with your Case Manager

Schedule a meeting with the appropriate Case Manager based on the field of your invention. Use this meeting to develop strategy for commercialization.

• Together the idea is assessed to identify key actions that improve chances of success
• Key contacts are identified that can help with the assessment
• Key Contact: Domain specific case manager from our business development group

In subsequent meetings the Technology Development team will review any materials the PI provides. The Technology Development team can start the meeting with a brief introduction of Technology Development, our mission and the services we provide. It is usually helpful if the PI provides a 10 – 15 minute overview of the technology. The Technology Development team member will then ask questions from our Idea Index aimed at better understanding:

• the problem you are trying to solve,
• the solution (your technology),
• capabilities and resources of the research team,
• stage of development of the technology,
• potential scope of intellectual property rights, and
• commercial potential.

Idea Index

The Idea Index serves as a diagnostic list so that all aspects of the technology are discussed. It will also help us focus in on areas that need more information or action and help tease out which of Technology Development’s services are appropriate at this time. These services include:

• patent analysis and filing
• market research
• identifying translation funding opportunities
• mentoring
• licensing
• team building
• new venture support

Idea Index Questions

Problem/Solution

• What is the problem that you are solving?
• What is the solution?
• What is the current state of the art?
• How is your solution better/faster/cheaper (e.g. advantages)?

Innovator/Team

• What is the Innovator’s success in the field related to this idea?
• What are the Innovator’s established industry relationships?

Technical Merit

• What is the current stage of development of this technology?
• What needs to be done to move it forward along that development path to the next few milestones?
• Is there interest and available resources (time, funding, students) to do this?
• How does this approach compare with competing approaches?

IP

• What types of IP protection are available?
• Are domestic and foreign patent rights preserved (e.g. have any public disclosures been made, are any expected)?
• What is the known prior art?
• Are there any known freedom-to-operate issues?
• How difficult is it to detect infringement?

Commercial Potential

• What would the product be?
• Who is the customer?
• Who is the end user?
• Is this invention a stand-alone platform or one component among many needed?
• What is the pain point? How much does industry need this?
• Market size?
• Potential Licensees?
• Is there a champion at a potential licensee?
• Willingness of industry to license?
• Regulatory hurdles?
• Time to market?

If Technology Development is going to invest time and money into commercialization of a technology then we ask that the research team be committed to meeting certain milestones. Those milestones are meant to de-risk the technology and should correspond with the timing of certain events in the patent process that require additional financial support.

If a project requires patent analysis and/or filing then the Technology Development team member will request that the PI complete a more throughout disclosure, the Technology Disclosure Form.

Inventor and Technology Development Staff work together to complete specific actions such as:

• Technology Development initiates patent filings or research (per strategy)
• Together the applications and markets for the idea are researched (per strategy)
• Together the idea is marketed to specific targets or new venture creation is considered
• Key Contact: Domain specific case manager from our business development group

Together the licensee is selected and the terms of the agreement are formulated

• Technology Development decides the proper form of agreement [e.g. startup license agreement]
• Together diligence is performed to ensure compliance with university policies
• Key Contact: Executive Director of Intellectual Property and Licensing
• Case manager from our business development group regarding interaction with the licensee
• Director from our intellectual property and licensing group regarding drafting of agreements

Technology Development monitors Licensee’s compliance with the agreement including achievement of milestones, product development, payment of royalties etc.

• Distribution of income (if any) from royalty payments
• Patent maintenance (coordinating patent management with Licensee)
• Key Contact: Director, Administration and Finance

If you believe you have made a useful invention, you should first complete a Technology Disclosure Form. Completing the short form will initiate the idea/invention evaluation and counseling process. Shortly after we receive your idea, one of our professionals will contact you to discuss next steps. In some cases, the next step will be to provide our office with a comprehensive disclosure of the invention so that we can better evaluate its patentability and/or initiate the patent drafting and filing process.

The TDF form is a fillable PDF. In addition to a comprehensive description of the invention, the TDF collects pertinent information on inventors, critical dates, addresses, citizenship, e-mail contact information, materials, publication, references, etc. that Technology Development will need as the patent application process progresses.

Of particular importance is the box for the funding information. If your invention resulted from activities funded by a federal grant, foundation/gift, or by an industry support, there may be certain obligations of disclosure and reporting that we will need to follow, so please ensure that this information is accurate. If internal funds were involved, please describe them. If no federal, industrial, foundation/gift, or internal funding was involved, please check the appropriate box in the TDF.

The other critical piece of information on this form is the “Date of First Public Disclosure”. Generally speaking, in all countries of the world (including the United States as of March 16, 2013) a patent application must be filed prior to any public disclosure that is sufficiently detailed enough to allow someone “ordinarily skilled in the art” (e.g., another scientist with the right background) to practice your invention. Private discussions within your laboratory group or with your collaborators won’t necessarily constitute a public disclosure, but anything that a member of the public could attend – such as an advertised talk, poster session or seminar – may constitute public disclosure. If you have disclosed the invention publicly, we may still be able to obtain some form of US patent protection but not if others have also referred to or improved upon what you’ve disclosed publicly so time is of the essence and the scope of what can be claimed may be severely impacted by any similar disclosure by others prior to the filing date of a patent application. Accordingly, we recommend filing a high quality patent application prior to any public disclosure of your invention.

We will need a written description of your invention. Many invention disclosures our office receives are driven by a grant submission or by an impending publication, so often, the a manuscript, or a grant application, can provide the necessary written description. The content of these documents can be referred to, as appropriate, when completing the TDF rather than retyping the information into the TDF. Indeed, large portions of these documents are often incorporated into the patent application. Therefore, in order to better facilitate patent drafting, we ask that you please submit these documents in a form that facilitates ease of drafting such as a WORD or POWERPOINT document rather than a PDF. These documents can be submitted as attachments to the e-mail described below that sends the TDF to our FORMS Inbox. If the attachments to the email exceed the allowable size limit, the attachments can be separately sent to our FORMS Inbox at: otdforms@bu.edu.

Because it is a fillable PDF form, all fields of the TDF will need to completed. It is also critical that you use ADOBE READER as your default program to edit the fillable PDF. If the TDF requests an answer but there is no proper answer, please just type in “Not Applicable”. You can also refer to attachment documents that you’ll submit with the TDF by simply typing “See attachment”. You can also answer a question by typing a reference to another section (e.g. “See Section 5, above”) if appropriate. Again, all fields need to have an answer for the form to be complete.

When the form is complete, you can hit the SUBMIT button at the end of the TDF form and it will create an e-mail to which the completed form is attached. We recommend that you save a copy of the form on your local drive before hitting the SUBMIT button. If the form is not complete (i.e. all of the fields that require input do not contain at least some typed content), you will be prompted to complete the sections of the form that require an answer (they will be highlighted in pink). Please complete all of the unanswered questions and then hit SUBMIT again. The e-mail to which the completed form is attached will be automatically generated. When you send the e-mail, it will be directed to our FORMs Inbox for processing by Technology Development. Technology Development will review the form and if it appears to be in good order, we’ll send it back to all the inventors (directed to their e-mail addresses as captured in the TDF) and the designated witness using an Adobe product called EchoSign to collect electronic/digital signatures. When the document has been signed by all inventors and a witness, you will receive a copy from EchoSign for your records and the TDF submission will be complete.

Finally, if any of the Inventors have not signed a copy of the updated BUMC Patent Policy or the Charles River Campus Patent Policy, you will be contacted to complete this form. If you know that you have not submitted this form to our office we would much appreciate if you could do that now. You use the hyperlinks above to obtain the correct form and you can submit a PDF of the signed form to our FORMS Inbox at: otdforms@bu.edu.

Grants, and in particular federal grants, are the life blood of university research. Work performed under a funded grant can lead to innovation and associated intellectual property (e.g. patents, copyrights, trade secrets and know-how). However, care should be taken in the preparation of grant applications and grant proposals to avoid, particularly with respect to patents, unwanted and/or unnecessary public disclosure.

An invention is not patentable in the US if it has been described in a printed publication or otherwise known to the public more than one year prior to the filing date of the patent application. In most foreign countries, the right to obtain a patent is lost immediately upon the first public disclosure. To be an invalidating reference, the document (when viewed alone or in combination with other available references) must be sufficiently clear and enabling to permit one of ordinary skill in the art to practice the invention. For these reasons, care should be exercised when drafting documents for submission as a grant application or proposal.

For these reasons, you should be aware that the National Institutes of Health (NIH) places information about awarded grants, including project title, name of the PD/PI, and the project description on the RePORT Web site. Moreover, when your grant is funded, the Abstract will appear in various databases of Federally Funded grants; for example:

• The National Institutes of Health (NIH) maintains the CRISP Database;
• The National Technical Information Service (NTIS) maintains the Federal Research In Progress (FEDRIP) Database which contains information on grants from 12 agencies (including NIH).

Therefore, you want to be certain that your Abstract must not contain an enabling disclosure of your proposed work that may lead to, or itself describe, an invention. You should also be aware that one court (E.I. du Pont de Nemours & Co. v. Cetus Corp., 19 USPQ 2d 1174 (N.D. CA 1990) has held that since a copy of the entire grant proposal was available upon request under the Freedom of Information Act (FOIA), the grant application was a printed publication accessible to the relevant public prior to one year before the date of application for patent in the US, and hence was prior art within the meaning of 35 U.S.C. 102(b).

For these reasons, we at Technology Development, and generally the federal funding agencies will discourage the disclosure of proprietary or patentable subject matter. Generally you should avoid such disclosures in the grant application unless it is believed that they are necessary to sufficiently describe the research to thereby secure the desired funding. Under these circumstances, you should attempt to work within the exceptions to FOIA disclosure requirements.

To avail yourself of certain exceptions to agency disclosure of grant documents under FOIA, you can submit proprietary information in the technical plan of the grant application in a separate section and include as a header on each page the following words:
Confidential and Proprietary Business Information.

Please note that since each agency provides specific procedures for identifying proprietary information included in a grant proposal, or pages of a proposal, you should carefully follow the agency procedures at the time of submission of the application, as provided in the application guide.

For example, the NIH Grants Policy Statement addresses the “Availability and Confidentiality of Information” (including a discussion of FIOA) in Section 2.3.11 and the accompanying subsections. See: https://grants.nih.gov/grants/policy/nihgps_2012/nihgps_ch2.htm#info_availability_confidentiality

If you have a question about how to proceed with regard to a potentially patentable technology and a grant application, you can contact Technology Development.

Technology Development will generally make a decision on filing only after completion of its evaluation.

Patent Filing Principles

Provisional patent filings:
The Purpose of the US Provisional Patent Application is to establish a date certain (a ”priority date”) for disclosure of the invention (the patent specification) to the USPTO, against which the invention is examined in view of all prior public disclosures in the field of the invention (the “prior art”).

• If a particular invention disclosure passes the criteria for a non-provisional application (described below) then a provisional application with a full specification will be drafted with the assistance of outside counsel.
• US Provisional Patent Application filings are typically reserved for invention disclosures that have been fully described and enabled by the Inventor(s) and fully assessed by the Technology Development Office (OTD).
• For invention disclosures, wherein public disclosure is imminent, and the technology is of clear significant importance, OTD may authorize the filing of a “coversheet” US Provisional Patent Application, in an effort to avoid the undesirable loss of potential patent rights.

Non-provisional filings:
Non-Provisional Patent Applications, are patent applications that undergo substantive examination by a patent office, and can mature to issued patents that grant exclusive rights, which are defined by the issued patent claims. All Non-Provisional Patent Applications must be filed within a year of the filing of a US Provisional Patent Application in order to claim the benefit of that application’s priority date.

• The number of non-provisional patent applications that OTD is able to file in a given fiscal year, inherently, is limited by the OTD budget, and the current patent prosecution burden on that budget.
• OTD endeavors to manage the number of Non-Provisional Patent Applications filed to comply with budgetary constraints.
• In the event OTD is unable to file a Non-Provisional Patent Application on any given invention disclosure, OTD will work with the Inventor(s) either, to seek alternative funding for the patent filing, or, when possible, to enable the Inventor(s) to file for patent protection on her/his/their own.
• The ultimate objective for the filing of Non-Provisional Patent Applications is to move the technology into the commercial market for the betterment of society. Several factors are considered in making this determination, including:
• Expected patent claims should have reasonable probability of being issued (e.g., clear novelty and non-obviousness, based on prior art searches).
• OTD target metric is to have 90% of its Non-Provisional Patent Applications mature to allowance.
• The “strength” (patent claim scope and breadth) of any issued patent should be sufficient to motivate licensing, or financed start-up activities (Exceptions may apply for narrowly-issued patent claims that are part of a larger patent portfolio strategy with a clear licensing or financed start-up strategy).
• OTD target metric is to have 50% of its active patent portfolio under license.

Ex-US patent filings:
Ex-US patent filings are expensive and cannot be covered by the OTD budget.

• Potential Ex-US patent rights are reserved for as long as legally possible (typically 30-31 months from the priority date), to maximize the opportunity and probability for potential license or financed start-up activities.
• In rare instances, OTD may proceed with Ex-US patent filing if the protectable technology is deemed extraordinary, if the patents are licensed and costs are reimbursed by the licensee or licensing is imminent.

Fact: Most leads/commercial interest in a university-based invention result from the inventor’s activity!
 

That’s right—your publications, posters, podium talks, conference attendance, consulting work, and networking generate the most interest from commercial parties. It makes sense—you are an expert in your field and your network of past graduate students, academic colleagues, and industry connections are very influential in the process of marketing your invention.

Our goal is to increase your reach by extending your network. This is captured in the first part of our motto – “Maximize Collisions” – which means; connect you to as many relevant people in the market as possible. We do this in the following way:

• Develop a strategy for commercializing your idea. The primary paths to market are either through a start-up company or licensing to an existing company. A proper strategy will help determine the correct path but also describe the steps necessary to successfully commercialize. This is a critical step because it helps us determine the best type of people to add to your network.
• We work with you on a targeted marketing plan. This usually includes a list of specific companies, entrepreneurs, investors, foundations, or other parties that can be helpful in executing your strategy. To communicate your ideas, we work with you to produce a one-page marketing flyer and a short slide deck that conveys the business value-proposition. In some cases, we extend beyond the targeted list and try to drive interest by participating in technology conferences or industry conferences that are specific to your field.

If you are committed to commercializing your idea, then we strongly encourage you to get more involved with the relevant industry. This should include attending and presenting at conferences that are industry-centric and beyond your normal academic conferences, publishing in industry journals, consulting, or taking board seats on start-up companies. All of these activities will help extend your network and identify key people that can help drive your ideas forward.

If this is new to you – no problem. Our office is here to help you get connected to the marketplace and move your ideas forward.

Relationships lead to trust. Trust leads to sharing. Sharing leads to progress.
 
How many “trusting relationships” do you have with people in industry or the entrepreneurial ecosystem?
 
Think of your most productive academic collaborations. One key element is the free flow of ideas that allow each participant to build off of each other’s expertise to solve challenging problems. Working with industry or start-ups is very similar. The key difference is that the problem you are trying to solve is not purely technical/scientific – rather you are trying to fill an unmet need in the marketplace with a new product or service. This requires collaboration with people that have a different set of skills (market research, business, etc.), but the hallmarks of a successful collaboration are the same – open, honest communication, respect for each other’s skills, and focus on a common goal.
 

To be successful commercializing your idea, it is critical to create trusting relationships with the people that will collaborate with you to move your ideas forward. This requires time—mostly to invest in making the relationship work – but if done properly, it will make all the difference.

How to get started?

If you feel that you have no connections in the proper field—that is probably not true. If you think hard enough you are bound to come up with a classmate, relative, or friend of a friend. Social networking tools are very helpful in this regard. It is very helpful to start with someone you know or that is within one or two degrees of separation because the trust is built into the network of common connections.
 
At Technology Development we work hard at building a strong network of industry representatives and entrepreneurs. We can help you get connected through our personal connections, database, and mentoring program.

Formalizing the Relationship

Once the proper “champions” are identified through networking, then we can work with you to help formalize the relationship. This can take several forms. If you are working with industry then the relationship may be formalized through a Sponsored Research Agreement, Material Transfer Agreement, or License to the Intellectual Property. If you are working to create a new company then the relationship may be formalized through company formation, Equity Agreements, and a business strategy the defines the roles of each participant. The Technology Development staff can help you navigate this process and recommend actions and timing of those actions that are consistent with the overall strategy.

Trademarks and Service Marks are branding vehicles. A Trademark can be a word, a name, a symbol, a sound, a color or a combination of two or more of the foregoing that are associated with a good or goods (e.g. a product or products). A Service Mark can be a word, a name, a symbol, a sound, a color, or a combination of the foregoing that are associated with a service.
 
In the United States, a Trademark and Service Mark is generally protected under both state and federal law. Unlike patents and copyrights, a trademark is not exclusively subject to federal jurisdiction. Indeed trademarks are territory-based. One acquires a trademark or service mark right simply by using the Trademark or Service Mark in association with a good or service (as appropriate) within a given territory. No registration is needed to acquire this right. However, like copyright enforcement, often a registration is needed to enforce a Trademark or Service Mark.
 
Alternatively, filing an application for registration of a Trademark or Service Mark with the United States Patent and Trademark Office (“USPTO”) will reserve the Trademark or Service Mark within the entire United States (assuming you are the first to file for the registration and the Trademark or Service Mark otherwise qualifies for registration). Because the United States government solely regulates commerce between states, it is a prerequisite of filing with the USPTO that the Trademark or Service Mark owner either does, or intends to, use the mark within interstate commerce.
 
The Trademark or Service Mark owner, through time, develops a connection in the mind of its customers about the quality and characteristics of its products and/or services. Perhaps somewhat surprisingly, the laws surrounding Trademarks and Service Marks are intended to protect consumers (not the owner) based upon public policy concerns from confusion caused by those who would seek to copy the Trademark or Service Mark of another. Generally the test of infringement is whether or not the other parties Trademark or Service Mark is “confusingly similar” to the original Trademark or Service Mark.

Trademarks and Service Marks, unlike patents, can be retained indefinitely. The caveat is that the Trademark or Service Mark owner must continue to use the Trademark or Service Mark and periodically pay registration fees associated with maintaining the Trademark or Service Mark with any local, state or federal registration agency.

At Boston University, the Office of General Counsel handles the registration of all University owned trademarks.

The technical knowledge and skill required to perform a task is referred to as “know-how”. Hence, “know-how” is distinct from patents, copyright, and trademarks. Know-how can, in certain circumstances, be a trade secret if it is maintained as a secret.
 
Know-how generally resides with certain individuals and therefore can sometimes be difficult to transfer to third parties. In some cases, the individual does not even realize that he/she possesses certain “know-how” (i.e. unique knowledge or skill) that is essential for the successful practice of a process, an invention or a discovery. In some cases, the “know-how” can be identified and/or reduced to writing. In any case, the value of the “know-how” lies in its unique character that is not easily discovered or understood and because the “know-how” is not generally known.
 
Because “know-how” generally resides in the individuals’ (often our faculty’s) mind and skillset, our office will generally try to avoid licensing “know-how” and if licensed, licensing of “know-how” is typically done on a non-exclusive basis. Exclusive licensing of “know-how” generally conflicts with the University’s mission of broadly disseminating knowledge and skill for the benefit of mankind as well as negatively impacts our faculty’s ability to conduct future research that might require use of said “know-how”.

“Know-how” that is not actively maintained as a trade secret is generally protected by contract and enforced in accordance with the terms of said contract. Trade secrets are discussed below.

A trade secret is any non-public information that is treated as a secret and that provides a person or entity with a competitive advantage. Trade secrets are generally not held by Universities given our mission to freely publish and disseminate knowledge and skill for the benefit of mankind. Trade Secrets also generally conflict with federal funding agencies mandate to broadly disseminate the results, data, and information that result from the work performed using the federal funds. Hence, the University will rarely hold or license a “trade secret”.
 
To be a “trade secret” the possessor of the secret must take reasonable steps to maintain the secret. A “trade secret” can be maintained for as long as it remains a secret. A “trade secret” is lost when the secret becomes publicly known (i.e. it is no longer a secret). If properly maintained as a secret, courts will enforce the rights of the “trade secret” owner, including by court order that prohibits those who improperly possess the secret (for example those who steal it despite the reasonable protective steps taken by the “trade secret” owner) from using or disclosing the “trade secret”.
 
Notwithstanding the foregoing, the following describe some situations where a “trade secret” can be compatible with University principles and federal funding requirements.
 

Biological Materials as a Trade Secret

Although in accordance with federal funding guidelines there is an obligation to make novel biological materials freely available to others so that they can replicate your work, some aspects can still be kept as a trade secret. For example, if you’ve created a useful antibody, you don’t have to give out the hybridoma; you only have to make the antibody available to the public. The hybridoma itself can be licensed to one or more companies.
 

Protecting Software as a Trade Secret

As a University, it is possible to only make available the compiled version of software to collaborators and not the source code. The source code can be a form of a trade secret.

It is also possible to patent certain aspects of software because the source code, object code, procedures, and documentation can be associated with the operation of the computer, its performance, or the production of an output by the computer.

However, most often, software (primarily the source code) is protected via copyright as an original work of authorship that has been reduced to a fixed form.

Under the Semiconductor Chip Protection Act (“SCPA”), the owner of certain kinds of original mask works (as defined by the SCPA) has exclusive rights in that work. Mask works include the predetermined, three-dimensional images or patterns formed on or in the layers of metallic, insulating, or semiconductor material and fixed in a semiconductor chip. The owner’s exclusive rights include the right to reproduce the mask work, to import or distribute a semiconductor chip in which the mask work is embodied, and to authorize others to do any of these acts.
 
The identity of the owner of a mask work depends on the particular facts and circumstances surrounding creation of the work. The owner may be

• the person who created the mask work,
• an employer, where an employee has created the mask work within the scope of a his/her employment, or
• a party to whom all the rights of such person or employer are transferred in accordance with statutory requirements.

Protection for a mask work commences on the earlier of: (1) the date the mask work is registered with the Copyright Office as required by the SCPA, or (2) the date the mask work is first commercially exploited anywhere in the world. Protection of a mask work lasts for 10 years (terminating at the end of the calendar year in which it would otherwise expire). To secure protection of a mask work for the entire 10-year term, owners must apply to register their mask works with the Copyright Office within two years of the date on which the mask work is first commercially exploited. Failure to register within the proscribed period will terminate protection of the mask work under the SCPA. Although administered by the US Copyright Office, protection for mask works is not copyright protection.

As mentioned above, protection under the SCPA extends to the three-dimensional images or patterns formed on or in the layers of metallic, insulating or semiconductor material and fixed in a semiconductor chip. Protection under the SCPA does not extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery associated with a mask work. Although not protected by the SCPA, these discoveries may be the subject of patent protection.

Please contact Technology Development if you believe there may be a commercial opportunity for a mask work in which Boston University has an interest.

For more information on mask works, you can visit the US Copyright Office website, which includes Circular 100, titled “Federal Statutory Protection for Mask Works.”