Overview
During the course of research at the Fred Hutchinson Cancer Research Center, inventions with commercial applications may be made. These inventions include new ways of diagnosing and treating cancer and other diseases and new research tools (see list of Technologies Available for Licensing). Since the center is a non-profit research organization, it cannot directly take these discoveries into commercial development. For this reason, the center transfers the rights in these discoveries through licensing to companies in order to see them reach the public as useful products.
The Technology Transfer Office (TTO) manages this transfer of intellectual property and proprietary materials developed at the center to companies and is responsible for all activities that contribute to technology commercialization and licensing. These activities include evaluating invention disclosures, reporting inventions to funding agencies, filing and managing patent applications, and negotiating licenses with companies that wish to develop products based on center inventions or other materials. In addition, the TTO staff reviews and prepares Material Transfer Agreements and facilitates and fosters collaborations with other organizations. Finally, the TTO handles copyright registration for written materials, computer programs, and videos for commercialization.
These activities provide the public with new and useful products, provide companies with access to new technologies, and generate revenue for the center. This revenue is used to fund additional research and is shared with the inventors of the technology.
Evaluation of Invention Disclosures
The TTO evaluates each invention disclosure on the basis of its state of development, the availability of intellectual property protection, commercial applications, marketability and whether the invention is amenable to commercialization/licensing. In addition to reviewing the written information provided by the inventors on the Invention Disclosure Form, a TTO manager will often meet with the inventors to discuss companies or laboratories that may be working in the same area, commercial applications and markets, references that may provide additional and useful information, and future work. Depending on the nature of the invention, a survey of the relevant scientific and patent literature may be carried out. Once the evaluation is complete, the TTO will decide what protection and marketing strategies to pursue. The strategy may include filing for patent, copyright, or trademark protection, or it may result in the retention of the invention as a unique, proprietary biological material. The inventor(s) is kept informed of the evaluation and the decision of the TTO.
Patents and Other Intellectual Property Protections
Intellectual Property protections come in a variety of forms including patents, copyrights, trademarks, trade secrets and proprietary materials. In general the protection strategies available to inventions and works made by center employees fall into four groups:
Marketing Technologies
If TTO decides to pursue licensing after its initial evaluation, the TTO will then contact appropriate companies to assess their potential interest in licensing the technology. In addition to companies identified through TTO's efforts, inventors can also be a good source of leads and often work successfully with the TTO to identify licensees.
Licensing Technologies
If the TTO identifies an appropriate licensing partner, a license agreement is negotiated and executed on behalf of the center. A license grants a company the right on an exclusive or non-exclusive basis to practice the invention. In exchange, the company agrees to provide financial and other considerations to the center. Such considerations may include license fees, annual payments, royalties based on product sales, reimbursement of patent expenses, and company stock. In addition to the financial terms, the agreements typically include reporting requirements and performance milestones. Because each technology and licensing situation is unique, the terms and conditions of each license agreement are negotiated on a case-by-case basis. According to the center's Patent and Invention Policy, the center shares any income received from a license agreement with the inventors.
Negotiating/Administering Material Transfer Agreements
The TTO assists the scientific staff in handling the exchange of materials (e.g. vectors, antibodies, cell lines) with investigators at other institutions or, in some cases, companies. The TTO prepares a Material Transfer Agreement when a scientist at the center receives a request for valuable research materials from an outside investigator. These agreements are intended to protect the center's ownership interest in the material, and contain provisions regarding the distribution and use of the material. Material Transfer Agreements are particularly important when sending reagents and other valuable material to for-profit organizations. In addition, the TTO reviews Material Transfer Agreements that accompany requests by center staff for materials from other institutions or companies. All Material Transfer Agreements must be signed by an authorized representative of the center, and therefore must be sent to the TTO for review and approval. If you have a question regarding Material Transfer Agreements or if you've received a Material Transfer Agreement from an institution or company, please contact the TTO.
Negotiating/Administering Confidentiality or Non-Disclosure Agreements
Confidentiality or Non-Disclosure Agreements are necessary when a center scientist wishes to share proprietary research information with an investigator(s) at another organization, particularly a for-profit entity. Non-Disclosure Agreements are intended to protect the center's ownership interest in such proprietary research information by containing terms and conditions designed to maintain its confidentiality. These agreements are often put in place when a company is interested in licensing a particular technology from the center. In this case, the NDA allows the center to provide a company with certain information relating to a technology in order for the company to evaluate whether it desires to seek a commercial license to the technology. Without an NDA, the recipient of the disclosed information could use or distribute the center's proprietary information for any purpose. If you have a question regarding Non-Disclosure Agreements or if you wish to enter into discussions with another party regarding proprietary research information, please contact the TTO.
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