Consult with the Technology Transfer Office at your institution for specific information.

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Contents

• General information on Technology Transfer
• Material Transfer Agreements
• Confidentiality Agreements
• Patenting and licensing
• Conflicts of Interest
• Additional Resources

General information on Technology Transfer

Technology transfer encompasses all aspects of the conveyance of scientific knowledge between two sources, from confidentiality agreements to patents and licensing.  The following web site has a 40-minute training course that serves as a good introduction to technology transfer.

NIH On Line Technology Transfer Training
http://tttraining.od.nih.gov/

The NIH Office of Technology Transfer oversees technology transfer policy for the NIH, the FDA, CDC and AHRQ. For information about technology transfer from the NIH perspective, including instructions for grantees, see the web site for the NIH Office of Technology Transfer: http://ott.od.nih.gov/

The web site for extramural Technology Transfer is: http://ott.od.nih.gov/NewPages/xtramrl.html

The Council for Government Relations (COGR) has downloadable pdf documents on technology transfer in U.S. universities, intellectual property, materials transfer and other issues: http://www.cogr.edu/

Material Transfer Agreements

Many institutions require signature of a material transfer agreement before exchange of materials, even when the investigators are at non-profit organizations.  Contact the office of technology transfer or its equivalent at your institution to determine its policies concerning materials transfer.

Many institutions have adopted the following master agreement for transfer of materials between non-commercial entities.

Uniform Biological Material Transfer Agreement ("UBMTA")
http://ott.od.nih.gov/NewPages/UBMTA.pdf

If an institution has not adopted the UBMTA, it may utilize the:

Simple Letter Agreement for the Transfer of Materials
http://ott.od.nih.gov/NewPages/SimplLtrAgr.pdf

Material Transfer Agreements involving commercial entities are often more complicated. The following site is intended to assist recipients of NIH Research Grants and Contracts in ensuring that sponsored research agreements with commercial entities comply with the requirements of the Bayh-Dole Act and NIH funding agreements.  http://ott.od.nih.gov/NewPages/text-com.htm

For a discussion of some of the difficulties that can be encountered in MTA’s, see:

Material Transfer Agreements (Why are they so Difficult?)
http://www.techtransfer.harvard.edu/News98_MTA.html

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Confidentiality Agreements

Sharing of information with or between non-commercial and commercial organizations often involves establishment of a confidentiality (non-disclosure) agreement to protect intellectual property rights of the parties and to preserve patent rights.  This site run by the Wisconsin Alumni Research Foundation (WARF) provides short standard one-way and mutual confidential disclosure agreements along with explanations of when to use each.http://www.warf.ws/forresearchers/index.jsp?catid=5

Sample Confidentiality Agreement used by Baylor College of Medicine http://research.bcm.tmc.edu/OTA/cda2.pdf

Sample Confidentiality Agreement used by Dartmouth College http://www.dartmouth.edu/admin/tto/pdfs/CDA.pdf

Patenting and licensing

At most institutions, the first step is filing of a “disclosure”, which is usually a brief description of the invention, the names of the inventors, who sponsored the work, advantages of and applications for the invention, any public disclosures or publications, and details of any identified relevant prior art.  After review of the disclosure, the institution may decide to pursue a patent on the invention or authorize the investigator to seek a patent on his/her own.

Patenting and licensing is often handled by the office of technology transfer or its equivalent for investigators at non-profit organizations.  One should contact the office at one’s institution to determine its policies.  The following web site provides information on practices that are often followed.

The web site for extramural Technology Transfer is: http://ott.od.nih.gov/NewPages/xtramrl.html

Information about how different institutions handle intellectual property, patenting and licensing are available from many of the web sites given above as well as on some of the institutional web sites listed at the end of this overview.

Research Corporation Technologies is a private enterprise that appraises the present commercial value of a technology and identifies risk factors that could affect its commercialization. This page provides useful “Tips for Inventors.” http://www.rctech.com/tips.htm

Special circumstances

Provisional Patents.  Inventors have the option of filing a low-cost provisional application for a patent which provides the means to establish an early effective filing date in a patent application.  This web site provides basic information about what is required. http://www.uspto.gov/web/offices/pac/doc/general/#provisional

A brochure on Provisional Application for Patent is available by calling the USPTO General Information Services at 1-800-786-9199 or 703-308-4357 or by accessing USPTO’s Web site at http://www.uspto.gov/.

Licensing without a patent.  There are instances where it may be preferable to grant a license without a patent. The NIH policy for allowing contractors and grantees to license biological materials on which the contractor elects not to file a patent application and which are  submitted to the NIH for review and possible election of government title under the Bayh-Dole Act can be found at: http://ott.od.nih.gov/NewPages/602-rev2.htm

Conflicts of Interest

Technology Transfer frequently raises issues related to Conflicts of Interest.  Check with your institution about policies designed to deal with these issues. Some general information is provided at the following sites:

PHS Technology Transfer Conflict of Interest  (COI) Guidelines were developed to assist Government employees involved in technology transfer activities to assess the appropriateness of their transfer-related activities. NIH encourages recipient institutions to review and consider this document as they develop their own internal COI policies. http://ott.od.nih.gov/NewPages/104-99.pdf

The Association of American Universities (AAU) Report of the Task Force on Research Accountability identifies ways in which institutions can help to insure that both individual and institutional conflicts of interest are identified and managed and includes Operating Guidelines.  http://www.aau.edu/research/COI.01.pdf

Additional Resources

What is the Bayh-Dole Act?

Research institutions are subject to the Bayh-Dole Act which authorizes universities and other nonprofit institutions to apply for patents on research results that were developed with federal funds. The Act provides that the institution may elect to retain title to inventions conceived or first reduced to practice in the performance of work under a federal funding agreement.  The institution must disclose each invention to the government sponsor in a timely manner, and comply with other regulatory actions.  For more information see the COGR web site for a downloadable pdf summarizing the Bayh-Dole Act:  http://www.cogr.edu/

Massachusetts General Hospital Office of Corporate Sponsored Research provides some basic, straightforward information regarding patent information, copyright, start-ups, etc. (much of the site was under construction when accessed.) http://techtransfer.massgeneral.org/csrl/investigators/patent.asp

US Patent & Trademark Office
http://www.uspto.gov/

Publications by the National Academy on intellectual property, technology transfer and other subject can be obtained from their website:
http://ip.nationalacademies.org/

Web sites for additional information and examples of how policies are similar/different at other institutions.

Information about policies at various institutions (compiled by the Association of University Technology Managers).

Sample Agreements Listing Adapted from AUTM

(Original version by Connie Armentrout; links Updated June 2003)

The universities listed below provide direct access to their sample agreements for your use and information.  Select a link in the table below to open these university web sites and document pages in another browser window. If you select multiple documents, several different browser windows will open to display these various documents.

Technology Transfer Offices Referenced