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City of Hope Investigators

The Technology Transfer Process
Below is a general overview of how technology transfer occurs at City of Hope. Please contact us if you believe you may have a new invention, we are happy to set up a meeting to discuss your invention. If you have any questions about our technology transfer process, please contact us and we would be happy to discuss this process in more detail.
 
 
If any faculty or staff wishes to come and speak with the OTL about an idea, invention, or if you just have some questions, we will have an open hour with one of our team members in the coffee shop of the Beckman Research Building from 11:30am-12:00pm every Wednesday.

FAQs

Growing and protecting intellectual property at City of Hope

This section is intended to address frequently asked questions about City of Hope’s approach to handling intellectual property. If you have any questions after reading this section, please contact the Office of Technology Licensing.

Generating the best ideas, demonstrating them and protecting them

Research at City of Hope often leads to important innovations or discoveries. Many times these discoveries result in new inventions. These new inventions, while scientifically significant, may or may not be considered “inventive.” Identifying which discovery or innovation is also an invention and protecting them is the mission of the Office of Technology Licensing (OTL).
 

Who is covered by City of Hope's intellectual property policy?

Everyone. This includes all scientists and physicians, nurses, post-docs, students and others working at City of Hope including everyone engaged in medical, scientific, administrative or support work. Everyone is subject to the City of Hope Intellectual Property Agreement. Creation of any invention while working at City of Hope triggers three main obligations: Disclosure. Inventor's obligation to disclose to OTL any inventions; Cooperation. Inventor's obligation to cooperate with OTL in the protection of the invention, for example by a patent application(s); and Financial. City of Hope's obligation to share royalties/income with the inventor(s).

What is intellectual property and who owns intellectual property developed at City of Hope?

Intellectual property includes inventions of new products, materials, designs, processes, methods, techniques or algorithms, whether or not such inventions are actually patentable. Determination of whether City of Hope will apply for a patent or protect the invention in another manner is performed by OTL in consultation with the inventors. City of Hope owns intellectual property developed at City of Hope. City of Hope intellectual property includes inventions conceived by those employed by, or using resources owned by, City of Hope. This includes works that were developed under grants, sponsored research or other agreements, or using City of Hope funds or facilities. As City of Hope employees, inventors must formally give (assign) City of Hope the rights and ownership (title) to all inventions. Inventions made at any time or place, including inventions conceived or developed at home or on weekends, that are in anyway related to the field of work for which you were specifically hired for or is consistent with the mission of City of Hope are considered the property of City of Hope. This includes inventions conceived or developed at home or on weekends.

What is a patent?

A patent is a property right granted by the government to exclude others from making, using, selling or importing the invention in the country where the patent is issued. Companies wishing to practice a patented City of Hope invention should seek a license from City of Hope to obtain suitable rights.

What can be patented?

How many types of patents are there? There are three types of patents: utility patents, design patents and plant patents. City of Hope inventions are primarily protected as utility patents. Utility patents are granted for any new material, method, machine, manufacturing process or improvements to any existing inventions of these types. At City of Hope, examples of patentable inventions include new molecules, methods of synthesis, methods of use, assays, gene associations, protein interactions, screening methods, computer algorithms, medical devices and drug formulations, etc.

What makes an invention patentable?

Novel - The invention must be a novel or new idea. An invention cannot be patented in the United States if it has been described in a printed publication, has been in public use or offered for sale in the U.S. for more than one year before a patent application is filed. An invention cannot be patented in any foreign country if it was described in a printed publication, or has been in public use at any time prior to submitting a patent application. Non-obvious - The invention should not be obvious to a person having ordinary skill in the area of technology at the time the invention was made. For example, the substitution of one material for another is not patentable unless there is an unexpected effect. Useful - The invention must have some useful effect or a purpose. Enabled - The invention must be clearly described so that a person of ordinary skill in the art can make and use the invention. Occasionally this means demonstration of activity in an animal model or human clinical trial.

Who are inventors?

An inventor is a person who contributed to the creative spark - the conception - of an invention. In some cases inventorship may require an intricate legal determination by City of Hope's patent attorney who is handling the case. A person who contributed only labor and/or the supervision of routine techniques, but who did not contribute to the idea, is not considered an inventor. Inventorship is determined in accordance with U.S. patent law. The criteria for inventorship are different from that of authorship.

Are principal investigators always inventors?

Not necessarily. Inventorship comes from having, or meaningfully contributing to, the creative spark. However, inventions often arise from or through close mentoring and discussions with principal investigators (PI). So, provided they meet all the requirements of inventorship, PIs can be co-inventors.

What kind of notes should you keep on your invention?

Notes should be clear and legible. They should be dated and contain adequate details. Ideally a bound laboratory notebook should be used and pages should be dated and countersigned by your PI or another City of Hope employee who understands what is written.

When should you disclose your invention?

Ideally, you should disclose your invention to OTL after you have some evidence that it works but prior to any public disclosure. You should allow us at least 30 days prior to any public disclosure to insure there is adequate time to review and prepare a meaningful patent application. Public disclosures may include: Oral or poster presentation at a scientific conference, to a company or to a non-federal grant funding agency; Publication of a manuscript or abstract; or Sharing detailed information with researchers from other institutions.

How should you submit an invention disclosure?

Contact an OTL staff member to discuss your invention. Following discussion with OTL, you may be asked to submit an invention disclosure form to OTL. An invention disclosure should fully describe your invention and its relevance so that OTL can properly assess its patentability and commercial potential, and pursue patent protection if applicable.

Does every invention disclosed to the Office of Technology Licensing (OTL) result in a patent application?

No. The substantial expense of obtaining patent rights (roughly up to $25,000 for a U.S. patent and possibly over $100,000 for worldwide coverage) warrants critical examination of the commercial potential of each invention disclosure.

In which countries will City of Hope file a patent? What factors are used to make those decisions?

If OTL determines the invention has potential commercial value and is adequately supported by documentation from the inventors(s), City of Hope will initially file a provisional patent application in the United States. Within eight to nine months after filing the provisional application, OTL will ask you for additional data that you may have generated since filing the provisional application, and review whether there has been any commercial interest in the invention. A reassessment of commercial value and likelihood of allowance by the patent office will be made at that time and a decision whether to file a regular(non-provisional) U.S. patent application will be made. At that time, OTL will also assess whether to file patent application(s) in foreign countries. Filing in foreign countries is very expensive and is reserved only for intellectual property that is expected to result in significant income for City of Hope or which is about to enter testing in clinical trials or is licensed to third parties willing to bear the financial expense.

When will OTL start marketing the my invention?

As soon as possible, with your help. Your scientific contacts can be very useful to bring the technology to the attention of a company's decision makers. Your active involvement can dramatically improve the chances of success.

How can I assist OTL in marketing my invention?

With your active involvement, OTL staff will identify candidate companies that have the expertise and resources to bring the technology to the market. Please do not approach companies on your own - work with OTL. If companies approach you, take down their contact information, get a business card and contact OTL immediately. OTL will coordinate the relationship and put in place a confidentially agreement to ensure that any confidential information is preserved. You may be asked to participate in telephone calls or meetings with companies to help explain the invention and its potential merits. OTL staff will help prepare you for these discussions.

What is a license agreement?

A license agreement is a contract between a company and City of Hope to grant rights in the intellectual property to the company (licensee) in exchange for income for City of Hope. That income can include cash license fees and a percentage royalty on any future sales of products. A license agreement can be entered into with an established company or, under certain circumstances, with a new business venture (a start-up company). City of Hope seeks licensees that can demonstrate a clear and reasonable plan to make the technology broadly available in the marketplace. In every license agreement, City of Hope always retains the right to continue using the licensed intellectual property for internal research.

Can I take my invention with me when I leave City of Hope?

You should discuss with your PI and OTL about gaining access to the invention for your academic work at another location. However, the invention cannot be used for commercial purposes unless a license is obtained.

What do the inventors receive from a license agreement?

Under City of Hope's Intellectual Property policy, City of Hope shares income from license agreements with the relevant inventors. Inventors get a share of all licensing fees and royalties received by City of Hope. Please review the City of Hope Intellectual Property Policy and contact OTL for additional details.

Introduction to Intellectual Property

The US Patent and Trademark Office (USPTO) describes Intellectual Property (IP) as imagination made real; the ownership of a dream, an idea, an improvement, an emotion that we can touch, see, hear, and feel. It is an asset just like a home, your car, or your bank account.

Intellectual property rights are the ways by which OTL protect innovations. In academic settings, patents, copyrights and trademarks are the three major forms of intellectual property rights used to protect an invention. Trade secret is another form of intellectual property; however, it is not commonly found in open academic environments.
 
Patents
A patent is a set of exclusionary rights which allows the patent holder to exclude others from making, using, offering for sale or selling the invention in the country the patent was issued for a certain amount of time in exchange for the public disclosure of the invention. Three types of patents are granted in the United States, which are:
 
  1. Utility patents – new and useful process, machine, article of manufacture or composition of matter, or any new and useful improvement thereof;
  2. Design patents – new, original and ornamental design for an article of manufacture;
  3. Plant patents – asexually reproducing plants, any distinct and new variety of plant.

For a patent to be granted, a patent application is examined by the patent office for the invention’s novelty, usefulness, and non-obviousness. Patents are the most frequently used IP protection tool at the OTL and we file primarily utility patent applications. Patent prosecution often takes 3-5 years and costs about $30,000 to $50,000 for the prosecution of one US patent application. Foreign patent applications are filed very selectively as it accumulates costs 10 times that of a US application.
 
In an academic environment, patents can help the investigator protect their early stage inventions and garner interest from the industry to further develop or use a technology. We advise our inventors to notify us of any potential public disclosure of new research results, which may include publications, oral presentations, and communications with third parties. Any of these public disclosures may jeopardize some patent rights. Please contact us and we will help you devise a strategy to best protect any potential IP. We are not here to prevent publications, in fact we understand how critical publications are for scientists and with advance notice we can work in the background to protect the IP without any interference.
 
Copyrights
A copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. For example, a published journal article is copyrighted material, and most publishers require the purchase or subscription to the journal in order to obtain a paper.
 
Copyright protection is not as common at City of Hope, however, from time to time, we do receive inventions that may require copyright protection, including software, where the source code is considered copyrighted material. In addition some software may benefit from further patent protection of its utility and functions.
 
Trademarks and Service Marks
According to the USPTO, the simplest description for a trademark is that it is a brand name. A trademark includes any word, name, symbol, device, or any combination, used or intended to be used, in commerce to distinguish the goods of one manufacturer or seller from goods of another manufacturer or seller, and to identify the source of the goods. A service mark is any word, name, symbol, device, or any combination, used or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
 
For example, one of the most successful advertisements at City of Hope was the “Canswer” campaign, which in itself is a registered service mark with the USPTO. Trademarks and service marks do not protect or exclude others from selling a product but it prevents others from stealing the identity or brand a company has built upon a trademark or service mark.
 
Trade Secrets
Trade secrets consist of information and can include a formula, pattern, compilation, program, device, method, technique or process. To meet the most common definition of a trade secret, it must be used in business, and provides the holder of the trade secret to have an opportunity to obtain an economic advantage over competitors who do not know or use it. Trade secrets are very uncommon at academic institutions as it is part our mission to disseminate information. Sometimes we may receive trade secrets from a company that is interested in partnering. When that is the case, we have the obligation to maintain that trade secret.
 

Forms and Agreements

Confidential Disclosure Agreements
A Confidential Disclosure Agreement is a simple but very important contract that governs the sharing of confidential information between two parties. A CDA is often the first step prior to sharing of sensitive and unpublished information that enables in-depth analysis of a potential collaboration or business opportunity. Confidential information may include unpublished research results and data from City of Hope that will be disclosed to a potential partner, and vice-versa. Confidential information can include novel compound structures, biologics, processes, custom medias, sequences, and know-how.

The CDA defines how the receiving party will protect and use the confidential information. The sharing of information may be one-way, where only one party is disclosing confidential information or it can be mutual, where both parties are disclosing confidential information. CDAs are sometimes referred to as nondisclosure or secrecy agreements.

Please contact the OTL when an outside organization requests or provides a CDA. We will ensure the terms of the agreement are reasonable and acquire signatures from the necessary institutional representative.
 
Material Transfer Agreements
A Material Transfer Agreement is a contract that governs the transfer of tangible research materials between two organizations. Materials are often transferred between organizations for research. The MTA defines both the rights of the provider and recipient with respect to ownership and permissible use of the materials and of any derivatives that may result from the research. Materials most often transferred to and from City of Hope include research reagents such as, cell lines, plasmids, vectors, and mice. However, MTAs may also be used for other types of materials, such as chemical compounds and software.

OTL negotiates and executes hundreds of MTAs each year. We have developed efficient processes to handle all incoming and outgoing agreements quickly, especially when sending materials to other non-profit academic institutions. We have developed an expedited MTA form that takes onlya matter of days to complete. Not every institution or companyhas simple MTAs like we do, therefore, the more complex incoming materials may take a little longer to negotiate; our job is protect the interest of the researchers as well as City of Hope as an institution.

Please submit any requests for material transfers to mta@coh.org and a team member will guide you through the process to obtain a suitable MTA.
 
Research Collaboration Agreements
Research collaboration agreements between two academic institutions are generally straightforward contracts that formally memorialize research collaborations. The agreement typically describes the scope of the project and some of the duties of each party. The majority of the intellectual property that result from the collaborative effort will be jointly owned. Both institutions will work together to advance the technology. We encourage our researchers to collaborate with scientists from City of Hope as well as with other institutions because we understand high impact science often result from collective efforts. We are here to catalyze such collaboration by ensuring the terms of the collaboration agreements are fair to both parties.
 
Industry Sponsored Research Agreements
An industry sponsored research agreement is a contract between the City of Hope and a company that is funding research of interest to them. When a company has particular interest in an area of research, but does not have the relevantpesonnel, expertiseor resources to complete their own studies, they may provide funding and equipment to support a specific academic investigator’s efforts to perform the research of interest.

The majority of research funding at City of Hope is from federal grants, private and charitable organizations, and City of Hope internal research funding. For matters related to the federally sponsored (NIH, DARPA, etc.) research grants, please contact City of Hope’s Office of Sponsored Research (OSR).
 
License Agreements
A license agreement is a contract that grants an outside party (licensee) the permission to use or practice City of Hope IP and defines the specific terms of how and where the protected IP can be used. Most licensed technologies are early stage and require significant investment of time and resources from the licensee to fully mature. Our license terms are structured to ensure that a licensee invests the appropriate amount of resources to advance the technology within a reasonable time frame. Our license agreements also include appropriate fees and royalties that capture the projected market value of granted IP rights and are mutually agreeable to both the licensee and City of Hope.

City of Hope shares with inventors all licensing revenue once the expenses have been recovered. The expenses generally involve unreimbursed expenses related to the protection of the IP or other expenses associated with negotiating and executing the agreement. To learn more about the how City of Hope shares licensing revenues with inventors please contact OTL.

If a company has approached you to inquire about licensing a technology or if you would like to learn more about license agreements, please contact OTL.
 
Overview
Office of Technology Licensing
City of Hope
1500 E. Duarte Rd.
Modular 101
Duarte, CA 91010
 
 
 
Center for Applied Technology Development (CATD)
The Sylvia R. and Isador A. Deutch Center for Applied Technology Development (CATD) offers broad expertise in technology transfer and licensing, biologics manufacturing, quality assurance and regulatory affairs.

City of Hope Campus Map
 
 
 
 
City of Hope is one of only 41 Comprehensive Cancer Centers in the country, the highest designation awarded by the National Cancer Institute to institutions that lead the way in cancer research, treatment, prevention and professional education.
Beckman Research Institute of City of Hope is internationally  recognized for its innovative biomedical research.
Learn more about City of Hope's institutional distinctions, breakthrough innovations and collaborations.
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