Office of Technology Licensing
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.