Information for Faculty
What is Involved in the Licensing Process and Developing Collaborations
Overview
As per the University’s Intellectual Property Policy, UMDNJ owns all intellectual property associated with inventions developed with University support and is responsible for paying for the patent prosecution related expenses, marketing, and licensing these technologies. Licenses to university inventions developed with university support will involve one or more of the following features: access to the Invention (which may be exclusive or non-exclusive), a license fee, a royalty on sales, an obligation to support the patenting process (for exclusive licenses mainly), a requirement to exercise due diligence in developing the invention, and sometimes an obligation to support further research in the inventor's lab.
In recent years it has become possible to involve both the University and the inventors in the formation of small companies, as one means of developing inventions. This frequently results in both the University and the inventor receiving an equity position (stock ownership or a partnership position) in the company. Such events may also generate outside employment and thus a potential conflict of interest for the faculty member which will need to be reviewed by the Conflict of Interest Committee. The University is generally supportive of this method of developing intellectual property, and OTTBD can assist in the entire process.
Marketing
Disclosures submitted to OTTBD will be extensively marketed to gauge feedback from various sources (including large / small pharmaceutical companies, biotech companies, etc). Typically, we aim to market during the one-year provisional application period in order to make an intelligent decision on how to proceed at the end of that year. Once we have reviewed your disclosure we generate a brief non-confidential marketing document and spreadsheet of target companies. Both of these documents are shared with the inventor and your feedback is highly valued / incorporated into our marketing efforts. The summary will then be used as part of the marketing package when we approach companies. Furthermore, it will be posted to our technology publisher website as another means of marketing (http://umdnj.technologypublisher.com/). Inventors are kept in the loop with regards to marketing efforts and company interest and are always welcome to check in with our office for a status update. We recognize that the faculty member will frequently be the best source of information about companies that may be interested in the technology and we welcome the inventor's input and active role in this process if they chose to be involved.
Confidentiality Agreements
Prior to making any confidential public disclosure of your work to business development associates and/or other potential collaborators, we put a confidentiality agreement in place. This agreement serves to: a) protect the patentability of your technology b) prevent others from having any claim to your invention. It allows us to send along additional information (including a copy of the patent application, PowerPoint presentation, conduct a teleconference call/meeting, etc). and must be signed by the Executive Director of OTTBD in order to be legally binding. Furthermore, we ask that prior to you making any public disclosure of your work (manuscript submission, poster presentation, oral presentation, or discussions with colleagues outside of UMDNJ), you contact our office in order to take the appropriate steps to protect the confidential nature of your work.
Material Transfers and Sales
It is now commonplace for researchers in the biomedical sciences to share research materials, particularly unique biological reagents or materials, vectors, and cell lines. Such exchanges are essential for the rapid advancement in certain areas, and it is in the best interests of the University to encourage such exchanges where appropriate.
It is now University policy that all such exchanges be covered by an appropriate Material Transfer Agreement. These Agreements provide a formal record of what has been sent from and received by the University and perform several useful functions:
- The Agreement provides protection to the University should others be harmed by inappropriate use of the Materials we send out.
- The Agreement places the recipient on notice that the Materials must be used for research purposes only (not for human trials), and should not be passed on to others.
- The Agreement asks that the recipient properly acknowledge the provider on publications resulting from the use of the materials.
- The Agreement reminds the recipient that the materials may be covered by patents and that the provider should be advised if patent applications might be made based on use of the material. In this way the originator of the Materials can fairly share in any commercial application that may result.
How You Get a Material Transfer Agreement
If you have requested materials from another University you will probably receive a Material Transfer Agreement from that institution. This must be signed by OTTBD. For the most part MTA’s are standardized agreements, but occasionally they come in with provisions that cannot be agreed to by the University, usually in the form of requiring more access to Intellectual Property than we or you would happily accept. We will negotiate these terms, with your input, as rapidly as possible.
Should you wish to transfer some of your own research materials to a colleague at another institution you should do this under a UMDNJ Material Transfer Agreement. Please contact Lillian Cohen or call 732-235-9350
Sales of Materials
If you have unique materials (i.e. antibodies, vectors, etc) in quantity sufficient to release a potion without affecting your research program, you may wish to consider selling it. This is particularly attractive in cases in which the recipient organization is a commercial firm and/or the amount requested is clearly more substantial than would be required for occasional research use. OTTBD has developed an organized list of material assets available for licensing that we distribute periodically to a number of outside partners.
If you have any material assets including antibodies and animal models that you would be interested in licensing please fill out an intake form that can be found here and/or contact Norell Hadzimichalis, Ph.D. or call 732-235-5319.
Industrial Sponsorship of your Research
Industrial Sponsorship of University research is becoming increasingly common. Such research contracts are likely to contain elements that are restrictive. While all such contracts must pass through the normal Grants and Contracts process, other divisions of the administration may become involved over certain issues. Our office can help to resolve many of these issues or can direct you to the appropriate University resource.
Here are a few issues that we may wish to negotiate with your industrial contact beforehand:
- Indemnification and Hold Harmless Clauses. Are we being asked to indemnify or hold harmless the firm that is sponsoring the work against claims that might be made against UMDNJ in the performance of the work? If so the wording must conform to guidelines and be specifically approved by Risk & Claims Management.
- Jurisdiction. Avoid phrases that ask that the Laws of the State of {Not New Jersey} be used in settling disputes. This is usually easy to resolve.
- Publication Restrictions. The University understands the need to delay publication from time to time, for short, well-defined periods, to allow appropriate measures to be taken to protect Intellectual Property. Such clauses should rarely ask for more than a few months delay.
- Patent Rights. Most industrially sponsored research contracts will contain some language concerning ownership or licensing of patents that might result from the work..
- Confidentiality. Many industrial concerns will wish to have confidentiality agreements in place before you can work with them. These agreements also protect the University.