Below are some general, frequently asked questions regarding technology transfer. If you don't find the answer to your question please contact us or 404-727-2211.
- If I'm new to Emory research administration where can I find information?
- What is technology transfer?
- What is the Bayh-Dole Act?
- Why get involved with technology transfer?
- Generally how does technology transfer work?
- Why are my lab notebooks important?
- What is 'public disclosure'?
- How does publication affect technology transfer?
- How do I disclose an invention?
- Who owns my intellectual property (IP)?
- What are my sponsored research obligations?
- What should I do about conflicts of interest?
- What are material transfer agreements (MTAs)?
- What are data transfer agreements (DTAs)?
- What are research tools?
- What is joint ownership and inter-institutional agreements (IIA)?
- What are confidentiality agreements and non-disclosure agreements (CAs, CDAs, RDAs, NDAs)?
- What are collaborative research agreements (CRAs)?
- What are research agreements (RAs)?
- What are revenue sharing agreements (RS)?
There are four excellent sources of information for newcomers are:
Technology transfer is the process of transferring knowledge, methods, or discoveries from the university to others. This process generally involves disclosing, protecting, and licensing the rights of the invention to others for further development or accessibility. There are many reasons to engage in this process:
- Recognition of the discovery
- Public good
- Compliance with federal regulations
- Faculty retention and recruitment
- Economic development
- Foster corporate research support
- Licensing revenue to support further research
It is our role in the Office of Technology Transfer (OTT) to manage the hundreds of innovations received from Emory’s world-renowned faculty and shepherd them from the lab bench into the hands of a commercial partner. If you are not familiar with technology transfer at Emory you can view our video about this. If you are not familiar with our professional, AUTM (our professional association), has a terrific video with an overview of this work. You can also view an infographic explaining the technology transfer process.
The Bayh-Dole Act of 1980 is the foundation of university technology transfer. This legislation allows universities and non-profit organizations to own rights to innovations discovered through federally funded research. Also known as the Patent and Trademark Law Amendment Act of 1980, this legislation marks the beginning of commercialization from university-based research and development. The Economist noted it as "perhaps the most inspired piece of legislation to be enacted in America over the past half-century."
Find information regarding Bayh-Dole from our professional association AUTM on thier website here. BIO has a nice infographic about the Act on their website here. To review the Bayh-Dole regulations they can be found on the NIH website here.
Beyond the immediate satisfaction of commercializing your invention, technology transfer also provides a public good. The OTT works to ensure that your inventions and rights to continue your research and publications are protected. Additionally, any revenue earned supports further research for both yourself and Emory.
If you have a discovery that has potential commercial viability, the first step is to disclose your discovery to OTT. You can complete this step by submitting a disclosure form (www.ott.emory.edu/forms), contacting us, or calling 404-727-2211. A licensing associate will review the disclosure to assess commercialization factors including intellectual property protection, market landscape, potential product application, and competitive advantages. If OTT finds commercial potential in your invention after disclosure and review, we work to obtain patent protection of your invention, market the invention, and negotiate licensing terms with interested partners or investors. Our team guides you during every step of this process, providing advice and feedback to help bring your invention to market. You can also view an infographic explaining the technology transfer process.
Lab notebooks can be an important record to establish your rights in a patented invention. Accurate record-keeping and good lab notebook practice are critical to showing your original conception date and steps taken to reduce your invention to practice, including who may have obtained information from you. With the advent of the America Invents Act, a property kept lab notebook will be a critical tool in providing evidence that an invention was "obtained" from you.
To be useful, a lab notebook needs to show the details of your invention and be interpretable without further input from you, so your descriptions should be thorough and specific. Further, as often as possible, have another investigator who is not a co-worker or joint inventor witness your notebook to show that you are keeping the entries regularly. Following these procedures will help protect you in future proceedings if there is ever a question as to who should be credited with an invention.
Patent protection can be compromised if the invention is previously disclosed to the public in almost any manner. Examples of public disclosure include written documents but importantly also includes oral presentations. In some cases, even departmental meetings and student presentations can count as 'public' if anyone from outside Emory could be in attendance. An "enabling" description of your invention at such a meeting could potentially render your invention "available to the public" and invalidate future patent rights. If you or anyone in your lab intends to present a new technology at any meeting, please contact our office with an overview of what is going to be presented so we can help guide you on this issue.
It is critical to contact Emory's OTT prior to publishing any data connected to your invention. Patent protection can be compromised if publications such as manuscripts, conference abstracts, or meeting posters are shared with outside audiences prior to disclosing and protecting the technology.
In the digital era and with the federal governments push to make funded research more accessible many academic publications have adopted new practices where "Just Accepted" manuscripts, or manuscripts that have been peer-reviewed and recently accepted for publication, can be published almost immediately - prior to technical editing, formatting, and author proofing. In most cases, this early publication option must be requsted or opted-in by the author(s) during submission of the manuscript. For a more detailed discussion of "Just Accepted" manuscripts, visit these FAQs from the American Chemical Society here. Although not complete OTT has prepared a list of publications and their current policies which you can find here.
Go to the forms page of the website for a disclosure form and instructions. The first step in the commercialization process is the formal disclosure of your invention. An invention disclosure document describes the technology and is used in determining the patentability of your idea.
OTT recommends disclosing invention information as soon as possible. Discussions with third parties or communication via emails and presentations may jeopardize patent protection. If not reported in a timely manner, your invention may not qualify for patent protection. It is critical that OTT is informed of all communications regarding your invention so that we can safeguard your technology and develop it to its fullest potential.
Emory generally owns all IP developed by employees in their field of expertise or duties or created using University resources. Detailed information can be found at http://policies.emory.edu/7.6.
Emory claims ownership of technology developed by Emory employees in their field of expertise or duties, or produced using university resources. The sponsored research agreement should outline the details of this arrangement. However, each case is unique, with some sponsor agreements setting guidelines for licensing and sharing of any potential revenue. For more information concerning your sponsered research obligations contact your departmental representative.
Full disclosure of your commitments outside Emory is imperative. For example, business agreements that may hinder your duties as an Emory employee may require conflicts of interest management. If you are uncertain about your situation, contact OTT or Emory’s conflict of interest group to discuss the arrangement in detail. More information can be found at Emory’s conflict of interest webpage at http://www.coi.emory.edu.
Many research tools and reagents are often shared among colleagues. MTAs are formal contracts that define the proper use and limits of shared items that may include biological samples, chemical reagents and computer software. Always execute an MTA prior to sending or receiving any research material outside of Emory. Doing so ensures clear IP ownership and supports necessary patent documentation. MTA forms and instruction can be found on our website at http://www.ott.emory.edu/forms.
Many projects require the sharing of human subject health information in order to conduct research. DTAs are formal contracts the define the proper use and limits of such shared information, and also memorialize each party’s obligations in compliance with regulations that apply to this sharing, such as the Health Insurance Portability and Accountability Act (HIPAA). Always be sure to have executed the appropriate DTA prior to such transfer, as well as obtain any necessary IRB approval with respect to human subject research. Specific DTA forms and instructions can be found on our forms page.
Sometimes inventions are the tools used to conduct research. If you invent a research tool, such as reagents, mouse models, cells, software, or antibodies, contact the OTT to discuss the potential for commercialization and sharing with other investigators.
Joint ownership is when multiple individuals or institutions jointly own the technology. When there is joint ownership, OTT will negotiate an IIA to define the rights and responsibilities of the institutions regard: intellectual property protection and commercialization, licensing revenue sharing, and other issues related to technology transfer of the jointly-owned technology.
Confidentiality agreements come in several flavors but are very similar. CA stands for Confidentiality Agreement. CDA stands for Confidential Disclosure Agreement, sometimes referred to as an NDA (Non-Disclosure Agreement) or an RDA (Restricted Disclosure Agreement). Generally speaking these types of agreements outline what information is confidential, what and how information can be shared, and what information should be restricted from other parties. These agreements allow parties to discuss details of their business and inventions without the fear of making important information public.
During the planning and preparation of a research project, there may be a need to exchange with or receive from a potential sponsor or collaborator confidential information (unpublished data, intellectual property, business practices, etc.). Faculty members who have any questions about the need for putting a confidentiality agreement in place to protect information developed at Emory should contact us. Any confidentiality agreements received from a third party pertaining to non-clinical research should be routed to OTT for review and signature. Any confidentiality agreements received from a third party pertaining to clinical research should be routed to OSP for review and signature at the following email address: email@example.com.
Collaborative research agreements (CRAs) are agreements between Emory and another university, institution or company that describe collaboration and joint research projects that are not being funded by the other party involved in the collaboration. These agreements dictate and clarify specific goals, how the parties will interact with each other and may also define IP ownership, patent filing responsibilities, licensing revenue distribution and other issues related to technology transfer.
OTT can assist faculty members with determining whether a CRA should be executed for a collaborative research project outside of Emory. For those projects that warrant such an agreement, OTT works with the faculty member to create an agreement with the appropriate terms and conditions; and then finalizes the agreement with contracting personnel at the collaborating institution/company. For assistance with a CRA, faculty should contact us.
These types of agreements are referred to as either collaborative research agreements (CRAs) or research agreements (RAs) and are agreements between Emory and another university or institution that describes collaboration and joint research projects. These agreements dicate and clairfy specific goals, how the parties will interact with each other and may also define IP ownership, patent filing responsibilities, licensing revenue distribution, and other issues related to technology transfer.
A Revenue (or Royalty) Sharing Agreement is an agreement between the contributors to a technology, their department or school and the university, which outlines how revenue paid to the university from a license is shared among the groups. It builds upon the basic revenue split outlined in university’s intellectual property policy (Emory's can be found here).