About Technology Transfer

At The Rockefeller University, technology transfer involves the movement of research results from the laboratory toward the marketplace. The Technology Transfer Office is a service department of the University that facilitates the protection and further development of technologies developed by personnel of the University. Patentable inventions, tangible materials and copyrighted materials are transferred to the for-profit sector for further development into useful commercial products and services.

Universities engage in technology transfer for five reasons:

  1. To promote the application of the results of scientific research for the public good;
  2. To recruit, reward and retain faculty interested in seeing their technologies further developed;
  3. To provide opportunities for exchanges of information and materials with industry;
  4. To promote economic development; and
  5. To generate an income stream for reinvestment into research and teaching.

TECHNOLOGY TRANSFER FREQUENTLY ASKED QUESTIONS

Why is the university interested in technology transfer?
What is a patent?
Who is an inventor?
What are the criteria for a patent?
Can you publish while applying for a patent?
What about the sponsors of my research?
Why is record keeping important?
What is a copyright?
How are copyrights registered?
Do I have to mark my publications?
What are tangible materials?

TECHNOLOGY TRANSFER LINKS FOR FURTHER INFORMATION

Council on Governmental Relations
Association of University Technology Managers
National Technology Transfer Website
TechEx

Intellectual property and patents:

United States Patent and Trademark Office
Intellectual Property Network
European Patent Office
Index to Manual of Classification of Patents (method of classification)
The Provisional Application
Intellectual Property Center

Funding sources:

National Institutes of Health
National Science Foundation
COS Funding Opportunities
Commerce Business Daily
GrantsNet

Company databases and information:

BioOnline
Hoover's Online
EDGAR Archives
CorpTech

TECHNOLOGY TRANSFER FAQ'S

Why is the university interested in technology transfer?

The Rockefeller University, as owner of technologies (in the form of patentable inventions, copyrights or tangible materials) developed by its faculty, students, staff, can license these technologies to companies that know how to turn them into commercial products or services. In the ideal case, developing a "raw" technology into products and services desired by the public can improve health and quality of life for many, create jobs, increase government revenues through taxes, and provide additional revenue to the inventor and University through licensing fees.

What is a patent?

A patent is a 20-year monopoly that allows the patent owner to prevent others from making, using, or selling the patented invention without permission. In return for the monopoly, the inventor must make known the details of the invention so that others can seek improvements or new uses. The inventor gains by exclusive access to the invention, and society gains by using the detailed description of the invention to further advance technology. It is impossible to give a precise definition of what constitutes a patentable invention, since the answer depends upon many factors and, in the last analysis, is a unique decision made by the U.S. Patent and Trademark Office. In general, under the Patent Policy, Rockefeller University employees should disclose ideas they may have for any new apparatus, systems, methods or processes, and compositions of matter to the Director of Technology Transfer. It is one of the functions of the Office of Technology Transfer, with the assistance of Patent Counsel, to determine whether or not a disclosure appears to contain patentable subject matter.

Who is an inventor?

The inventor(s) first conceives of an invention, in detail, and with enough specificity that one skilled in the field could construct and practice the invention. Those who perform the actual experiments to translate the concept into practice are not considered co-inventors unless they add to the original concept of the invention. However, with the agreement of the inventor(s), they may share in financial benefits of the invention.

What is an invention?

Inventions include new processes, products, apparatus, articles of manufacture, compositions of matter, living organisms, or improvements to existing technology in those categories. A process is a method of producing a useful result. A process can be an improvement to an existing system, a combination of old systems in a novel manner, or a new use of a known process. A machine is an apparatus that performs a function and produces a definite result or effect. It can range from a simple device to a complicated combination of many parts. Compositions of matter include chemical compounds, mixtures such as drugs and, more recently, living matter. Abstract ideas, principles, and phenomena of nature cannot be patented. Software, if integral to a particular task or process, may be considered patentable. The Patent Office, however, will not grant a patent on software as a pure scientific discovery, or a method of doing business, or a process that does not require hardware, or one that simply duplicates the "mental steps" of a human being (such as a purely mathematical algorithm).

What are the criteria for a patent?

In the United States, patentability is determined by novelty, utility, and nonobviousness:

The three criteria of novelty, usefulness and non-obviousness generally are the focal points of the Patent Office's evaluation of patent applications. Obviousness is the reason most frequently cited by patent examiners as to why an invention is not patentable. Finally, patent law states that inventions may be patented if they have been reduced to practice, even if a physical embodiment of the invention has not been realized ("constructive" reduction to practice).

Can you publish while applying for a patent?

Publishing and applying for patent protection are not mutually exclusive: they can be done simultaneously under the proper circumstances. U.S. patent laws allow one to apply for a patent no later than one year after a public disclosure, such as a published paper, a widely available abstract, or an offer of public sale. Grant applications, once awarded, are put into the public domain and may also constitute a public disclosure. Electronic transmission of abstracts, articles or research reports is also a form of publication or public disclosure. Scientists should be aware that many journals and scientific societies often place material on the World Wide Web prior to written publication, creating an increased potential for loss of patent rights. The moment a public disclosure or publication is made, rights to foreign patents are lost unless a U.S. filing has been made within the preceding twelve months. Foreign protection is important to many international licensees, so inventors are urged to use discretion, take advantage of Confidential Disclosure Agreements available from this office, and file invention disclosures with the University well in advance of presentations or publications.

What about sponsors of my research?

Sponsoring agencies sometimes require the University to disclose inventions that arise from work they fund. This is always true for Federal sponsors, and usually true for industry sponsors. If the research that led to your invention was sponsored, please give details and a reference to the contract or grant agreement. The Office of Technology Transfer will provide the appropriate notifications to sponsors once informed.

Why is record keeping important?

The United States grants patents to those first to conceptualize an invention and diligently reduce it to practice. The date the full conception of the invention occurred, the date the idea was put into practice, and diligence in translating concept to practice are key items to document. Inventors can document their research process from conception to reduction to practice by keeping journals written in ink in bound notebooks, each page dated and signed, with witnessed signatures. Notebook witnesses must be able to testify that they understood what the invention was and how it operated and that what you wrote in your journal was actually witnessed on the date entered. If additional materials are pasted in, a written reference should be made to them at the time of entry.

What is a copyright?

Copyright is a narrow, specific form of intellectual property protection. It protects only the fixed embodiment of an idea, not the idea itself. A copyrightable work must be an original work, set down in a tangible, or fixed form. Copyrightable works include traditional written works and other forms such as videotapes, film, music and paintings. Computer software can also be protected through copyright. The courts have ruled that such protection extends to the literal sequence of instructions, the structure, sequence and organization of the instructions, instruction sets and command languages, and, to some extent the "look and feel" of a user interface.

There are five exclusive rights authors obtain with copyright protection:

How are copyrights registered?

Copyright protection is immediately available to the author of an original work once it is set down in a tangible form without any further process. In order to file suit against a copyright infringer and collect monetary damages, however, formal registration of a work with the U.S. Copyright Office is necessary. Moreover, for an author to recover reasonable attorney's fees associated with infringement litigation, the published work must have been registered before the alleged infringement. Registration requires submission of an application, a $20 filing fee and two copies of the work. (Registration of computer programs is slightly different, requiring only one copy of "identifying portions" of the program, usually the first 25 and last 25 pages of source code, as well as the code section containing the copyright notice. One copy of any user's manual or other printed documentation should be included.)

Do I have to mark my publications?

Although copyright notices on works first published after March 1, 1989 are optional, the University strongly recommends that authors include a notice of copyright on all works intended for publication. The notice should include the author's or copyright owner's name, the year in which the work is first published and either the symbol or the word "copyright" (for example: 1998 John Doe. All Rights Reserved). For works to be owned by the University, the words "The Rockefeller University" should be substituted for the author's name. The year given in the copyright notice should not be changed each time the work is printed or published unless significant amounts of new, original material are added; in that case, the date of the revision as well as the original date are used. The lack of an ASCII character for the "" symbol may cause certain foreign countries to deny recognition of the copyright notice on computer software. The use of a "(c)" symbol may be sufficient in such cases, if care is taken to label the media containing the software, as well as any documentation, with the conventional "" notation.

What are tangible materials?

Tangible materials are unpatented or non-patentable biological materials including organisms, cells lines, proteins, RNA/DNA, antibodies and other cellular components and their derivatives. Tangible materials may also be research results that may or may not be patentable or copyrightable and are in a tangible form as distinct from intangible (intellectual) property. Examples include prototypes, engineering drawings, clinical data, databases and other property that can be physically distributed. These materials are covered by the Patent Policy and can be licensed or otherwise transferred to interested parties by the Office of Technology Transfer. Research and development of biological materials (and their possession) is an increasingly important issue, therefore possession and rights should be governed by contract even for those without associated patent rights.