• Technology Transfer

    The mission of the Office of Research and Technology Ventures (ORTV) is to assist the faculty and staff of Dana-Farber in translating their discoveries into new products and services that benefit the patients they serve.

    About ORTV

    researcher writing on a white board 

    The core activities of ORTV include:

    • Evaluating the commercial potential of inventions, research tools and software developed at Dana-Farber
    • Licensing Dana-Farber's intellectual property in a manner that encourages product development and generates a fair financial return for the Institute
    • Distributing licensing income to the inventors and departments of Dana-Farber
    • Negotiating and approving material transfer, confidentiality, collaboration, and sponsored research agreements with other organizations
    • Facilitating non-clinical research relationships with industry
    • Facilitating the formation of new ventures based on Dana-Farber's technology

    Rationale

    Developing a new product or service based on early stage academic research discoveries requires:

    • a significant investment of time and money
    • further research and development geared towards product development and regulatory approval
    • the expertise and infrastructure necessary to support marketing and sales

    Development efforts of this scale normally fall outside the purview of most academic institutions. It is necessary therefore that institutions like Dana-Farber collaborate with commercial partners capable of making the investment necessary to bring a new technology to market.

    ORTV helps to facilitate the process of commercializing technology developed at Dana-Farber.

    Process

    1. Discovery
      Research activities at Dana-Farber often lead to observations or discoveries that may be of commercial interest. See What to Disclose under Invention Disclosure for details on the types of inventions that should be disclosed to ORTV.
    2. Disclosure
      The process of commercialization begins when investigators submit an invention disclosure to ORTV. The invention disclosure form is used to create a formalized written description of an invention.
    3. Evaluation
      ORTV works with the Office of General Counsel (OGC) to evaluate each disclosure based on patentability and commercial potential.
    4. Patenting
      Patenting is the most common method of protecting intellectual property. OGC will work with outside patent attorneys and invention participants to file a patent application.
    5. Marketing
      ORTV will identify companies with the necessary expertise and resources to bring the technology to market.
    6. Licensing
      A license grants the company the right to develop and commercially exploit an invention owned by Dana-Farber. In exchange, the company will provide financial compensation to Dana-Farber.
    7. Product Development
      The company invests the resources necessary to develop a product and gain regulatory approval if necessary.
    8. Public Availability
      Once a product has been fully developed, the company mobilizes its sales, marketing, and distribution divisions to ensure the product is released to the public.
     

    Invention Disclosure

    What to disclose

    Research activities at Dana-Farber often lead to the development of commercially useful inventions or discoveries.

    The following list describes a few examples of the types of inventions that ORTV commonly licenses to companies for further development and distribution:

    • Diagnostics: tests based on biomarkers, expression profiles or genes (mutations, SNPs)
    • Research Tools and Reagents: antibodies, animal models, cloning tools, cell lines, chemical or DNA libraries
    • Targets and Screens: drug discovery screens, drug targets or assay systems
    • Therapeutics: small molecules, drug delivery systems, biologics and methods that can be used to treat disease
    • Vaccines: materials which can stimulate an immune response
    • Devices: medical devices, laboratory equipment or any type of machine
    • New Uses or Improvements: improvements to or new uses for existing technologies (e.g. new indications for a drug, new treatment combinations for drugs, ideas for improvements on existing devices or products)
    • Software, Databases and Compositions: algorithms, programs, collections of annotated information, educational course ware, videos, and other creative compositions

    Disclosure timing

    Investigators should consider submitting an invention disclosure before publicly presenting or publishing the details of an invention. In many cases it may be necessary to file a patent to protect the commercial value of an invention. Making a public disclosure prior to filing a patent application may limit the ability to obtain patent protection and may reduce the commercial value of an invention.

    Advantages of submitting invention disclosures early:

    • Provides ORTV and OGC with the time necessary to draft the best possible patent application
    • Enables Dana-Farber to establish the earliest possible filing date for a patent

    It is best to contact ORTV as early as possible, preferably 8-12 weeks before public disclosure, so steps can be taken to preserve patent rights. If that timetable is not feasible, please contact ORTV as soon as possible.

    Review process

    Receipt of invention disclosure

    Each investigator at Dana-Farber is assigned a case manager from ORTV who serves as her/his main point of contact for invention management and interactions with industry. The case manager coordinates the invention disclosure review process. If the investigator has not worked with ORTV before, a case manager will be assigned.

    Invention disclosure meeting

    The case manager and patent counsel from the Office of General Counsel (OGC) meet with the investigators to discuss the invention disclosure in greater detail.

    Invention disclosure evaluation

    ORTV and OGC work together to evaluate each invention and determine if a patent application should be filed.

    • OGC evaluates an invention to determine the scope of patent rights that may available.
    • ORTV evaluates an invention from a commercial perspective. Factors considered include market demand, competitive advantages over existing technologies and whether patent protection will encourage a company to license and develop an invention.
    • Inventions such as antibodies, research reagents, and software may not require patent protection to facilitate commercialization.

    Patent filing

    If the decision is made to file a patent, OGC will work with the investigators and outside patent attorneys to draft and file a patent application.

    Benefits of disclosure

    • ORTV provides the expertise and resources to file patent applications and license technologies to companies
    • Licensing revenue is distributed in the following manner:
      • 25% inventors
      • 25% inventor's laboratory
      • 20% inventor's department
      • 15% President's Office for research and education at Dana-Farber
      • 15% ORTV to offset operational expenses
       
    • Developing intellectual property may lead to industry collaborations which provide access to:
      • funding via Sponsored Research Agreements
      • proprietary materials and company equipment
      • expertise of industry scientists
       
    • The development of new products based on academic research helps to create jobs, stimulate the economy, and encourage new research and development
    • For more information on how academic technology commercialization benefits society, see The AUTM Better World Project. 

    Submit an invention disclosure

    Each member of the Dana-Farber community is required to disclose inventions developed using:

    • the facilities and resources of Dana-Farber;
    • funding or materials received from companies, foundations and certain government agencies.

    Inventions should be kept confidential until ORTV has had an opportunity to determine whether a patent should be filed.

    For inventions developed at Dana-Farber or in collaboration with scientists elsewhere:

    Access the Dana-Farber Invention Disclosure Form and follow submission instructions.

    For inventions involving research conducted at the Broad Institute:

    Access the Dana-Farber/Broad Institute Invention Disclosure Form and follow submission instructions.

    Key invention policies

    Ownership of intellectual property

    The Bayh-Dole Act gave small businesses and non-profit organizations the right to retain ownership of inventions developed using federal funds. In exchange, the organization takes on the responsibility of patenting and pursuing commercial opportunities that will help bring innovations to the public.

    To fulfill its obligations under Bayh-Dole, Dana-Farber must retain ownership of all inventions developed by its employees using the time, funds, personnel, facilities, materials, or other resources of Dana-Farber.

    Dana-Farber Invention Agreement

    Every employee of Dana-Farber signs an Invention Agreement as a condition of their employment. Under this agreement, the employee agrees to (1) assign her/his intellectual property rights to Dana-Farber and (2) disclose inventions to ORTV and the Office of General Counsel.

    Initiate a Material Transfer

    A Material Transfer Agreement (MTA) is a contract used to govern the exchange of research materials between organizations. ORTV is responsible for negotiating and signing all MTAs with outside organizations. ORTV reviews MTAs to ensure contractual obligations are consistent with Dana-Farber policy and/or federal law.

    To receive materials from a company or academic organization

    To expedite the process of review and negotiation of an MTA to receive materials, Dana-Farber investigators must submit a review form. Access the Inbound MTA Review Form and follow submission instructions.

    To send materials to an academic organization

    In most cases, investigators may send the Dana-Farber MTA directly to academic scientists who request materials using a pre-approved MTA with limited editable fields. Either the Dana-Farber investigator or laboratory staff or the requestor can enter the necessary information in the editable fields.

    The form does NOT need to be signed by Dana-Farber provided that no changes to the provisions of the agreement are requested by the recipient. Upon receipt by the Dana-Farber investigator of the MTA signed by an authorized party for the requestor, the materials may be shipped. If the materials are mice, the Animal Research Facility must be sent a copy of the MTA along with instructions for shipment.

    Access the Outbound MTA Review Form and follow instructions.

    To Send Materials to a Company

    Materials are transferred to a company for research purposes using a fee-based license and not an MTA. Investigators interested in sending materials to a company should contact their case manager or ORTV's Technology Transfer Specialist at 617-632-2118 or MTA@dfci.harvard.edu.

    Due to the complex nature of academic-industry interactions, MTA negotiations may take a significant period of time. Therefore, it is important to submit requests as soon as possible.

    Material transfer policies

    Dana-Farber is a non-profit research institute that receives funding from the U.S. government. Therefore, it must adhere to certain obligations and policies regarding the following issues in Material Transfer Agreements:

    Obligations to the U.S. Government

    • Dana-Farber will not assign ownership of inventions developed with federal funds.
    • Dana-Farber must grant the U.S. government a non-exclusive, royalty-free license to any invention developed with federal funds.

    Ownership of inventions and research results

    Dana-Farber shall retain ownership of all inventions, results and patents developed using its facilities. While Dana-Farber cannot assign its rights to inventions developed under research collaborations, license rights (exclusive or non-exclusive) can be provided.

    Pre-set financial terms

    Dana-Farber will not agree to pre-set financial terms for the grant of rights to future inventions.

    Confidentiality and publication

    Dana-Farber reserves the right to freely publish and disclose the results of all research activities conducted at the Institute.

    In the case of research activities involving materials received from companies under an MTA, Dana-Farber will provide the company with a limited period of time to review proposed publications and presentations. During this period, the company may redact its proprietary information and/or request a patent application be filed to protect new discoveries.

    Industry collaborations

    Overview

    Research collaborations with industry can play a key role in the process of developing new products based on early stage research discoveries.

    Such collaborations can provide investigators with access to proprietary materials, the expertise of corporate scientists, and research sponsorship. From the company's perspective, collaborating with an academic institution provides access to the specialized expertise and facilities necessary to explore new areas of research.

    While such collaborations can be mutually beneficial, they pose a complex set of challenges. Potential issues include research integrity, data ownership, intellectual property, confidentiality, publication, and conflicts of interest.

    ORTV works with investigators and companies to negotiate research agreements that deal with these issues in a manner that is mutually beneficial.

    Please contact ORTV if you are interested in entering into a collaborative relationship with a company.

    Confidentiality

    Confidential Disclosure Agreements (CDAs) are legal contracts that govern the exchange and use of unpublished or proprietary information.

    Sharing confidential information with a party in the absence of a CDA may allow unauthorized use of the information for any purpose, including research or commercialization. In addition, such a disclosure may be considered a public disclosure which may limit the ability to obtain worldwide patent rights.

    Confidential Disclosure Agreements:

    • Specify what information is considered confidential
    • Outline the recipient's obligations to keep the information secret
    • Restrict the ability of the recipient to publish or otherwise share the information
    • Specify that the recipient cannot use the information for commercial purposes

    ORTV is responsible for drafting, negotiating and approving CDAs for the exchange of confidential information with parties outside of Dana-Farber.

    Please contact ORTV:

    • before you meet with a company to discuss a research collaboration or material transfer;
    • before you share unpublished or confidential information with companies;
    • if any organization asks you to sign a CDA.

    Approval procedure

    ORTV is responsible for reviewing and approving all non-clinical Sponsored Research and Collaboration Agreements.

    Process

    1. Proposal development
      Investigators will work with the company to develop a research plan that defines the scope of the work to be performed. All sponsored projects must include a budget with full overhead at the NIH negotiated rate.
    2. Budget approval (if applicable)
      If the project involves research sponsorship, investigators must work with their business manager to get the budget approved by their department and research administration.
    3. Contract negotiations
      Once ORTV receives a research plan and budget approved by the company, the investigator's department, and Research Administration (with a fully executed Grants and Contracts Cover Sheet) we will work with the company to negotiate a research agreement.

    All documentation should be submitted to the investigator's case manager or:

    ORTV Technology Transfer Specialist
    Phone: 617-632-2118
    Fax: 617-632-4012
    Email: ORTV@dfci.harvard.edu 

    The budget approval process and contract negotiations can take a considerable amount of time so it is best to initiate this process as soon as possible.

    Policies

    Dana-Farber is a non-profit research institute that receives research funding from the U.S. government. As such it must adhere to certain obligations and policies regarding the following issues in Sponsored Research and Collaboration Agreements.

    Obligations to the U.S. Government

    • Dana-Farber cannot assign ownership of inventions developed using federal funds.
    • Dana-Farber must grant the U.S. government a non-exclusive, royalty-free license to any invention developed with federal funds.

    Ownership of inventions and research results

    Dana-Farber shall retain ownership of all inventions, results and patents developed using its facilities. While Dana-Farber will not assign its rights to inventions developed under research collaborations, license rights (exclusive or non-exclusive) can be provided.

    Pre-set financial terms

    Dana-Farber will not agree to pre-set financial terms for the grant of rights to future inventions.

    Confidentiality and publication

    Dana-Farber reserves the right to freely publish and disclose the results of all research activities conducted at the Institute.

    In the case of research activities involving materials transferred from companies, Dana-Farber will provide the company with a limited period of time to review proposed publications and presentations. During this period, the company may redact its proprietary information and/or request a patent application be filed to protect new discoveries.

    Licensing

    Search for Technologies

    Dana-Farber Technologies Available for Licensing 

    If you are interested in learning more about a specific Dana-Farber technology, please contact the case manager listed on the description page for each technology.

    Licensing policies

    Dana-Farber licenses its technology to enable the development of new products and services. Ideal licensing partners will:

    • possess the resources and commitment necessary to develop and commercialize Dana-Farber technology;
    • provide Dana-Farber with fair consideration in exchange for the license.

    Common elements of license agreements with Dana-Farber:

    • Grant of Rights
      Dana-Farber will offer an exclusive or non-exclusive license depending on the nature of the technology
    • Retained Rights
      As a non-profit research institution, Dana-Farber retains the following rights to:
      • use the technology for teaching, research and education;
      • grant non-exclusive research use licenses to other academic and non-profit organizations for non-commercial purposes.
      Financial Terms
      Financial terms may include upfront license fees, equity, milestone payments, annual minimum royalties or maintenance fees or running royalties.
    • Patent Reimbursement
      Dana-Farber will typically expect licensees to reimburse incurred and ongoing patent expenses related to the licensed technology.
    • Diligence Requirements
      The license agreement will be structured to include diligence provisions that provide Dana-Farber with tangible evidence that the licensee is diligently developing and commercializing the licensed technology.
    • Indemnification, insurance and product liability
      Licensees are required to indemnify Dana-Farber against liabilities and claims related to product development and sales. Prior to the first commercial sale of a product developed using Dana-Farber technology, licensees are required to obtain product liability insurance.
     
     
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