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Tech Transfer Process (FAQs)

OCR seeks to secure and manage Yale's intellectual assets while maintaining an open and stimulating academic environment. To achieve this balance, a general set of procedures for faculty to manage potentially valuable intellectual property is described in the following sections - including patenting issues, public disclosures, confidentiality, and material transfers.

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For more information about the technology transfer process, please view Inventor's Guide to Technology Transfer


OCR First

If you think you have an invention, disclose it to OCR promptly - before you submit a manuscript for publication, before you address a meeting, conference, seminar or symposium. The easiest way to disclose an invention complete the invention disclosure form on-line. OCR is immediately notified of your disclosure by email the moment you submit it. The website also contains all necessary information about the OCR staff.

Ownership

University patent and copyright policies specify that Yale owns with some exceptions the intellectual property rights that result from research conducted at Yale. Faculty members are required to sign the patent policy agreement acknowledging their understanding and promising to abide by the patent policy as a condition of applying for grants.

If Yale elects not to pursue development of an invention, it is offered back to the inventors. If the inventors take ownership of the invention, they accept all financial and managerial responsibilities for patenting and commercial development.

The patent and copyright policies and the patent policy agreement are available at the OCR website.

Royalties

The patent policy specifies that royalties derived from a Yale invention are shared between Yale and the inventors according to the following table:

Yale/Inventor(s) Royalty Split

Cumulative Royalty Income < $100,000 > $100,000
< $200,000
> $200,000
Yale/Inventors 50%/50% 60%/40% 70%/30%

Royalties from inventions which Yale has returned to the inventors are shared 30% to Yale and 70% to the Inventors. Royalties on copyrights owned by Yale are treated the same way as patent royalties.

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Material Transfers in or out of Yale

Material Transfer Agreements (MTAs)

Whenever research material is exchanged between Yale and other institutions or companies, a Material Transfer Agreement (MTA) is needed. This is a critical agreement that allows the sharing of potentially valuable material for scientific advancement. MTAs protect our intellectual property rights, limit our liabilities, and ensure scientists are properly credited for their work. Even in the casual exchange of material between colleagues outside of Yale, it is important that an MTA be in place. There are instances of material exchange where an MTA would have allowed us to avoid protracted costly disputes.

The Yale Grants and Contracts offices handle drafting and signing MTAs. When material is to be sent to a company, OCR negotiates an appropriate amount of compensation by the company for access to the material. Certain individuals in these offices and OCR are authorized to sign MTAs.

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Confidentiality

Confidentiality Agreements are needed to protect intellectual property rights before presenting confidential information to interested parties outside Yale. OCR handles drafting and signing these agreements. Please contact OCR before discussing or presenting unpublished data or other confidential information outside the University.

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Patenting

Patents may be granted to novel, useful and unobvious inventions by the United States Patent and Trademark Office and by government patent offices the world over. OCR uses a strategic approach to filing patent applications, which take into account the patentability and commercial potential of an invention.

The process of determining the patent strategy for an invention might include the preliminary discussion with corporate licensing representatives who receive information on the invention, often under confidentiality. OCR may retain the services of a patent attorney to draft the application and prosecute it with your assistance.

Public Disclosure

The timing of any public disclosure of an invention or relevant information, either as a publication or presentation, is crucial for filing a patent application. To protect foreign patent rights, a patent application must be filed prior any public disclosure. The U.S. patent rights can be protected if an application is filed within one year of the disclosure.

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Licensing

Licenses are frequently the means through which intellectual property is exploited and royalties earned. A license from Yale allows companies to make, use and sell an invention.

OCR negotiates both exclusive and non-exclusive licenses, depending on the nature of the invention and the market for it. OCR also tracks the payment of royalties and monitors compliance with the license agreement.

Example of a Successful License

Zerit®, developed by Bristol-Myers Squibb, was discovered by scientists in Yale's Department of Pharmacology. It is among the most widely used reverse transcriptase inhibitors to treat AIDS.

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New Ventures

Many technologies are best suited to licensing but some could serve as the basis for starting a new company. OCR actively seeks to identify opportunities to form new business ventures. We develop business plans and strategies and identify seed-level funding sources for these ventures.

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Corporate Partnerships

In close cooperation with the Office of Grants & Contracts and the Yale Development Office, OCR encourages and facilitates sponsored research. OCR oversees the management and administration of intellectual property created in these relationships.

 
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