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Working with TTC

Technology transfer is the primary mechanism by which NIH research is translated into products, such as therapeutics, vaccines, diagnostics, or tools to enhance research efforts.  For over 25 years, patenting and licensing for NIH was conducted centrally in the NIH Office of Technology Transfer (OTT).  On October 1, 2015 these patenting and licensing functions were decentralized to nine offices of technology development embedded in the NIH institutes[1].  This change provides the opportunity to align more closely technology transfer with laboratory and program goals. 

There are many ways that inventors may contribute to the development and commercialization of their inventions:

  1. Contact your technology transfer office whenever you have a potentially patentable invention to determine whether you should file an Employee Invention Report (EIR). It is important to make this contact before you publish, give a talk or publicly disclose research results that might fall into this category (otherwise potential intellectual property rights can be lost).
  1. Provide updates whenever new research results in your laboratory impact the commercial applications of your inventions.  Your research results may provide additional proof-of-concept for marketing your invention to companies in the field. 
     
  2. Share the deep expertise you have in your field to support efforts to license your invention.  Inventors can help by reviewing information supporting the commercial development of their technologies by a prospective licensee (e.g., scientific personnel at a company; commercial development plans; proposed developmental timelines; or details regarding the scaling up and production of GMP materials).  You may be asked about costs for creating and maintaining biological materials in your lab, and relative levels of input from collaborators of jointly owned inventions.   
  1. Avoid potential conflicts of interest by directing questions about the financial terms of licenses to your technology transfer office.  As an inventor you will receive a share of royalties from licensing of your inventions.  Therefore, you should never be involved in the negotiation of financial terms of a license.  Should a prospective licensee attempt to involve you, please direct them to technology transfer.
  1. Keep NIH informed of your contact and banking information for royalty payments from licensed inventions.  Information is posted at http://www.ott.nih.gov/information-nih-cdc-and-fda-inventors  on when royalty payments are made, how to update banking information, tax statements, and payments to estates of deceased inventors. 

[1]  Technology transfer offices within nine Institutes are providing patenting and licensing services for all of NIH’s Institutes and Centers. The NCI TTC serves NCI as well as eight other Institutes and Centers.  Contact information for other Institutes and Centers is posted at https://www.ott.nih.gov/technology-development-coordinators.

 

Posted
Wednesday, March 23, 2016