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Patent and License Pearls and Pitfalls for Taking an Idea to the Marketplace
  1. Indrani Mukharji, PhD
  1. From the Northwestern University, Evanston, IL.
  1. Received December 16, 2010, and in revised form February 18, 2011.
  2. Accepted for publication February 20, 2011.
  3. Reprints: Indrani Mukharji, PhD, Northwestern University, Evanston, IL. E-mail: indrani{at}northwestern.edu.
  4. This presentation was part of the AFMR-Translational Medical Research Development Workshop and was supported by a grant (5R13RR023236) from the National Center for Research Resources (NCRR), a component of the National Institutes of Health (NIH). However, the contents of the presentation are solely the responsibility of the author and do not necessarily represent the official view of NCRR/NIH, the AFMR or Northwestern University.
  5. For additional information on patents, see US Patent and Trademark Office (http://www.uspto.gov/), European Patent Organisation (http://www.epo.org/), and World Intellectual Property Organization (http://www.wipo.int/pctdb/en/).

Abstract

Technology transfer is the process by which novel ideas at academic institutions emanating from research supported by public and private funds are transferred to the private sector for developing marketable products for public use and benefit. Because the primary mission of universities is education and research, technology transfer in an academic environment introduces many challenges. This field is new to most faculty members and is seldom a core mission of their academic careers. The process is also new and unfamiliar to most university administrators. However, universities are increasingly challenged to demonstrate how their research with public funds translates into public benefit. Technology transfer by universities has taken on a new dimension with a focus first on protecting the intellectual property emanating from academic research, then finding means to develop and commercialize such intellectual property for launching new products in the market for public use and benefit. The Bayh-Dole Act enacted in 1980 (Public Law 96-517) allowed universities to elect to retain title to inventions arising from their federally funded research and to grant licenses to the patents, copyrights, or trademarks deriving from these inventions. Universities are allowed to retain the royalties and to share them with the inventors. This article presents the perspectives of technology transfer professionals, specifically, what technology transfer offices do or can do to assist researchers with commercialization of the novel ideas in biomedical research. It also provides a list of successful therapeutics that stemmed from academic research. In conclusion, reference is made to some of the challenges of technology transfer.

Key Words
  • patent
  • invention
  • license revenue
  • conflict
  • technology transfer

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