1. JHU Policies/Guidelines  JHTT Standard Operating  Procedures (SOP)  Glossary of Terms  Intellectual Property FAQ  Entrepreneurial FAQ  License FAQ  Publishing and I.P.  Policies  Conflict of Interest  Policies  Material Transfer   Agreements

   What are the goals and responsibilities of JHTT?
2. What is intellectual property?
3. Why does JHU retain title to the inventions?
4. How is inventorship determined?
5. What is a patent?
6. What is a provisional patent?
7. What is prior art?
8. What effect does publishing my data have on the patentability of my invention?
9. Wouldn’t it be more beneficial to the public to publish my data, rather than try to patent my invention?
10. Have I made a patentable invention?
11. How do I inform JHTT of my patentable invention?
12. What happens after I submit a Report of Invention (ROI) to JHTT?
13. How are the inventions marketed?
14. What is a Non-Disclosure Agreement (NDA)?
15. What is a license agreement?
16. What are tangible research properties?
17. What is a Material Transfer Agreement (MTA)?
18. How is the income from licensing an invention distributed?
19. What happens if JHTT does not license my invention?
20. What if I want to form a start-up company?
21. How can I best assist JHTT?

1.) What are the goals and responsibilities of JHTT?
The main objective and responsibility of the Johns Hopkins Technology Transfer is to facilitate the transfer of Hopkins’ inventions to peer institutions or the private sector where these discoveries are further developed for public use and benefit. JHTT has instituted intellectual property management and licensing practices in order to fulfill this responsibility to the public, faculty, and University.

2.) What is intellectual property?
Intellectual property is any new and useful process, machine, composition of matter, life form, article of manufacture, software, trademark, copyrighted work, or tangible research property. Examples include new or improved devices, circuits, chemical compounds, drugs, genetically engineered biological organisms, antibodies, clones, cell lines, data sets, software, Web-based tools, musical processes, or unique and novel uses of existing inventions.

3.) Why does JHU retain title to the inventions?
Prior to 1980, all discoveries and inventions made under federally funded research were the property of the federal government, and few inventions were developed into beneficial products and services. However, in 1980, the U.S. Congress passed the Bayh-Dole Act, which created a technology transfer revolution in our nation’s universities. The Bayh-Dole Act enables research institutions and other non-profit institutions to take title to inventions conceived or reduced to practice in the performance of a federal grant, contract, or cooperative agreement. In exchange for this right to take title, the institutions are required to develop comprehensive intellectual property policies, disclose new inventions, attempt to license those inventions, and share license income with inventors. The institutions may use any remainder of licensing income to support research and educational activities. If JHU, for some reason, elects not to take title to a federally funded invention, all rights return to the government, and may be assigned from the government to the inventor.

4.) How is inventorship determined?
An inventor is one who makes creative input, or conceives of an invention. An invention may have more than one inventor. A person who simply follows directions and participates in the reduction of an invention to practice (proving and invention obtains desired or expected results) is not an inventor. U.S. patent law requires patent applications be signed by the true inventor(s). Co-authorship on a scientific journal article is not always equivalent to co-inventorship.

5.) What is a patent?
A patent is the grant of a property right to inventor(s), issued by the United States Patent and Trademark Office (USPTO). A patent right is “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. It is important to distinguish that what is granted is not the right to make, use, offer for sale, sell or import an invention, but the right to exclude others from making, using, offering for sale, selling or importing the invention. For more information CLICK HERE to go to the USPTO web site.

6.) What is a provisional patent?
A provisional patent is a type of U. S. national patent that establishes an early effective filing date over the prior art. A provisional patent application has a pendency lasting 12 months from the date the provisional application is filed. A corresponding non-provisional patent application must be filed during the 12-month provisional pendency period in order to benefit from the earlier filing of the provisional application. A provisional patent may be thought of as a “place-holder” at the USPTO, until a non-provisional application is filed. During the 1-year period of pendency, the inventor(s) can continue to develop the invention while JHTT begins the marketing process and seeks potential licensees. For more information CLICK HERE to go to the USPTO web site.

7.) What is prior art?
Prior Art refers to public knowledge existing before the date an invention was made, that is related to the invention, or in the field of the invention. In the case of Biotech patents, prior art includes published journal articles and abstracts, previously filed patents, and in some cases, non-written knowledge made public, such as material presented at a scientific conference. In order to obtain a patent, an applicant (inventor) must prove that his/her invention is a.) novel over the prior art, and b.) non-obvious to someone of ordinary skill in the art.

8.) What effect does publishing my data have on the patentability of my invention?
The publishing of data constitutes a public disclosure of an invention, and is considered prior art as described above. Although it may seem unfair, your own publication may be used against you as prior art when you attempt to patent your invention. Therefore, it is extremely important to inform JHTT of your plans to publish or present data if you also desire to obtain a patent on your invention. In the United States, an inventor may still obtain a patent if a patent application is filed within one year of a disclosure, however in most foreign countries, patent rights are lost upon disclosure.

9.) Wouldn’t it be more beneficial to the public to publish my data, rather than try to patent my invention?
At first glance, it may seem that inventions and discoveries made under federally funded research should be entirely dedicated to the public by making a completely enabling disclosure in the form of a publication. However, most federally funded inventions (such as drug therapies) that come out of universities need further development before they are ready to go into production. No commercial entity would invest the large amount of resources necessary to further develop a technology if it had been entirely dedicated to the public though a publication. This is because, without the protection provided by a patent (through licensing from a university), a competitor company could step in and reap the financial benefits once the invention has been perfected by the first commercial entity. Therefore, patents actually benefit the public more than a simple public disclosure, by encouraging companies to further develop the technology, and in the end provide a fully developed product.

10.) Have I made a patentable invention?
An invention may be any new and useful process, machine, article of manufacture, composition of matter, or related improvement. The process of invention begins with conception of the invention, and ends in reduction to practice (showing the invention obtains desired results). In order for an invention to be patentable it must have utility (be useful), it must be novel (new and original), and it must be non-obvious to one of ordinary skill in the technical field related to the invention at the time the invention was made.

11.) How do I inform JHTT of my patentable invention?
Complete a Report of Invention (ROI) form and submit it to JHTT. CLICK HERE to go to the Report of Invention section of this website to get more information and obtain the form. The ROI also includes assignment of ownership interest to the University. Completion of all sections of the ROI enables JHTT to efficiently process and review the invention disclosure. Additionally, faculty participation at this step is often key to successful licensing of the invention. Because the inventors are the most knowledgeable of their field, they frequently provide JHTT with the most promising commercial leads in regard to licensing.

12.) What happens after I submit a Report of Invention (ROI) to JHTT?
The ROI will first be reviewed for completeness, and any incomplete ROIs will be returned to the inventor. The JHTT gladly offers assistance and guidance on how to complete an ROI should questions arise. Once an ROI is complete, it is assigned to a Licensing Associate within JHTT for evaluation. The invention is evaluated for commercial potential and likelihood of licensing, encumbrances and other issues that may complicate patenting and licensing efforts, and strength of patent or copyright. It usually takes 4-6 weeks for an evaluation to be complete, during which time the Licensing Associate will meet with the inventor to further discuss the ROI. After evaluation, JHTT will decide whether to retain title to the invention, or release title back to the inventor (subject to approval as applicable by any research sponsor). If the University retains title to the invention, JHTT will manage the process of patent or copyright protection, and begin the processes of marketing and licensing. The University pays all patent, copyright, and licensing costs, and whenever possible, these costs are recouped through license agreements.

13.) How are the inventions marketed?
Once JHTT has decided to retain title to an invention, the inventor will be asked to provide the following: a non-confidential marketing summary (template supplied by JHTT); a keyword profile form (supplied by JHTT); and PDF files of relevant publications. This information allows JHTT to market the invention through the JHTT website and other Web-based technology marketing services. JHTT also uses this information to promote the technology through regional and national technology fairs, and to provide confidential information to licensing inquiries. In the event of a licensing interest, a Non-Disclosure Agreement will be executed between the University and the potential licensee (the Company).

14.) What is a Non-Disclosure Agreement (NDA)?
In the event of a licensing interest, a Non-Disclosure Agreement will be executed between the University and the potential licensee (the Company). An NDA protects the University’s confidential information by both requiring the potential licensee to keep the information confidential, and limiting their use of the confidential information. It also establishes that the company was unaware of the invention before Hopkins presented it to them. An NDA can be written so that it will protect the intellectual property currently under discussion, as well as any possible future projects that may arise as sponsored research between the faculty and the company.

15.) What is a license agreement?
A license agreement is the standard agreement format by which the University and the Company seek to reach mutually acceptable licensing terms regarding an invention. Strategies for transferring inventions from universities to industry are based upon non-exclusive, exclusive, or limited-field licensing. A non-exclusive license is suitable for technologies, such as research tools, that are of interest to a number of companies. Exclusive licenses are generally granted for technologies where product development requires significant effort and investment on the part of the licensee. An exclusive market position is often necessary to justify the expense of the license. Exclusive licensing by discrete fields of use is most appropriate for some technologies because it allows for parallel commercial development of multiple fields or applications of the invention. All license agreements must protect the mission of the University by ensuring that faculty inventors retain rights to continue research in the licensed field, publish freely, and disseminate tangible research properties related to the technology to other academic researchers. The University requires that all licensees agree to appropriate indemnity and insurance obligations.

16.) What are tangible research properties?
Tangible research properties are a group of intellectual property material consisting of new compounds and formulations, biological research materials such as cell lines, genetic constructs, hybridomas and their antibodies, data sets, and computer software and applications. When university faculty want to share patented or unpatented tangible properties with their colleagues at non-profit institutions for research purposes, the materials should be transferred under a Material Transfer Agreement (MTA).  CLICK HERE to get more information at the MTA section of this website and see the answer to the question below.

17.) What is a Material Transfer Agreement (MTA)?
When university faculty want to share patented or unpatented tangible properties with their colleagues at non-profit institutions for research purposes, the materials should be transferred under a Material Transfer Agreement (MTA). MTAs are binding legal agreements between the provider of research material and the recipient, which set forth the conditions of transfer and use, protect proprietary interest in the material, and restrict distribution. Most importantly, the MTA requires the recipient to indemnify the provider from any liability arising from the use of the material. Executing an MTA also helps to preserve the faculty and University’s intellectual property rights while recording the transfer of the invention to another party. CLICK HERE to get more information at the MTA section of this website.

18.) How is the income from licensing an invention distributed?
The Universities current income distribution policy is divided into two categories.

This distribution policy is set forth in the Johns Hopkins Univeristy Policy on intellectual property. For more information, CLICK HERE.

19.) What happens if JHTT does not license my invention?
If, within a reasonable amount of time, a likely licensee has not been identified, JHTT may decide to release title to the invention. Depending on the source of research funding, the inventor(s) may be able to obtain title to the invention. However, if the invention was made using federal research support, JHTT can only recommend to the government that rights be returned to the inventor(s).

20.) What if I want to form a start-up company?
As part of its mission to commercialize University technologies, JHTT will consider licensing requests from faculty inventors who want to start new companies with the technology that they have created. Although not obligated to do so, JHTT is willing to license technology to a faculty start-up company, provided that the faculty inventors demonstrate a clear commitment and ability to develop the licensed technology. Additionally, a faculty inventor’s involvement in such a start-up company must have prior approval of their School’s Committee on Conflict of Interest (CCOI). For more information CLICK HERE to see JHTT’s Entrepreneurial FAQs with links to additional resources available.

21.) How can I best assist JHTT?
Faculty are the key ingredient in JHTT’s recipe for success. Completion of all sections of an ROI is the most important first step that sets the stage for all the events that will follow. Throughout all stages including ROI submission, evaluation, patenting, marketing, and licensing efforts, inventor cooperation and participation are critical for effective intellectual property management and successful licensing of inventions.