FAQ: Intellectual Property

Intellectual property (IP) is defined in the Boston Children’s Hospital Intellectual Property Policy. IP includes all inventions, patents, and copyrightable works such as scholarly works, books, data, photos, drawings, diagrams, web content, videos material, software and apps.

If your invention is based on an activity supported in whole or in part by funds, personnel, facilities, materials or other Boston Children’s resources, or by funds or resources administered by us (such as a grant from a disease foundation or NIH), or if it is related to your responsibilities at Boston Children’s, it is owned by Boston Children’s Hospital. There are certain exceptions for creative works such as publications. In addition, in order to manage overlapping intellectual property obligations that come with joint appointments, we ask faculty to disclose any other IP obligations to TIDO so that we may work with the other institution to sort out any IP ownership questions. You can review Boston Children’s full Intellectual Property Policy and associated guidance documents at [LINK]. Please bring any questions about ownership of IP to TIDO for clarification.

FAQ: Invention Disclosure

Generally, an inventor is an individual who has made a contribution to the conception of the invention. U.S. patent and copyright laws have strict definitions about inventorship and TIDO will work with outside counsel to determine who is an inventor. It is important that the inventorship on a patent is determined correctly or the validity of a patent could be in question. Please note that authorship on a publication is not the same as inventorship. Feel free to contact us at TIDO for clarification on any questions about an invention.

  • Disclose inventions to TIDO by completing the invention disclosure form when you think you have created an invention or discovered something unique with commercial or research value.
  • To avoid risking the loss of your patent rights and hindering the opportunity to market your invention, contact TIDO before having any discussions with people outside of Boston Children’s, including companies or the press.
  • On the invention disclosure form, include companies and contacts you believe might be interested in your invention. More than 70 percent of all licenses are executed with commercial entities known to the inventor.
  • Respond to TIDO and outside patent counsel requests. While some aspects of the patent and licensing process may require significant participation on your part, we will strive to make efficient use of your valuable time.
  • Keep TIDO informed of upcoming publications or interactions with companies related to your invention. In some cases, a confidential disclosure agreement may need to be put in place before a discussion with the company to protect BCH’s patent rights.

TIDO wants every great idea to succeed. Boston Children’s Intellectual Property Policy was created to ensure an equitable distribution of revenues from its intellectual property. When Boston Children’s receives revenue from the licensing of an invention, the revenue first goes to pay back expenses incurred by Boston Children’s such as patent filing costs, licensing costs and litigation costs, as well as any money owed to third-party sponsors, co-owners and co-inventors of the invention. For inventions licensed after January 15, 2015, the rest of the revenue received will be distributed as shown in the table below.

Inventor Inventor’s Research or Education Endeavor Inventor’s Dept. and/or Program Boston Children’s Hospital TIDO
30% 12.5% 12.5% 30% 15% 

Yes. Call TIDO at 617-919-3022. We will immediately set up a meeting with you to discuss your work. We recommend that you let us know at least four weeks in advance of submitting a manuscript, abstract, poster or oral presentation.
We will conduct a preliminary review and evaluation of your research to identify anything that might need intellectual property (IP) protection. This safeguards you, your research and the interests of Boston Children’s Hospital.
Please call us even if the preferred timeframe is shorter than four weeks. There are steps we can take to protect IP as appropriate.Yes. Call TIDO at 617-919-3022. We will immediately set up a meeting with you to discuss your work. We recommend that you let us know at least four weeks in advance of submitting a manuscript, abstract, poster or oral presentation.
We will conduct a preliminary review and evaluation of your research to identify anything that might need intellectual property (IP) protection. This safeguards you, your research and the interests of Boston Children’s Hospital.
Please call us even if the preferred timeframe is shorter than four weeks. There are steps we can take to protect IP as appropriate.

Disclose your invention to TIDO and list your collaborators. A TIDO representative will meet with you to evaluate the invention and your contribution to it. If we believe that persons from other institutions are inventors as well, TIDO will work with the technology transfer office of the other institution to jointly manage the invention. Typically, a joint invention agreement that defines the rights and responsibilities of each institution, including cost sharing and revenue distribution, is established between the institutions.

FAQ: Patents and Licensing

A patent offers legally recognized protections for processes, machines, compositions of matter, articles, some computer programs and algorithms, and methods (including methods of making compositions, methods of making articles, and even methods of performing business). Certain matters are not patentable, such as laws of nature and mental processes. Recent court decisions have raised patentability doubts for software and business methods, DNA and other naturally occurring discoveries and diagnostic assays that rely on correlation between a disease and parameter in the body.
A patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. A patent does not necessarily provide the holder any affirmative right to practice a technology since it may fall under a broader patent owned by others. Instead, it provides the right to exclude others from practicing the invention. Patent claims are the numbered paragraphs drafted by patent attorneys that provide the legal definition of an inventor’s protectable invention.

TIDO analyzes each invention, discovery or innovation on the following criteria:

  • What is the ultimate medical product?
  • What impact will this invention have on clinical care or life science research?
  • What is the market size and opportunity for this medical or health care product?
  • How long will it take to develop and what steps will be required to bring the product to market?
  • What is the likelihood that this invention can be licensed to a company for further development in its current stage?
  • What is the best form of intellectual property protection for this invention?
  • Will this invention reduce the cost of medical care?

TIDO and our patent attorneys prefer at least four weeks to draft, review, finalize and file a patent application. During the process, attorneys identify the most advantageous and supportable claims and apply legal standards to identify actual inventors. Once a patent application is filed, it takes three to six years for the U.S. Patent Office to research and evaluate a patent application and decide whether to issue a U.S. patent.

TIDO works with outside patent counsel in diverse technology areas. You work with the patent counsel in drafting the patent applications and subsequent interactions with patent offices in jurisdictions where patent protection is sought. TIDO oversees the patent prosecution process on behalf of you and Boston Children’s.
All costs are borne by TIDO, because Boston Children’s Hospital has an ownership responsibility in protecting IP.
You will be asked to review an application before it is filed and the patent attorney will also ask you questions about inventorship of the application claims. You and any co-inventors will be asked to sign an Inventor’s Declaration and an Assignment, which evidences the inventor’s duty to assign the patent to Boston Children’s.
Currently, the average U.S. utility patent application is pending for about two to six years. Once a patent is issued, it is enforceable for 20 years from the initial filing date of the application that resulted in the patent, provided that USPTO-mandated maintenance fees are paid.

Yes, but since patent rights (e.g. statutory bars to patentability) are affected by publication or presentation at a meeting, you must submit an invention disclosure well before communicating about your invention to people outside of Boston Children’s. Once publicly disclosed, an invention may have restricted or minimal potential for patent protection outside of the U.S. Be sure to inform your TIDO licensing manager at least one month prior of any presentation, lecture, poster, abstract, website or print description (including blogs and media), research proposal submission, dissertation or master’s thesis, publication (including online in advance of print), or other public presentation.

A patent provides important protections. But the protection is not all-inclusive. A patent establishes who first conceived an idea and who first demonstrated it in their research endeavors. During evaluation by the U.S. Patent Office, a patent application is published and its specific contents become public information. Anyone who wants to develop a commercial product using your invention or sell it as a product must contact TIDO to license the application or issued patent. However, in most cases a patent will not prevent someone from using your idea for research purposes in a noncommercial setting, such as a university or medical center.

Some inventions may not need a patent filing as part of their commercialization strategy. Due to the expense and the length of time required to obtain a patent, patent applications are not advisable for all inventions. We carefully review the commercial potential and patent landscape for an invention before investing in a patent filing. If we determine a patent is not necessary or feasible, we will work with you to consider alternative forms of protection including copyright and registration of trade and service marks.

FAQ: Material Transfer Agreements (MTAs)

An MTA must be reviewed and executed by TIDO before conducting research or trials with proprietary drugs or materials. TIDO may negotiate changes in the MTA that ensure you and the hospital preserve certain rights, such as the right to publish results and to retain ownership of intellectual property and inventions. Although the company may ask you to sign, please keep in mind that TIDO’s Executive Director has to sign MTA agreements.

It is important that you do not distribute any materials developed at Boston Children’s without an MTA. We advise the following:

  • Contact TIDO at 617-919-3019. We will negotiate an MTA with the other institution.
  • If there is a lot of interest in your research reagent or drug discovery tool, we may be able to license it to a company that can distribute and sell it, such as Life Technologies or Sigma. If we license the research tool and it generates income, you receive a share.
  • If your research tool is a plasmid, you might want to consider submitting it to Addgene.com, a service organization that will manage the distribution.

Yes. However, it is important to document items that are to be shared with others and the conditions of use. If you wish to send materials to an outside collaborator, an outgoing MTA should be completed for this purpose. Please refer to TIDO’s website for additional MTA instructions.

First, speak with the principal investigator of the lab you are leaving to confirm it is acceptable to bring the reagents to your new lab. In addition, call TIDO at 617-919-3019. We will put an MTA in place with your old institution. This will allow you to freely publish your future work and protect any new inventions relating to the transferred research reagents.

FAQ: Industry Counseling

Harvard Medical School faculty may pursue certain external activities within the Policy on Conflicts of Interest and Commitment. Always check with your department chair and, if needed, your principal investigator before signing a consulting agreement. You must provide the consulting agreement to the Office of General Counsel, which will review it and attach Boston Children’s mandatory consulting terms to protect our intellectual property. The Office of General Counsel does not provide personal advice on consulting agreements, so you may also wish to have your own lawyer review such agreements. Agreements for speaking engagements under $5,000 and expert witness testimony do not need review by the Office of General Counsel. If you would like guidance on whether your consulting requires prior approval and review, please discuss with our Compliance Office.
For more information please see the Policy on Conflict of Interest and Commitment for Harvard Faculty of Medicine. If you still have questions, please contact the Office of General Counsel at 617-355-2146.