Intellectual property is a tool Boston Children’s uses to encourage development of early stage discoveries into products and therapies that benefit patients. Intellectual property (IP) includes all inventions, patents and copyrightable works such as scholarly works, books, data, photos, drawings, diagrams, web content, videos, educational materials, software and mobile apps.
Intellectual property protection is often necessary to induce investment in academic discoveries in order to develop them into products that benefit patients. Intellectual property allows companies and investors to protect their investments in early stage inventions. Without such protection, venture capitalists, medical device, pharmaceutical and biotechnology companies would be unlikely to invest the significant resources required to translate discoveries into products because they would not be able to recoup their investments.
Ownership of intellectual property developed at academic institutions is governed both by IP Policies and by U.S. law. The Bayh-Dole Act, passed by Congress in 1980, grants ownership of federally funded inventions to academic institutions and requires that the academic institutions develop those inventions for the public good and share resulting revenues with the inventors. If your invention is based on an activity supported in whole or in part by Boston Children’s funds, personnel, facilities, materials or other resources, or by outside funds or resources administered by Boston Children’s (such as a foundation or NIH grant) your invention will be owned by Boston Children’s.
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 primarily protects Boston Children’s inventions and technologies through patents, but other mechanisms to protect IP exist:
Copyright protect the specific expression of an idea in a tangible medium, unlike patents that protect an idea. Much of the copyrighted material generated at Boston Children’s is distributed free of charge as part of its teaching mission; examples include the general health care information on Boston Children’s website, research articles that are accessible online and many open-source software programs originated at Boston Children’s. In some cases, Boston Children’s may opt to charge for the use of Boston Children’s material, as when a commercial entity uses it for commercial purposes.
Trademarks are ways to mark materials with a brand or logo to identify the source of the material and convey information about quality that may be associated with a brand. A trademark includes any word, name, symbol, device or combination of these that is used in commerce to identify and distinguish the goods of a manufacturer or seller from those of others and to indicate the source of the goods.
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 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.