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 here. Please bring any questions about ownership of IP to TIDO for clarification.

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 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.

If you have joint academic appointments, we ask that you disclose any other IP obligations to TIDO so that we may work with the other institution to sort out any IP ownership questions. Please bring any questions about ownership of IP to TIDO for clarification.