The guidelines presented here describe the OTT policies and procedures
for disclosing, protecting, and leveraging intellectual assets developed
at the Institution. These policies and procedures are intended to:
• Facilitate
contractual negotiation with individuals and organizations regarding
the purchase and sale of intellectual property developed at the Institution.
• Enable
the Institutional community to collaborate with OTT through clear and
accessible methods.
• Distribute
any financial returns from intellectual property in a way that reflects
the contributions and resource investments of the inventor, as well
as the resources provided and risks assumed by the Institution.
• Protect
academic freedom at the Institution while complying with all legal
and ethical requirements.
• Conform
to the regulations of the agencies and organizations providing funds
for sponsored programs
Frequently
Asked Questions About Technology Affairs
What are the functions of the Office of
Technology Transfer (OTT)?
Do I have a patentable invention?
How do I get an invention disclosure
form, confidentiality agreement or material transfer agreement?
What is the Maine Medical Center conflict of interest
policy?
What are the functions of the Office of
Technology Transfer (OTT)?
The
OTT protects intellectual property through patents or copyrights.
The OTT also manages MMC’s intellectual property portfolio;
find corporate partners to commercialize the technologies; negotiate
and manage licenses; coordinate intellectual property issues related
to industry-sponsored research
Do I have a patentable invention?
Your invention could be patentable if it meets any of the following
criteria:
• A new (or novel), useful,
and non-obvious process, machine, article
of manufacture, or composition of matter.
• A
distinct improvement on any of the above, including any new, original,
and ornamental design for an article of manufacture.
• A
distinct and new variety of plant that is essentially asexually reproduced.
How do I get an invention disclosure
form, confidentiality agreement or material transfer agreement?
A confidentiality
agreement and material transfer agreement are available by contacting
Todd S. Keiller or see the forms
and model agreements.
What is the Maine Medical Center conflict
of interest policy?
The
Maine Medical Center Conflict of Commitment and Interest policies present
and discuss circumstances that can create real or perceived conflicts
of commitment and conflicts of interest for professional and general
staff. They also establishes requirements for annual
certifications and financial disclosures for professional staff. Please
see the complete policies for professional staff and general
staff for more detailed information.
Definitions & Terms
Describing your invention
You must describe your invention fully in the patent application, with enough
detail that one of skill in the art can make or use the invention. If, for
example, your invention is a single compound, you should describe the class
of compounds that will include that single compound. You may also describe
closely related compounds, but only if you can provide a full teaching of
how to make and use each of them.
Invention Disclosure
Once the OTT receives an invention disclosure, it evaluates the technology
for commercial potential and decides whether to seek a patent. Evaluation
involves researching the invention, its possible commercial uses, and
its patentability. The evaluation may indicate that the best route
for commercializing the technology is not to seek a patent, even though
the invention may indeed be patentable. Instead the OTT may market
the technology through a fee-bearing material transfer agreement. Usually
an MTA is appropriate for a research material, such as a new antibody
or a polymer.
Negotiation
The patent criteria are open to the judgment and interpretation of the patent
examiner, and you may be able to negotiate their interpretation with the
U.S. Patent and Trademark Office.
New or novel
The invention is not the same as any described in prior public disclosures,
including publications and patents; and the invention has not been
known to the public, as in a commercial product
Non-obvious
The invention is not obvious to a person of ordinary skill in the art.
This may be demonstrated by showing that there is no suggestion, teaching,
or motivation to create the invention in the prior art
Other limitations
You cannot patent your invention in the United States if it has been offered
for sale, sold, described in a printed publication, publicly used, or commercially
used on a secret basis, in the United States, more than one year before you
file your patent application. Examples of publications are: 1) abstracts submitted
for presentation at a meeting which are published in abstract books, 2) electronic
publishing of journal articles, 3) web sites, 4) dissertations, 5) abstracts
of grant proposals. Patent
law does not require that inventions be actually reduced to practice
in order to be patentable. However, mere extrapolation about an invention
that claims a broad class of chemical compounds is rarely granted
a patent. A claim, even to a single new compound or plasmoid vector,
must usually include a detailed description of its actual synthesis
or construction, in order to receive patent protection. Patent protection
of novel genes requires the complete sequence and a showing of its
biological utility.
Patents
Patents
are usually sought for technologies that could lead to new products
or methods. For a limited time, the holder of a patent has the right
to exclude others from using the invention without permission (that
is, a license to the patent). In exchange for this exclusionary right,
the inventor is obliged to disclose the invention fully in the text
of the patent, so that others can build on this knowledge. Utility
patents expire 20 years from the date of filing with the US Patent & Trademark
Office, if maintenance fees are paid. After a patent expires, anyone
may use the invention without the patent holder's permission.
A patent's exclusionary period provides a company with a window of
no competition or limited competition, which translates to the possibility
of recouping the investment it, takes to develop and launch new products
or methods. This right to exclude others is especially important for
inventions that require a commitment of significant resources before
a product can be marketed and sold, such as a medical device or drug.
Patent applications include background experiments and a description
of the best mode of operation for the invention. They also establish
the claims, or scope, of the invention. The OTT works with inventors
and patent attorneys to develop the broadest possible claims for new
inventions. An example of a claim for discovering the relevance of
a particular biochemical pathway might be for the use of that pathway
to identify inhibitors that could then be used as pharmaceuticals for
preventing or treating a disease. Occasionally during the dialogue
of claim development additional experiments become apparent that could
strengthen a specific claim and increase the value of the invention. Time
is of the essence when it comes to disclosing an invention. According
to US patent law, the inventor has a year after public disclosure
to file for a patent, but in other countries patent rights are lost
once an invention has been disclosed publicly. Before publishing
inventions or speaking about inventions in public, investigators
are advised to disclose them confidentially to the OTT so that it
is possible to obtain patent rights worldwide. It
is important to note that electronic disclosure of abstracts prior
to conferences could be considered a public disclosure of important
elements of a potential patent.
Useful
The invention functions for its intended purpose
