Bayh-Dole Act:
The Act created by Congress in 1980 that grants research institutions the right to take title to inventions conceived or reduced to practice in the performance of a federal grant, contract, or cooperative agreement.
Composition of Matter:
A patentable compound of material composed of two or more different substances; a product containing two or more substances, including all composite articles, whether resulting from chemical union or from mechanical mixture, and whether the substances are gases, fluids, powders, or solids.
Fiduciary:
One who owes to another the duties of good faith, trust, confidence, and candor. [Corporate officers have a fiduciary responsibility to the shareholders.]
Field of Use:
A term in license agreements which defines and narrows the commercial markets and uses permitted of the licensed technology.
Freeware:
A term usually applied to computer code or software that is made freely available to all through web postings without copyright restrictions.
Intellectual Property:
Intellectual property describes the intangible rights that protect the product of human creativity. Forms of intellectual property include patents, copyrights, and trademarks.
Inter-Institutional Agreement:
The agreement by which JHU and other universities can consolidate marketing/licensing efforts and share the costs and revenues associated with the patenting/licensing of a joint invention.
International Patent Application:
Although most foreign patents are obtained by filing a patent application with the patent office of each country in which protection is desired, several regional filing systems issue a single patent that is enforceable in any member country. For example, a patent issued from the European Patent Office (EPO) in Munich, Germany, can be enforced in European Patent Convention (EPC) member countries (i.e., most European countries); two regional filing systems provide protection in certain African regions (OAPI and ARIPO); and the Eurasian Regional system provides protection in certain countries of the former Soviet Union.
Report of Invention (Invention Disclosure):
The report that provides the necessary information about the intellectual property for evaluation by JHTV.
License Agreement:
A license agreement is the standard contract format by which the University and the Company seek to memorialize mutually acceptable terms regarding an invention. A license is not a sale of JHU’s invention, it is a grant of a right to use it under certain conditions– much like a rental. Strategies for transferring inventions from universities to industry are based upon non-exclusive, exclusive, or limited-field licensing.
1. A non-exclusive license is suitable for technologies, such as research tools, that are of interest to a number of companies.
2. 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.
Material Transfer Agreement (MTA):
Material Transfer Agreements are legally enforceable contracts executed by the provider and recipient of research materials. MTAs stipulate terms and conditions for recipient’s use of the research material.
Nondisclosure Agreement (NDA) or Confidential Disclosure Agreement (CDA):
The agreement by which inventors share confidential and/or unprotected information with researchers at other institutions or a potential licensee.
Non-Exclusive Tangible Property License Agreement:
The agreement by which materials are transferred to recipients who wish to use them in commercially sponsored research.
Option Agreement:
An agreement between the University and the Company during which time the Company will investigate the patent and market potential of an invention; during this evaluation time period, the University cannot license to another party.
Provisional Patent Application:
The application that establishes a filing date with the USPTO. The provisional patent application must be converted to a US utility and/or international patent application within one calendar year or all rights will be lost, with one exception, namely, that the invention has never been publicly disclosed. In that case, the provisional patent application may be re-filed to restart the provisional year.
Reach-through Rights:
Rights of a provider of research materials to ownership or other interests in discoveries or inventions made using the provided material. NIH discourages reach-through rights in transfers between universities of research materials made with federal funds.
Reduction to Practice:
The process of constructing or carrying out the invention and testing for the desired result.
Tangible Property Disclosure and Assignment Form:
The form for reporting tangible property inventions, such as research tools for which patent protection is not appropriate.
Tangible Research Properties:
Tangible Research Properties are ‘things’ produced in the course of, or for use in, research projects. While Tangible Research Properties may embody intellectual property (e.g. inventions, patent rights, copyright, trademarks or trade secrets), they are separate and distinct from the intellectual property within. For example, when you purchase a book, you own your copy of the book (tangible property), but the copyright within (intellectual property) still belongs to the author or publisher. Common TRPs include electronic devices, chemical compounds, genetically engineered mice, immortalized cell lines, genetic constructs, antibodies, data sets and computer software.
Term Sheet:
The document which summarizes the financial terms and conditions under which the University and the Company are willing to enter into a license agreement.
Work For Hire:
A copyrightable work produced either by an employee within the scope of employment or by an independent contractor under a written agreement. If the work is produced by an independent contractor, the parties must agree expressly in writing that the work will be a work for hire. The employer or commissioning party owns the copyright.