Immune Disease Institute

Public Law 96-517, the Patent and Trademark Act, more commonly known as the Bayh-Dole Act of 1980, enables academic research institutions to own inventions made under federal funding and to become directly involved in the commercialization process of these inventions for the public good.

Pursuant to the Bayh-Dole Act, the Office of Technology Development (OTD) helps the Institute develop technologies discovered at IDI both scientifically and as intellectual property. Scientific development includes "translation" of the invention to practice and demonstration of its proof of principle. These early steps are needed for the development of biomedical products that benefit the public.

Intellectual property development begins with the evaluation of new discoveries for commercial potential. New science, when found to be commercially exploitable, is protected through the patent process. To receive a patent, an invention or discovery must meet three criteria: utility, novelty, and non-obviousness. The process often begins with a provisional patent application. This application, which is not examined by the patent office, establishes a priority date for the invention and allows an investigator up to a year to "reduce" the discovery to practice.

If an invention is found to be verifiable, patentable, and worth developing after this initial development stage, the provisional application is converted to a utility application and proceeds through review at the U.S. Patent and Trademark Office. Often, corresponding foreign applications are also filed through the International Patent Treaty Organization at the time of conversion.

OTD markets the technology to industry and manages the process of disclosure and discussion through use of confidential disclosure and material transfer agreements to facilitate industrial evaluation of the technology. When a company is interested in developing a IDI technology, OTD negotiates license terms and mediates industry-sponsored research related to the development of the technology. Licensing preference is given to small domestic start-up companies, according to the tenets of the Bayh-Dole Act, although any for-profit company is eligible to license technology. Occasionally, a faculty member is involved directly in a start-up company and OTD affords any assistance or consultation required.

OTD also supports the faculty in the interface with industry and government agencies by offering review of contracts for consulting and providing grant application support and instruction in intellectual property matters; it is also a source of general business advice.

The fruits of OTD labors, revenues from licensing activity, are distributed to the IDI General Research Fund, the inventor, and the inventor's laboratory. The IDI and laboratory shares of revenues are used to support unfunded research goals. The inventor's share of revenues is an incentive for IDI's investigators to consider translational aspects of their research discoveries that may have practical potential for public benefit.