Intellectual Property and Technology Transfer

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HHRI’s Tech Transfer Office provides guidance for innovations and technology developed by employees on-campus at Hennepin Healthcare Systems and Hennepin Healthcare Research Institute.

The Tech Transfer Office (TTO) has been established as a joint project between HHS and HHRI to assist inventors in ascertaining, protecting, and commercializing intellectual property; complying with requirements for intellectual property developed under federal awards; and guiding employees through the patent application process with assistance from outside counsel. Under the HHS and HHRI Intellectual Property policies, it is the responsibility of employees to disclose in writing new intellectual property to the TTO. Such disclosures should describe the innovation/invention but also detail any public disclosures and funding sources that contributed to the innovation/invention.

Determining Whether You Have Intellectual Property to Protect

If an investigator believes they have created a new piece of technology or an invention, or want more information on intellectual property in general, they can either submit a short questionnaire on the TTO website, or reach out to the TTO at tto@hhrinstitute.org. The questionnaire asks basic information about the potential technology in question, who invented it, and provides some initial information to the TTO to facilitate an initial discussion.

Disclosure Development

Subject inventions must be disclosed to the Hennepin Healthcare officer responsible for intellectual property and patent matters. Inventors may be at various stages of the invention process, and the Tech Transfer Office can ascertain the current state of development and provide guidance on next steps. Submitting the questionnaire is an important first step in disclosure development. If this is the beginning phase and no invention has been reduced to practice, these meetings may be a precursor to how an investigator might direct their energy in future studies or work. If there is an invention, the TTO will seek to understand the investigator’s field of work, the invention, and other pertinent information (such as other inventors or third-party interests) in the invention. This usually occurs over the course of several meetings, during which the investigator will also ask questions and learn about the IP protection process while the TTO representative learns about the invention.

These meetings lead into the completion of a full disclosure of the subject invention. Inventions reduced to practice must be evaluated for potential obligations under applicable federal or industry awards or contracts. The disclosure must be written, identify funding sources, name the inventors, sufficiently identify the invention, and note any public disclosures (such as sales or manuscript publications). The disclosure will be used to both fulfill any existing reporting requirements and as the basis for reaching out to outside counsel. HHRI’s standard disclosure form is available here.

Patent Prosecution Processes

There are various steps to the US and international patent process. The TTO will work with an inventor to choose and communicate with outside counsel about their invention to submit patent applications and respond to office actions by the United Stated Patent and Trademark Office (USPTO).

Business Development

As the patent develops, the employee inventor may wish to license the invention to a company, or set up a start-up company for the purposes of marketing and further development of the invention. The TTO can assist the employee inventor in discussing options available to them to develop a business and the licensing process. The TTO can also provide Confidentiality Agreements, Material Transfer Agreements, and Licensing Agreements to facilitate the above.

For general inquires and questions about the tech transfer process, please email TTO@hhrinstitute.org

If you have a potential invention, please fill out our brief questionnaire and the Tech Transfer Liaison will contact you for more information.

Policies

HHS/HHRI IP Policy

Forms

Resources

FAQs

What constitutes “intellectual property”?

Intellectual Property law governs the ownership of intangible materials and creations of the mind, such as artwork and inventions. It is divided into four main areas: copyright, trademark, trade secrets, and patents.

Copyright concerns itself with anything “fixed in a tangible medium of expression”—this is the protection of works such as novels, artworks, compositions, etc. While there are some limitations on copyright—such as not being able to copyright a fact—most works enjoy some manner of copyright protection.

Trademarks indicate where a product originates; if you are selling something on the market and it comes to be recognized by a name, there’s some degree of trademark protection that can likely be attained, even without necessarily registering the mark.

Trade secrets are just that—secret. Entities may have particular ways that they manufacture or do business that aren’t necessarily protectable by other forms of intellectual property. The way to protect those methods is to keep them secret.

An issued patent allows an inventor to exclude others from making the same invention—thus they get the rights to use the invention how they wish, such as through making the invention and selling it on the market, or by licensing the invention to others so they can commercialize it.

I have a great idea for an invention! What do I do?

It is particularly important to get in touch with the Tech Transfer Office as soon as possible to discuss your options, especially if the invention is tied to a manuscript that is soon to be published. Please contact the TTO representative at tto@hhrinstitute.org immediately if this is so. There are a variety of ways that your intellectual property can be protected, and the TTO will provide you with information about the process and ask additional questions.

How long does it take to get a patent?

Getting a patent is a multi-year process; the gap between a provisional filing and a non-provisional filing may be up to a year, and there may be a significant amount of time spent in negotiation with the USPTO on the scope of what patent rights, if any, may be granted, in addition to many other junctures that might extend the period of time. In short, here are the main steps of developing a patent.

First, the tech transfer office requires a disclosure of what the invention is. The tech transfer office will work with the inventor(s) to write up a disclosure that provides enough information for evaluation. 1-3 weeks.

Second, once there is an adequate, enabling disclosure, the office will reach out to outside counsel and work with them and the inventor to create and submit a provisional application. 1-2 months.

Third, if the invention has market potential, the next step of the patenting process, a non-provisional application will be filed. This may occur up to a year after the provisional is filed.

Finally, after a certain amount of time, the USPTO (or other patent-conferring sovereign entity) will begin review and there may be office actions back and forth between the USPTO regarding the state of the invention. After there’s been a negotiation between all parties, a patent may issue from the USPTO. 3-5 years after initial patent application submission.

What is a Patent Cooperation Treaty (PCT) Application?

A Patent Cooperation Treaty (or PCT) application is a type of patent application that allows for patent applications to be submitted to those countries that have signed on to the Patent Cooperation Treaty. Rather than applying for a non-provisional application to the USPTO by itself, an applicant may use the PCT application to also file in the other 150 Contracting States (including the United States).

This is useful as patents are limited by jurisdiction; a patent received from in the United States can only be enforced within the United States, not other countries. However, the more countries entered into, the more tracking and fees required.

More information on PCT applications are available from the World Intellectual Property Organization.

Do I need to report IP that I developed off-campus on my own time?

Under HHS and HHRI policy, it is the responsibility of all employees to disclose any discovery, invention, innovation, or original work made as a part of an employee’s work at HHS/HHRI, made under the auspices of either organization, or made using their resources. However, exempted from the policy are “any discovery, invention, innovation, or original work for which no equipment, supplies, facility or trade secret information of HHS or HHRI know-how was used and which was developed entirely on the employee’s own time, and which does not relate directly to the business of HHS or HHRI or to HHS or HHRI actual or demonstrably anticipated research or development, or which does not result from any work performed by the employee for HHS or HHRI.”

For example, if an employee writes a fictional novel on their own time while at home, HHS/HHRI would not have an ownership interest in such a novel. However, the more institutional resources are used in the development of that novel, the more interest HHS/HHRI might have. Because there may be many factors involved, employees are encouraged to contact the TTO and discuss any interest HHS/HHRI might have, particularly if the intent is to commercialize the IP in some way.

Those pursuing other intellectual property independently should be aware that if the intellectual property they develop has financial value, it may need to be reported yearly as part of the employee’s conflict of interest reporting.