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Invention Disclosure
Overview
Each year, hundreds of innovative discoveries are made in CDC laboratories. The Technology Transfer Office (TTO) serves as the primary resource for CDC researchers on discovery reporting. TTO assists by helping to determine the best manner to disseminate the technology to others in order to advance our public health mandate. One method is to offer the technology – through licenses – to the private sector for further research and development and eventual commercialization. Often, companies require patent protection to justify the expenditure of resources needed to fully develop a particular technology. Where necessary to ensure the rapid and effective development of a particular discovery, TTO seeks intellectual property protection (both domestic and foreign) on CDC inventions. In other instances, CDC may determine that patent protection is not necessary to advance commercialization of a technology. Importantly, non-patented technologies can still be made available to the commercial sector by way of licenses.
Reporting a Discovery
The first step on reporting a discovery is to contact our office at TTO@cdc.gov. TTO can help CDC researchers work through the process of formally reporting a technology. TTO may have several follow up questions concerning the reported technology such as how it has been used, if the technology has been publicly disseminated, or if a company has expressed licensing interest. Reporting of a discovery is encouraged as early as possible due to possible patentability bars if the discovery is already published. This review process then provides CDC the necessary rationale as to whether filing a patent is in the best interest of CDC research. The completed invention form (called the “Employee Invention Report” or “EIR”) is then fed to the CDC Team at the National Institutes of Health where they handle patent prosecution and make the technology available for licensing.
Technology Protection through Patent Filing
Within 12 months of filing a U.S. patent application, TTO will update its initial patentability and market assessments, and after consultation with the Division that sponsored the research leading to the invention, file international patent applications as appropriate. In general, where international filing is possible and commercial interest in the invention can reasonably be anticipated, TTO recommends at least preliminary filing of an international application. Approximately one year after the filing of an international application, TTO again reevaluates the commercial potential of the invention. When appropriate, TTO files national stage patent applications in those countries where it is believed that patent protection is required for the full development of the invention.
Technology Licensing
If a company would like to acquire rights to use or commercialize either an unpatented material or a patented or patent-pending invention, a license is normally required. A license is a legal agreement by which the owner of an invention promises not to take action to exclude the licensed party from making, using, and/or selling the invention. Where appropriate, licenses to CDC inventions are granted on a worldwide basis. Most biomedical companies, whether large or small, desire worldwide patent protection to secure foreign markets or to use their assets in establishing strategic alliances which can add to the further development of the invention and the distribution of its benefits to the public.