Discoveries from medical research, as well as other forms of innovation and creation in the workplace, may result in intellectual property that has commercial value. The protection and commercialization of such discoveries, creations, and improvements not only enhance healthcare by bringing new technologies and processes to the clinical and public health areas, but also generate revenues to support research, education, and other purposes consistent with Marshfield Clinic’s not-for-profit status. Thus, it is important for Clinic employees to understand their rights and responsibilities concerning the generation, protection, and commercialization of intellectual property. This policy is available only to Marshfield Clinic staff and can be accessed electronically from Document Control found on the Marshfield Clinic Intranet.
Protect Your Intellectual Property Generated through Research.
The protection of intellectual property begins long before a discovery is made and a patent is filed. This is particularly true when the research involves commercial entities outside of Marshfield Clinic whom you may be enlisting for project support. There are three basic things inventors should do to protect their interests and meet their obligations to the Clinic with respect to new discoveries:
- Do not publish any article or abstract, present any poster, or make any public presentation if the information may contain intellectual property unless you have given 30 days notice to Marshfield Clinic, through either MCRI or the Technology Transfer Office, of your intent to publish or present the information.
- Be cautious of what you say, write, or otherwise communicate to potential collaborators and general audiences until the necessary protections of your ideas and discoveries are in place. Even then, when sharing confidential or proprietary information, mark it as such.
- Work with MCRI so that they can prepare, in collaboration with Legal Services, the appropriate legally binding agreements.
Types of Agreements Necessary to Protect Intellectual Property.
- Non-Disclosure Agreement (NDA) An NDA (also known as a Confidentiality Agreement) protects and establishes disclosure rules regarding confidential and proprietary information exchanged in exploratory discussions between parties. Never disclose confidential and proprietary information without an NDA. This policy is available only to Marshfield Clinic staff and can be accessed electronically from Document Control found on the Marshfield Clinic Intranet.
- Material Transfer Agreement (MTA). An MTA protects and establishes rules regarding exchange of scientific and proprietary materials for purposes of research. MTAs must always be used in the transfer of human tissues, DNA, or other samples for purposes of research. Health information often accompanies samples for research, requiring that the nature of the information and rules on use be specified in the MTA or a separate Data Use Agreement. (See below.)
- Data and Material Transfer Agreements. Transfer agreements protect and establish rules regarding exchange of scientific and proprietary data and materials for purposes of research. A material transfer agreement (MTA) is used in the transfer of human tissues, DNA, or other samples for purposes of research. Health information may accompany samples for research or may be transmitted alone. The nature of the information and rules on use must be specified in an agreement. The type of agreement is dependent on the identifiers contained within the data and circumstances under which the data was collected (i.e., under research subject authorization or waiver). Letter Agreements or Data Use Agreements (DUA) are typically used to document the transfer of data. The appropriate agreement is developed by staff in the Office of Research Integrity and Protections upon completion of a Request to Transfer Data or Material form.
- Cooperative Research and Development Agreement (CRDA). A CRDA establishes the rules of the research collaboration among research organizations and investigators. It will describe the purpose and conduct of the research collaboration; define the responsibilities and obligated resources or each collaborator; and specify how research outcomes, such as publications and intellectual property, will be handled.
Commerialization of Intellectual Property.
For more information, please contact Legal Services at (715) 221-7232.
For more information on or to prepare MTAs or DUAs, please contact MCRI’s Office of Research Integrity and Protection’s office at (715) 387-9163. For more information on NDAs and CRDAs, please contact the Director of Office of Research Support Services at (715) 387-9192.