The Office of Business Development and the Inventor: Roles in Technology Transfer

The mission of the Office of Business Development at The Wistar Institute is to promote the commercialization of inventions discovered at Wistar for society's use and benefit. Typically this commercialization arises from the licensing of Wistar intellectual property (such as patents or proprietary biological materials) to corporations who then use the licensed Wistar technology to develop new products. These licenses generate income to support further research and education at The Wistar Institute.

The Office of Business Development is also responsible for ensuring that Wistar meets its obligations to the agencies that fund your research, such as the federal government and foundations, regarding new intellectual property that is developed during the course of research at Wistar. As part of these obligations, the Office of Business Development manages the filing of patent applications for new inventions and the execution of material transfer agreements (MTA's) that govern the transfer of proprietary biological materials to and from other organizations.

You, the scientist, are the source of our inventions, producing the "product" the Office of Business Development is working to "sell." Your participation in the patenting and marketing process is crucial to the success of our endeavors. We rely on your contributions which include: promptly informing us of any new inventions before they are disclosed to the public; providing a professional, scientific assessment of your technology and its commercial applications, helping us identify potential licensees, and providing suggestions on how best to license the technology. While you as an inventor do not directly participate in the actual negotiation of license agreements, we do give careful consideration to your comments and suggestions and strive to keep you informed throughout the process.

When you, the inventor, disclose a new invention or proprietary biological material (e.g. a "new technology") to the Office of Business Development, we will make a prompt decision on the best way to protect this new technology. We may recommend that Wistar file a patent application on the technology. The decision to file a patent application will depend on the technology, its state of development (e.g. has a practical use of the technology been demonstrated yet?), the potential applications and market for the technology, and competing technologies that are in the literature or have already been patented. The key questions we will ask when making the decision whether to file a patent application are: (1) will Wistar be able to license the technology to a corporation for commercial development and (2) must the technology be patented in order for us to successfully license it to a third party? The revenues received from our licensing successes are shared between you (and your co-inventors) and The Wistar Institute. Because we are a nonprofit organization, we can never be (nor do we strive to be) a pure business entity that focuses entirely on maximizing profits. Nonetheless, we strive to be as business-like and business-oriented as we can within the nonprofit institution context. We believe that license agreements are the beginning of long-term relationships for Wistar and thus strive for fairness, reasonableness, and consistency in our dealings with industry. We seek to generate the greatest possible return for Wistar without negatively impacting its research and education mission.

The management of Wistar's intellectual property is complex because there are often many conflicting interests. The Office of Business Development works at the interface of science, business, and law within the multiple contexts of the Institute, industry, and government. We know that the key to our success is our ability to work well with our diverse constituencies-inventors, industry, the U.S. Government, and our Wistar colleagues.