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INVENTORS
HANDBOOK
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Harvards research enterprise is a wellspring of
innovation with the potential to improve lives,
transform industries, and create tremendous
social and economic value. Were here to help
make that happen.
We also lead and operate the Blavatnik Biomedical Accelerator and the
Physical Sciences & Engineering Accelerator.
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Harvard is known as one of the most innovative universities
in the world, globally respected for the discoveries that
occur in University labs and translate into new products
for the benefit of society. Harvard owes that reputation in
large part to the ingenuity and passion of its distinguished
faculty and researchers, and to its constructive engagement
with industry and business. The work of the Office of
Technology Development assures faculty that their
inventionswhether a new therapy, a better material, or
a smart piece of codewill reach their highest potential
in the wider world: solving problems and improving lives.
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Dear Innovator:
In the course of your research at Harvard, Each one of us in OTD is motivated by your
you may develop a technology that has com- dedication to your work. What drives us is
mercial applications. You may seek to obtain the opportunity to engage with you, under-
corporate funding or to collaborate with stand your research thrusts, and assemble
industry. You may need support in sustaining the right partners to skillfully and creatively
the development of a technology that is too put your ideas into practical application.
far along for federal grants but too early to
attract investors. You may be considering The Inventors Handbook provides an over-
forming a startup. Or you may simply want a view of technology development at Harvard
sounding board regarding your latest discov- and the ways you can interact with OTD. We
eries and their potential. hope it will inspire you to work with us.
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WHAT IS
TECHNOL
DEVELOP
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LOGY
PMENT?
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The Office of Technology Development has
one fundamental purposeto advance
Harvard researchers groundbreaking
discoveries for the good of society.
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What is intellectual property?
Intellectual property refers to ideas, process-
es, or inventions that are the products of
intellectual endeavor. This often-intangible
form of property can be protected from
unauthorized usefor example, through a
patent, copyright, and/or trademarkand it
can be bought, sold, or licensed.
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ADVANC
YOUR
RESEARC
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CING
CH
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Corporate partnerships We recommend that you familiarize yourself
with University policies (including the IP
& collaborations Policy), as well as school-specific policies
Harvards primary source of research relating to the performance of sponsored
funding is the federal government, but research and the management of conflicts
cultivating new sources of support is of interest and/or commitment.
essential. Industry sponsorship and research
collaborations can offer a bridging strategy Accelerators
to advance early-stage technologies toward Academic research is often viewed as
commercial partnership, while in the mean- being at too early a stage to attract interest
time adding value to the funded technology. from venture investors or from companies
With our knowledge of the market, business that would develop it further. Moreover,
contacts, and ability to cultivate and sustain federal funding and other conventional
productive relationships with industry, we grants rarely support the kind of proof-
can help you to form strong collaborations of-concept research needed to de-risk
even when commercialization is still far in university technologies.
the future. To help bridge this development gap, OTD
Corporate partners may sponsor research in has established two accelerator programs.
your lab, helping you advance your work in The Blavatnik Biomedical Accelerator and
a single area of mutual interest, or they may the Physical Sciences & Engineering Accel-
enter a strategic alliance with the wider erator provide highly focused grant funding
University. Our strategic alliances fund to help promising technologies reach the
the work of multiple investigators over the next development milestone at which an
course of several years to make progress industrial partner will engage. Accelerator
on broad, complex challenges. funding of faculty research frequently leads
to industry sponsorship, licensing, or the
We take great care not to limit inventors launch of a startup.
rights to publish and present their research
results. We understand the culture of both Harvards two pioneering accelerators
industry and the university, so we are able have become model programs for other
to craft thoughtful agreements that meet universities around the world.
the needs of all parties, protect academic
freedom, and help advance research and
innovation.
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The Blavatnik Biomedical Accelerator An analogous program, the Physical
works in consultation with an independent Sciences & Engineering Accelerator,
advisory committee of leaders from Harvard provides slightly smaller awards and has
and the Boston life sciences community. shown tremendous success at launching
Awards are typically in the range of new startups since its creation in 2013.
$100,000 to $300,000, and approximately
Applications are reviewed on an annual basis.
half of the projects funded in the past have
led to industry partnerships. An important
complementary program for the Blavatnik
Biomedical Accelerator is the Blavatnik
Fellowship in Life Science Entrepreneurship
at Harvard Business School, which engages
recent MBA graduates in the practice of
technology commercialization, especially
through new venture creation.
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REPORTI
& PROTE
YOUR
INVENTIO
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ING
ECTING
ONS
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The first critical step to commercializing
any invention is to inform OTD, so that we
can help you protect it.
Contact OTD when you believe you have If this step is not taken, it is unlikely that the
a scientific or technical discovery with invention will be commercialized so that it
potential for partnering or commercial can provide its maximum benefit to society.
development, and well before publicly
disclosing your observations or publishing In addition to initiating commercialization,
a manuscript. Once an invention has been reporting inventions is the crucial first step
disclosed through a publication, conference to required reporting of new inventions aris-
presentation, poster session, job talk, ing from federal or private-sponsor funding.
or other presentation to non-Harvard
How to report an invention
participants, the possibility of patent
protection outside the United States can The reporting procedure is accomplished
be significantly limited. through a simple Report of Innovation that
calls for a basic description of the
OTD recognizes that publishing and invention and its intended commercial
scientific discussion are of paramount application, the people who contributed,
importance, and when addressed at an other organizations that may have been in-
early stage, IP can be protected while volved, and sources of funding and support.
these activities remain unhindered.
OTD has created a secure and easy-to-use
After you report your invention to us online ROI tool. You can access the tool on
through our online form, we evaluate it our website at www.otd.harvard.edu.
for patentability and marketability.
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Technology development at Harvard University
Technology assessment
and evaluation
Marketing of technology
to an appropriate partner
Public disclosure
for licensing and/or
may follow filing
sponsored research
of patent application
Negotiation and
licensing to existing
company or startup
Commercial development
by company
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What is an invention? Who is an inventor?
Harvards Intellectual Property Policy Inventorship is a legal determination made
defines inventions as ideas, discoveries, by a patent attorney. An inventor on a patent
and/or know-how that are either patentable is someone whose ideas and experimenta-
or potentially patentable. tion are responsible for the conception of
an invention, or who has made a substantial
Patentable subject matter includes: intellectual contribution to the conception of
an invention. An invention may have multiple
C
ompositions of matternew chemical
inventors. In a university setting such as
or biological entities, but not isolated
Harvard, inventors may include the faculty
products of nature
member in whose laboratory the intellectual
M
achinesmechanical or electronic property originated, students or postdocs
devices, including medical devices who carried out work in the lab, and collab-
Articles of manufacturenew products orators or others who contributed to the
made by defined process invention.
P
rocessesmethods of making composi- When you report an innovation to OTD, you
tions, methods of making articles, and even should err on the side of inclusiveness when
some methods of gathering or evaluating naming contributors to the work, so that
data or of performing business. our attorneys can evaluate their possible
Harvard researchers generate other types inventive roles.
of intellectual property in addition to inven-
tions, such as copyrightable creations, in-
cluding content-based scholarly works, and
unpatented materials, such as cell lines.
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Patents
Depending on various technical and busi- A novel invention may include known fea-
ness factors, it may be desirable to seek tures, and a new use for existing processes
legal protection for an invention to enhance or products may meet the standard for
its chances of benefiting society, the inven- novelty. The novelty of an invention can be
tor, and the University. A patent is the surest adversely affected by premature disclosure,
means to protect an invention. or by undue delay of its disclosure.
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Roadmap for typical U.S.
patent prosecution
No
File patent application USPTO Patent Examiner Claimed invention Patent Examiner
with the U.S. Patent reviews application for patentable? issues a non-final
and Trademark Office patentability. Invention rejection
(USPTO) must be useful, novel,
and non-obvious.
Yes
Inventor, Harvard,
and Attorney present
arguments or amended
claims to the Patent
Examiner
Yes No
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What is a patent? What does a patent application contain?
A patent is a commercial tool to protect an A patent application is a portfolio of infor-
invention by giving the patent owner up to a mation about the invention. It contains an
20-year limited monopoly over the technolo- abstract; a discussion about the state of
gy. At Harvard, an invention is defined as an the art in the field of the invention; and a
idea, discovery, or know-how that is patent- detailed description of the invention,
able or potentially patentable, together with including specific claims and, typically,
its associated or supporting technology. examples and graphics. A sworn statement
by the inventor completes the application.
What is patentable?
Patentable inventions include processes,
machines, compounds, compositions of
matter, and methods of manufacture,
together with novel improvements to
existing inventions of these types.
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COMMERC
TECHNOLO
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CIALIZING
OGIES
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The right approach to commercialization depends largely on the tech-
nology and its stage of development. Most Harvard innovations that are
disclosed to us are at a very early stage and need further development
prior to commercial licensingand thats okay. Industry collaborations
and Harvard accelerator funding can help bridge the gap and validate
technologies for particular applications.
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In tandem with this outreach, we do encour- agreement, including provisions governing
age you to cultivate your own relationships the scope of the license (whether exclusive
with industry and explore potential mutual or non-exclusive rights will be granted), the
interests with any colleagues you may have breadth of the field, reporting and diligence
in industry. OTD stands ready to coach you, obligations of the licensee to Harvard, and
as you see fit, in such interactions and pro- royalty considerations payable to Harvard to
vide you with advice and counsel as appro- ensure that fair value will be received based
priate. However, it is important that you let on future sales of any licensed products.
us know sooner, rather than later, when you
have initiated a discussion with industry.
What is a license?
The next step is to develop formal technol- A license is a tool by which the owner
ogy transfer agreements with a partner (or of intellectual property grants another
partners) that OTD determines to be well party permission to assume some or
equipped and well positioned to commercial- all of the owners rights to the property,
ize the technology and maximize its impact. whether or not it has been patented.
Based on the nature of the technology and Licenses typically take the form of
other factors, the best partner may be either written agreements that describe each
an existing company or a startup. partys rights and responsibilities under
the agreement; they may or may not be
Licensing exclusive or restricted. In negotiating
In structuring partnership agreements with licenses, OTD always retains the right
licensees, OTD negotiates terms that benefit to use an invention for noncommercial
all the parties concernedthe inventor, the purposes at Harvard and elsewhere.
University, the partner, and the public. We
also negotiate the key elements of a license
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Startups Startup company formation
Launching a startup can be an exciting and
fulfilling opportunityhowever, only certain Desirable when...
inventions may justify the formation of a new There is a dominant intellectual property
company. OTD can help you analyze several position
factors to determine whether this is the
There is an early-stage, high-risk
most appropriate path to commercialization,
technology
considering:
There are multiple applications of
The potential of the core technology to the technology (i.e., a platform or
provide a solid platform for multiple enabling technology)
markets or product opportunities
There is no existing industry
The competitive environment
The investigator desires a high level
Likelihood of interest from existing of active participation
companies in licensing the technology
Potential advantages
Availability of venture capital, together
with the interest, capabilities, and track Greater focus on and commitment
record of likely investors to the technology
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TYPES OF
AGREEMENTS
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License Agreements enable the use of Material Transfer Agreements are con-
Harvard technologies in commercial appli- tracts governing the incoming or outgoing
cations. We require that licensees diligently exchange of tangible research materials
seek to develop the licensed technology, for (including biological materials) between
the benefit of the public, toward a commer- Harvard researchers and other academic,
cial product, and our license agreements government, and commercial organizations.
include specific development plans that set MTAs offer important protections regarding
forth the steps a licensee will take to do so. such issues as ownership, the ability to pub-
The agreement terms set out various rights lish, and rights to resulting inventions.
and responsibilitiesfor example, ensuring
that the partnership will provide a fair and Option Agreements establish the con-
reasonable return to the University (via ditions under which an industry partner
equity and/or royalties) and preserving the will have the right to negotiate a license to
right of academic researchers to use the IP Harvard IP. Typically, an option agreement
in further scholarly work. precedes a full license agreement in order
for an optionee to obtain funding or further
Licenses to startups typically include equity evaluate a specific technology.
as consideration for rights in Harvard IP. As
an equityholder in these startup licensees, For each type of agreement, OTD makes
the University also enters into stockholder, certain that each party meets its obligations
registration rights, and other equity-related and remains on course.
agreements as necessary.
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WHO WE ARE
Your primary point of contact in OTD will be a member of our
business development team whose technical and industry
experience aligns with your research. He or she will develop a
keen understanding of your laboratorys research program and
will create a plan to advance and commercialize key projects
and technologies.
Stay connected
We encourage you to keep in touch with your colleagues successes,
helpful OTD resources, and networking events by joining our mailing list
at otd.harvard.edu/mailing-signup.
Photo credits:
Page 1, Antony Orth. Pages 2 and 13, Eliza Grinnell/Harvard University.
Page 4, John Soares. Page 6-7, Fotokostic/Shutterstock. Pages 10-11, 14-15,
and 18, Kris Snibbe/Harvard University. Page 21, Conor Walsh. Page 22-23,
Blue Planet Earth/Shutterstock. Page 27, Leonard Rubenstein. Facing page,
Caroline Perry/Harvard University and Eliza Grinnell/Harvard University.
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Lets talk!
If you have an idea to discuss, or if you have
any questions, please contact us. OTD staff are
always close by, with offices in Harvard Square,
at Harvard Medical School, and at the Wyss
Institute for Biologically Inspired Engineering.
In Cambridge
(617) 495-3067
(617) 495-9568 fax
Richard A. and Susan F. Smith Campus Center,
Suite 727E
1350 Massachusetts Avenue
Cambridge, MA 02138 USA
In Longwood
(617) 432-0920
(617) 432-2788 fax
Gordon Hall, Suite 414
25 Shattuck Street
Boston, MA 02115 USA
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2016 The President and Fellows of Harvard College