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Technology Transfer - The Institute's Million Dollar Baby

By Eddy Ball
March 2007

Rucker and Bill Schrader
Rucker, left, and Martin listened as Deputy Scientific Director Bill Schrader, Ph.D., talked about changes in the technology transfer process. (Photo by Eddy Ball)

Joel Abramowitz and Penta
Biologist Joel Abramowitz, Ph.D., sought advice from Penta about transferring specimens to a collaborator. (Photo by Eddy Ball)

NIEHS convened a meeting on January 26 in Rodbell Auditorium to familiarize scientists with the technology transfer process and introduce impending changes in NIH rules and procedures governing it. William Martin, M.D., director of the Office of Translational Research, opened the meeting by encouraging audience participation. "We want this to be a dialogue," he said. "Technology transfer should always be seen as a work in progress. We're here to talk about ways to make the process work for you."

Joining Martin was John Penta, Ph.D., and three NIH technology transfer specialists from the Bethesda campus, including Director Lili M. Portilla and NIEHS Technology Transfer Advisor Peg Koelble, Office of Technology Transfer and Development, National Heart, Lung and Blood Institute, and Senior Technology Licensing Specialist Susan S. Rucker, J.D., NIH Office of Technology Transfer (OTT), each of whom delivered presentations and took questions from the audience.

Technology transfer refers to the transmission of intellectual property to individuals, commercial organizations and academic institutions in the non-government sector and the protection of patented technology and methodology from unlicensed use. It is also the process that intramural scientists use to exchange research materials, such as samples and laboratory animals, with collaborators at other agencies and institutions.

In his remarks, Penta underscored the importance of technology transfer to the scientists in the audience. "In the past five years," he noted, "NIEHS has made over 1.3 million dollars from licensing patented inventions. Four hundred thousand dollars of that went back to the scientists responsible for the patents." Understanding the process, he continued, can help scientists get the recognition, patent protection and compensation they deserve for their original ideas.

Focusing on Material Transfer Agreement (MTA) issues, Portilla presented an overview of "Transfer of Human Samples at the NIH." She explained that a special MTA policy work group at NIH is in the midst of formulating new policies to govern the transfer and exchange of human samples in order to maintain patient confidentiality in laboratory studies.

Until the new policies are published, Portilla advised investigators to execute MTAs for all transfers of human tissue to or from NIEHS. Investigators should collect samples according to an Institutional Review Board-approved protocol and secure informed consent for transfer. In addition, Cooperative Research and Development Agreements between collaborators should specify sample transfer procedures and conditions of use.

In her presentation on "Working with OTT - Just the Basics," Rucker focused on the protection of intellectual property and the role of Employee Invention Reports (EIRs). According to Rucker, investigators should complete EIRs carefully, providing specific documentation of date of conception for inventions and making certain they submit patent applications prior to a publication or public presentation of results. "In the past," she warned the audience, "we've lost patent battles because the invention wasn't [adequately] documented."

Along with urging careful attention to documenting inventions, Rucker encouraged would-be inventors to work closely with the technology licensing specialists assigned to them, keeping the specialists up to date on progress with the invention during the patent application process. Once the licensing negotiations begin, however, inventors should resign themselves to being kept at arm's length because of conflict of interest concerns.

Rucker cautioned attendees that "scientists often have unrealistic expectations" about how much they should receive for licensing their inventions. To make technology that benefits the public available, NIH often accepts less than top dollar for licensing agreements. "There is [also] a statutory cap on how much the scientist can receive," she explained.

As the meeting concluded, Martin announced that his office is in the process of developing a comprehensive Web site to help scientists with filling out forms correctly and processing their agreements and requests.

Goals for Technology Transfer

During the February 15 meeting of the National Advisory Environmental Health Sciences Council, Martin emphasized the critical role of technology transfer (TT) in the Institute's overall translational research effort. He also set five major goals for the NIEHS Office of Technology Transfer:

  • Increase coordination and planning with other institutes and centers
  • Increase customer service and access to information for NIEHS investigators (and senior leadership)
  • Improve the Institute's TT web site to provide up-to-date forms and information about the necessary steps in completing TT
  • Increase participation among stakeholders with a series of town hall meetings
  • Develop metrics of performance for analyzing TT at the Institute

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