Intellectual Property and Technology Transfer
HHRI’s Tech Transfer Office provides guidance for innovations and technology developed by employees on-campus at Hennepin Healthcare Systems and Hennepin Healthcare Research Institute.
The Tech Transfer Office (TTO) has been established as a joint project between HHS and HHRI to assist inventors in ascertaining, protecting, and commercializing intellectual property; complying with requirements for intellectual property developed under federal awards; and guiding employees through the patent application process with assistance from outside counsel. Under the HHS and HHRI Intellectual Property policies, it is the responsibility of employees to disclose in writing new intellectual property to the TTO. Such disclosures should describe the innovation/invention but also detail any public disclosures and funding sources that contributed to the innovation/invention.
Determining Whether You Have Intellectual Property to Protect
If an investigator believes they have created a new piece of technology or an invention, or want more information on intellectual property in general, they can either submit a short questionnaire on the TTO website, or reach out to the TTO at email@example.com. The questionnaire asks basic information about the potential technology in question, who invented it, and provides some initial information to the TTO to facilitate an initial discussion.
Subject inventions must be disclosed to the Hennepin Healthcare officer responsible for intellectual property and patent matters. Inventors may be at various stages of the invention process, and the Tech Transfer Office can ascertain the current state of development and provide guidance on next steps. Submitting the questionnaire is an important first step in disclosure development. If this is the beginning phase and no invention has been reduced to practice, these meetings may be a precursor to how an investigator might direct their energy in future studies or work. If there is an invention, the TTO will seek to understand the investigator’s field of work, the invention, and other pertinent information (such as other inventors or third-party interests) in the invention. This usually occurs over the course of several meetings, during which the investigator will also ask questions and learn about the IP protection process while the TTO representative learns about the invention.
These meetings lead into the completion of a full disclosure of the subject invention. Inventions reduced to practice must be evaluated for potential obligations under applicable federal or industry awards or contracts. The disclosure must be written, identify funding sources, name the inventors, sufficiently identify the invention, and note any public disclosures (such as sales or manuscript publications). The disclosure will be used to both fulfill any existing reporting requirements and as the basis for reaching out to outside counsel. HHRI’s standard disclosure form is available here.
Patent Prosecution Processes
There are various steps to the US and international patent process. The TTO will work with an inventor to choose and communicate with outside counsel about their invention to submit patent applications and respond to office actions by the United Stated Patent and Trademark Office (USPTO).
As the patent develops, the employee inventor may wish to license the invention to a company, or set up a start-up company for the purposes of marketing and further development of the invention. The TTO can assist the employee inventor in discussing options available to them to develop a business and the licensing process. The TTO can also provide Confidentiality Agreements, Material Transfer Agreements, and Licensing Agreements to facilitate the above.
For general inquires and questions about the tech transfer process, please email TTO@hhrinstitute.org
If you have a potential invention, please fill out our brief questionnaire and the Tech Transfer Liaison will contact you for more information.