Resource Center: FAQs

You should protect your invention by contacting the RVL office and documenting your ideas in writing, using an invention disclosure form. In order to preserve worldwide patent rights for your idea, a patent application must be filed with the patient office prior to sharing your ideas in a public forum, publication, internet abstract, poster or any forum that includes external people.

Licensing Associates evaluate your idea within the context of what is publicly known about the subject (prior art). This may require the use of patent counsel outside of the institution. It is important that you supply the Licensing Associate with a detailed written description of the invention, and any references and other information as needed. Also important in the filing decision is whether the idea can be turned into a marketable product. Not every invention disclosure/idea is appropriate for patent protection.

Research and Licensing professionals will assess appropriate commercialization strategies for your patented idea. They will identify the appropriate markets and locate companies who may be interested in further developing your ideas into marketable products. Once a "partner company" is identified, the licensing professional will negotiate an agreement transferring commercial rights to the company in return for appropriate compensation to the institution.

All agreements for personal consulting are subject to institutional review and approval for compliance with institutional policies. The Office for Interactions with Industry (OII) administers this process. These agreements are entered into by an investigator or PHS employee (the "Consultant"), to perform services for a third party. This does not, and must not, involve PHS resources, property, technology, information or other assets of PHS or the hospitals. OII reviews these agreements solely for their compliance with institutional policies, not for the personal, business interests of the Consultant.

To start the process, the interested consultant should send an email, with the proposed agreement, to PHSOII@partners.org or fax it to Tasha Murray's attention at 617-643-9223. This will initiate the review process. The consultant will be asked to complete a conflicts questionnaire, and after the questionnaire has been completed OII will proceed to review the agreement. The Consultant should contact OII through the above address with questions or queries about status of the approval process.

a) Buy it. If the material is commercially available – i.e., you can buy it – and the seller asks you to sign a contract, please contact Research Management [link to website] for assistance.

b) Receive it for free (or a nominal transfer fee) under a Material Transfer Agreement (MTA). The Transactional Affairs Group within RVL negotiates most MTAs concerning research materials provided to you by another researcher or company. Please complete the PI MTA-in Questionnaire [link], and email it to the Transactional Associate responsible for your department [link to departmental assignments]. Please also email the Transactional Associate any related documents, such as the MTA (if you received one) and copies of your correspondence with the provider institution or company.

In the majority of circumstances an investigator must have a finalized MTA, signed by an authorized Hospital signatory and the recipient institution, prior to transferring any materials to an outside party. A completed, fully executed MTA is the only way the Hospital can protect the rights and interests of MGH/BWH and yourself as well as be certain the institution is compliant with its own agreements. If research materials are sent before the MTA is signed by both sides, there may be no restrictions on how the recipient may use the materials – such as for commercial use, or to further distribute to other parties.

To request an MTA to send material to an outside party, please complete the PI MTA-out Questionnaire [link] and email it to the Transactional Associate responsible for your department [link to departmental assignments]. For transfers to U.S. academic institutions, you may complete the Mini-Questionnaire [link]; if the answer to all questions are “no,” you may send materials without an MTA. You still must provide your Transactional Associate, in advance, with a copy of the Mini-Questionnaire, as RVL tracks these transfers.

The transfer out of any Human Tissue – i.e., clinical specimens, research specimens, and/or patient data – always requires IRB review, but an MTA is not always required. As a matter of course, the transfer out of Human Tissue to an academic institution or academic collaborator will not require an MTA: If you expect no compensation other than the costs of preparing and shipping the material; if the specimen or data were not collected in a protocol or study funded by a company; if the recipient does not plan to use the Human Tissue in industry-supported research; and if the Human Tissue has not been previously transferred to a for-profit company. In these circumstances, a letter agreement prepared by IRB is sufficient. If the answer to any of these questions is yes, an MTA may be necessary. For further guidance, you may refer to the IRB website at http://healthcare.partners.org/phsirb/guidance.htm

Transfer of Human Tissue to a for-profit entity will always require an MTA and an actual collaboration. Such transfer is permissible only if it is part of a genuine research collaboration in furtherance of the hospital’s medical and educational mission; the hospital investigator intends to maintain an active, ongoing involvement in the company’s work with the specimens in an area of science that is of interest to him or her; the results of the study will be made readily available to the hospital investigator; and it is reasonably likely that a publication may result and the investigator may freely publish. PHS entities do not accept compensation for these human tissue transfers (except for documented preparation costs and shipping fees).

Typically, a CDA can be finalized in a matter of several days. An MTA, depending on its complexity, may require a few weeks to a few months to be finalized. In the case of a CDA, the process is expedited when the other party agrees to accept the hospital’s draft agreement. Where a company insists on using its own form agreement, finalization of the agreement may be protracted if the document requires any considerable degree of negotiation for compliance with Hospital policies. Usually, negotiations in a CDA will center on the definition of confidential information and the period of time in which it is to be held in confidence; the exceptions to confidentiality; and the law to be applied in the event of a dispute.

As a rule, there is far greater variability with respect to MTAs when it comes to a timeline for completion. Often, if there are no complicating circumstances, a Simple Letter Agreement or a UBMTA Implementing Letter is finalized within a week. More extensive MTAs with other academic institutions are likelier to be concluded within a few weeks. MTAs with companies, however, frequently entail more protracted negotiations. During such negotiations, draft documents are exchanged and revised, and the parties may confer to discuss particular areas of disagreement. Such negotiations characteristically focus on protecting the hospital’s interests in the research results and in any intellectual property coming out of the research, and on assuring that the investigator will be able to publish his or her study timely and without undue restriction.

If there are several different sources from which you can obtain a material, try to pick a non-profit or academic entity. For-profit corporations tend to require longer negotiations. Make sure the questionnaire is completely filled out, specifically remember to include a phone number and email address when listing contact information for the other side. Avoid using interoffice mail and the fax machine as much as possible. Email and FedEx are far superior. Please provide us with all of the information you have; more is better.

Under Partners policy, only an authorized official may negotiate and execute agreements on behalf of the hospitals. In addition, Material Transfer Agreements often contain a license to intellectual property rights to another entity and as such, need to be fully vetted by RVL in order to avoid taking on legal risk by the institution and investigator.

There are several important terms contained in most licenses to intellectual property. While not comprehensive, below find a brief description of the terms in a typical license agreement for which a company will be responsible:

Financial:

License Fees: due upon signing, achieving milestones, annual maintenance fees and minimum royalty payments

Patent and other intellectual property related costs: past and future prosecution, maintenance and litigation costs

Royalties: on sales of product covered by licensed technology

Sublicensing royalties: on payments received by company from sublicensees

Equity: if appropriate

Non-financial:

Reserved Rights – the institution will reserve a right to use the invention for itself and other not-for-profits, for research and education purposes.

Due Diligence - the company will be required to demonstrate it is using its best efforts to develop a commercial product. Such evidence is captured by time specific product development milestones, documented research and development spending, and annual reporting.

Indemnification and Insurance – the company will assume all product liability risks that arise out of the commercial development of the product. The company will have to maintain insurance consistent with the requirements of the institutions insurance carrier.

Companies or entrepreneurs who are interested in obtaining intellectual property rights to inventions owned by Partners Healthcare or its affiliated hospitals should contact the responsible Licensing Associate who manages the technology. The Licensing Associate will be able to tell you more about the technology and its availability. S/he will determine your needs and objectives for developing the invention and ultimately, if institutional and company interests are in alignment, offer license terms for the technology. Depending on the technology, these conversations can progress quickly to license terms, or in more complicated situations may take several meetings to appropriately assess the opportunity. Additional research may be performed at Partners by the inventors or others to advance the technology in the early years of the license.

Please contact the appropriate RVL Licensing Professional to make arrangements to learn more about our available technologies and potentially exchange confidential information relating to licensing opportunities.

A listing of available technologies from the institution are provided on our Available Technologies. Since new technologies arrive in the office on a daily basis and become available due to license terminations, we recommend that companies interested in a technology contact licensing managers directly to get the most current information.

Partnerships between Partners HealthCare and industry partners have emerged as a key force in the development and commercialization of biomedical and healthcare innovations. Partners has worked with a variety of companies to create arrangements between investigators, clinicians, centers and administrators to share assets that enable a collaborative benefit.

Partners HealthCare has long been known for its innovation and leadership in the areas of research, development and clinical care. In particular, advanced programs in Personalized Medicine, Molecular Diagnostics, and Information Systems (IS) continue to generate much activity. More details can be found in our Key Corporate Initiatives page.

Partners HealthCare alliances span the spectrum of specific projects to broad, strategic alliance relationships. Transactional relationships include those based on licenses and institutional consulting. At the other end of the spectrum are collaborations in which both PHS and industry contribute significant resources to co-develop next generation solutions and services that align with key visionary strategies within PHS.

The Fund began in March 2007 as a separate LLC entity operating under the Research Ventures & Licensing group within Partners HealthCare. The Fund is a pool of money that can be used to advance the commercialization of Partners HealthCare technologies. Designed as an evergreen fund, the fund is governed by a Board of Managers comprised of the Presidents of the Brigham and Women’s Hospital and the Massachusetts General Hospital and the Chief Academic Officer of Partners HealthCare. Investment oversight is provided by an external, independent Investment Committee composed of experts from industry, venture capital and academia.

The funding comes from the two main entities in the Partners HealthCare network, the Brigham and Women’s Hospital and the Massachusetts General Hospital.

Any technology, clinician or investigator in the Partners system is eligible for funding. Investigators should contact the Licensing Manager for your entity and department, or contact the Fund Team directly. The Fund Team will arrange a meeting and begin the diligence process described below. Throughout this process the Fund Team works with investigators and many others to evaluate the commercial viability and pathway of the opportunity.

The due diligence involved in investment funding can take up to six months to complete. Once the Fund Team decides to recommend an investment, a proposal is made to the Investment Committee who votes on a decision. If positive, then the time to close the deal on an investment will depend on many factors including, but not limited to, deliverables, demand and presence of co-investors.

Our focus, as set by our charter and mission, is on technologies developed within the Partners system by the investigators and clinicians at any Partners entity.

The Partners Innovation Fund focuses on the entire Partners HealthCare System and as a result, technologies range from devices, to diagnostics, to therapeutics to information systems. For information on the portfolio or recent investments please click here.

There are a number of ways to contact the Fund. Since we work closely with the licensing professionals in Research and Licensing, investigators can reach us by contacting licensing managers directly. Investigators can also contact us directly or through other referral sources such as entrepreneurs, other investors or service individuals who have worked with the team in the past.