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Massachusetts Tech-Transfer Association Adopts Agreement to Guide Joint Inventions

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The Massachusetts Association of Technology Transfer Offices this month finalized a joint invention administration agreement document that provides specific terms for managing intellectual property jointly owned by MATTO’s member institutions.
 
The JIAA is designed to speed negotiations between MATTO institutions in cases of joint IP ownership, which in the past has stalled negotiations with companies interested in licensing the IP, project officials said this week.
 
In addition, MATTO has made the JIAA freely available in hopes of extending its use to all universities and research institutions beyond Massachusetts, officials said.
 
According to MATTO’s administrative coordinator Abigail Barrow, the document was borne out of a “hallway conversation” at the 2007 Association of University Technology Managers’ Annual Meeting in San Francisco.
 
There, “a couple of the [MATTO] directors … said that a lot of the people in their offices [were] spending an inordinate amount of time working out these agreements between institutions,” said Barrow, who is also director of the Massachusetts Technology Transfer Center, where MATTO is headquartered.
 
“It’s also something they hate doing, so it ends up at the bottom of the pile on their desk, and suddenly we’ve got a crisis because someone wants to license the technology and we don’t have an inter-institutional agreement in place,” she said. “So we asked, ‘Can we do something to make this easier?’”
 
Over the following weeks, an informal survey of several other directors of Massachusetts-based tech-transfer offices revealed that they were experiencing similar problems, Barrow said. The MTTC, as a state-funded office that works with various TTOs at Massachusetts universities, research institutes, and hospitals, became the “obvious” office to manage the project, she added.
 
The MTTC was created in 2004 as an extension of the Massachusetts Economic Stimulus Bill in order to support tech-transfer activities at public and private research institutions in the state. MATTO had been formed a few years earlier, and the MTTC became a natural home for the organization.
 
The resulting JIAA, which can be seen here, consists of eight sections outlining terms such as patent prosecution, maintenance, defense/enforcement of patent rights, licensing, reports, payments, and accounting. Barrow said that the idea is for institutions to work through the agreement template once a joint invention has been disclosed and a patent application has been filed.
 
“When there’s been a collaborative research project between institutions and there is technology that comes out of it, then this agreement helps decide which tech-transfer office is going to take the lead; how royalties are going to be shared; how people are going to be acknowledged, et cetera,” Barrow explained.
 
The sooner these decisions are made and implemented, the faster and easier it becomes to outlicense technologies once they become ready, she said.
 
“What it does is speed up the transaction time,” said Barrow. “If you’ve got a company that wants to license a jointly developed technology, then this has to be in place before you can license it, which should make it easier for the institutions to agree and do that part of the deal quickly.”
 
Still, the JIAA is not designed to be a panacea in the case of joint invention ownership, she said. According to its introduction, the JIAA said that “certain business terms (such as the allocation of revenue and expense and the method of calculating the administrative fee for the lead institution) must be negotiated on a case-by-case basis.
 
“In addition, institutional policy differences and unusual intellectual property portfolios may require modifications to certain provisions,” the intro said. “The MATTO members recognize that this agreement format may be negotiated and modified by the institutions entering into it.”
 

“It’s also something they hate doing, so it ends up at the bottom of the pile on their desk, and suddenly we’ve got a crisis because someone wants to license the technology and we don’t have an inter-institutional agreement in place.”

MATTO hired Joyce Brinton, former director of Harvard University's Office for Technology and Trademark Licensing, to develop the document. Brinton, who retired in 2005 and now consults for Harvard and others, was assisted by representatives from MATTO member institutions Beth Israel Deaconess Medical Center, Boston University, Brandeis University, Brigham and Women’s Hospital, Caritas St. Elizabeth’s Medical Center, Children’s Hospital, Dana Farber Cancer Institute, Harvard University, Joslin Diabetes Center, Massachusetts Eye and Ear Infirmary, Massachusetts General Hospital, Massachusetts Institute of Technology, Northeastern University, The Schepens Eye Research Institute, Tufts University, and the University of Massachusetts.
 
Barrow said that each of MATTO’s 31 member institutions contributed to the cost of hiring Brinton, who will continue to develop the document based on feedback from participating institutions over the coming year.
 
In an e-mail to BTW, Brinton wrote that the development of the JIAA “was successful” because all of the MATTO members “were willing to be flexible … [and recognized] that the agreement format was not cast in stone, but that it would serve as a generally acceptable starting point for negotiation, leaving specific details to be worked out on a case-by-case basis.”
 
She said the MTCC plans to revisit the document “in about a year to determine whether modifications should be made to it.”
Barrow said that although not all MATTO member institutions participated in the development of the JIAA, all are free to use it, and many have already expressed interest in doing so. She added that Boston College, which didn’t help develop the document, and the Massachusetts Institute of Technology, which did, have already used the agreement to set the terms of a joint invention.
 
Catherine Ives, director of the Office of Technology Transfer and Licensing at Boston College, told BTW that it used the JIAA on an inter-institutional agreement with MIT that “had been kicking around, as it does, for a number of years, and it never got completed.
 
“We had an old version that I sent to my MIT counterpart, and said, ‘Why don’t we just use the new one, because we should be able to agree on everything really quickly?’” Ives added. “That’s what we did, and it worked like a charm. We didn’t have any major negotiating points. We agreed right off what people’s contributions were, which is always a negotiating point. But everything else – we were done in an hour.”
 
Ives said that ideally, collaborating institutions would work through the agreement every time a joint invention disclosure was filed.
 
“It can be a big deal, because if you don’t have an IIA in place, the partner [institution] is not compelled to share the costs [of patent prosecution] with you,” Ives said. “If you’re a large office, maybe it doesn’t matter so much, because you’ve got a large budget. But if you’re a small office, it matters a great deal.”
 
Barrow also told BTW that MATTO hopes that the JIAA can be adopted by research institutions outside the state.
 
“We also made the decision that we’d just, in effect, open-source it,” Barrow said. “We’ve put it out on our website, and anybody can use it. Obviously all of the MATTO members here don’t just work with Massachusetts-based institutions. They’ve got collaborators all over the world.
 

“So while this is an agreement developed within Massachusetts, the idea is that it should be used by everybody,” she said.

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