Tangible Technologies: The Research Tools You Make for Yourself…and Others

It’s difficult to imagine the staggering amount of novel biological materials being produced at JHU every day. One just needs to look around the campuses with the extensive construction to get a feel for the planned expansion of scientific endeavor beyond what JHU is doing even now. Thousands of labs identifying genes of interest, inserting genetic materials into cell lines, vectors and animals, cloning hybridomas and cell lines--all resulting in a treasure trove of research tools we have made not only for ourselves but also the scientific community.

Tangible technologies, tangible property, tangible research materials, research tools, and certain biological materials are all synonyms for those materials produced through research efforts and used to support the hypothesis in the resulting publications. Once the paper is published, the cat’s out of the bag - others will know what you’ve made and what it’s good for.

The US Federal Government requires recipients of their grant funds to share the research tools we have made, as other scientists may want to use them also. We are encouraged to share, to save some other researcher from toiling away at the same problem. By sharing, we participate in the faster progression of scientific knowledge. Discoveries are available for public use and benefit sooner and the human condition advances at a better rate.

Discoveries are not necessarily the same as inventions. Novel research tools are a great example of tangible technologies that can be considered discoveries. They may not be eligible for patenting but, by virtue of their physicality, their laborious method of production, and the discovery that they work, they may be quite valuable nevertheless. The difference here is we perhaps are able to save another researcher from toiling away at the same problem in a commercial environment!

The bridge between discovery and public use and benefit is facilitated by the cooperation of the faculty who have produced the research tool, the intellectual property professionals (Licensing Associates) who find the corporate partners interested in the materials, and the company product development staff who needs the material for internal use or adds value and develops for the scientific research reagent market. Whether the tangible technologies are used in product development activities such as screening assays or in reagent development activities such as purification and conjugation with tags, the corporate partner is an essential player. They take a discovery and run with it.

Many of the monoclonal antibodies in current use are the result of the cooperation of academia and industry. JHU has licensed many hybridomas to companies such as Pharmingen, Santa Cruz Biotechnology, and Becton Dickinson. Most of these hybridomas do not have patent rights associated with them but some enjoy an impressive return on investment not only for the Faculty but also for their Departments and Labs as well.

When a for-profit or commercial entity wishes to obtain tangible technologies or biological research materials discovered or produced at JHU, they typically do so under a License Agreement, regardless of whether the material is patented or not. The license agreements for un-patented materials have many of the same provisions and protections as those for materials and/or inventions that are patented. These un-patented tangible research materials also need to have the faculty member complete a Tangible Property Disclosure and Assignment and submit to Licensing and Technology Development before the Licensing Associate can negotiate a License Agreement with a company on behalf of the faculty and JHU.

In the collaborative spirit, JHU responds to numerous requests from outside scientists at non-profit institutions, such as universities, for materials described in their research publications. In this case, materials should be sent out after a Material Transfer Agreement (MTA) has been fully executed. To make using the MTA process a lot easier, JHU has developed an electronic web-based MTA system. Filing a Tangible Property Disclosure and Assignment for research materials sent out to non-profit institutions is not required.

For more information on this new development see the article in the November issue of Research Webnotes.

JHU is aware that the faculty is experiencing increasing responsibility to fulfill numerous requests by outside researchers for their biological research tools. To help faculty with physically providing these materials, JHU is beginning to explore corporate collaborations to aid and advise JHU with regard to storage options and compliance with domestic and international transport regulations.

The first service designed to help faculty with fulfilling their obligation to share these research tools is the collaboration with the American Type Culture Collection (ATCC). Through this collaboration, faculty members will be able to easily share with outside researchers their most requested biological materials through participation in the Johns Hopkins Special Collection (JHSC) at ATCC.

For more information on this collaboration please see the September issue of Research Web notes.

The establishment of the Johns Hopkins Special Collection brings ATCC regulatory compliance expertise and worldwide shipping capabilities to all JHU scientists active in sharing certain biological research tools. Materials are eligible for inclusion in the special collection if the are published, used for research, i.e. not clinical samples, and have been sent out at least 5 times in the last calendar year. To participate in this growing collection, a Request for Transfer Form must be completed (available on the Biological Distribution and Resource Center’s web site) and e-mailed to Licensing and Technology Development at cvorwal1@jhmi.edu. The Business Development Associate will work closely with JHU Faculty to facilitate the transfer of their materials to ATCC. Once the researcher’s special collection materials are available at ATCC, requesters of the materials can be informed that the material is available directly from ATCC.

Researchers, whether from academia or from corporations, will have also access to the materials in the JHSC through ATCC’s marketing efforts, but as usual, companies will only be able to acquire JHU materials in this special collection upon execution of a License Agreement with JHU. Special collection materials will be provided to non-profit institutions upon execution of an MTA managed by ATCC.

Be assured that JHU is committed to the establishment of services relating to the management of the largest group of intellectual property produced here by our world-class scientific community: tangible technologies.

Please contact Catherine Vorwald, M.S. in Licensing and Technology Development (cvorwal1@jhmi.edu) if you wish to explore how to more easily and efficiently make your research tools available to the greater scientific community.

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