LICENSING AND TECHNOLOGY DEVELOPMENT-
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Report of Invention: The Role of the Lead Inventor

Licensing rights to a company with the goal of producing products and services for public benefit involves numerous time and labor-intensive processes--- and inventor input is critical to all. For efficiency in this complex situation, Licensing and Technology Development (LTD) asks JHU inventors to designate a primary contact inventor, also referred to as the Lead Inventor, at the time a Report of Invention (ROI) is filed. The Lead Inventor is that person who is chosen by all JHU inventors to function as the liaison to LTD, and who is willing to take on key administrative responsibilities in our Marketing, Patenting, Licensing, Finance and Agreement Management processes.

Marketing
As successful marketing is relationship driven, it is beneficial for the Lead Inventor to survey all inventors for company contacts and/or individual companies that have the capability and knowledge to develop and commercialize their innovation. LTD typically makes the initial contact with those companies identified by the inventors. However, once a potential licensee has been identified, the Lead Inventor will be asked to vet any technical questions that the company may have as the invention undergoes technical due diligence by the company.

Patenting
LTD asks the Lead Inventor, in consultation with all inventors, to work with LTD’s selected patent attorney to ensure that any U.S. utility or PCT patent application represents a complete and technically accurate description of the invention. The Lead Inventor will also be asked to review a publication list filed in the patent application (called the “ Information Disclosure Sheet”) to determine if all relevant art has been provided, as required by law.

Because the patenting process may take several years, the Lead Inventor will be called upon periodically to assist with the patent attorney’s response to Patent & Trademark Office actions. Patenting also imparts a burden in regard to critical formal documents (i.e. Declaration, Oath, Assignment, etc.), and LTD depends on the Lead Inventor to coordinate the signing of such formal documents by all co-inventors.

Licensing
Individual input from multiple JHU inventors regarding proposed terms for a license can lead to confusion at LTD and make negotiations with outside companies difficult. Therefore, LTD requests that the inventors coordinate discussions with LTD regarding licensing terms and negotiations through the designated Lead Inventor. After discussion amongst the inventors, the Lead Inventor is able to bring collective and agreed upon concerns and priorities of the group to LTD. Since in this scenario, input will be focused and non-contradictory, LTD is better able to react and convey concerns to the potential licensee.

As negotiations mature, LTD is likely to confirm certain legal language through the Lead Inventor. However, if the Lead Inventor is aware that a particular issue affects one inventor significantly more than the others, LTD asks that the Lead provide this information so that LTD may appropriately correspond with the affected inventor directly.

Finance and Agreement Management
The Lead Inventor’s role in finance begins with coordination of the assessment of each inventor’s percent contribution to the invention as disclosed in the Report of Invention (ROI). These percentages will be used in the apportionment and distribution of licensing revenue. If an inventor leaves JHU without providing new contact information, LTD is unable to complete its distribution process. Therefore, LTD often relies upon the Lead Inventor to update his or her co-workers’ forwarding information.

Finally, as the goal of LTD’s licensing contracts is to get products and services out to the public, these contracts often contain legal provisions regarding a company’s diligence in developing such products/services. LTD often relies on the Lead Inventor to review brief annual reports and help assess whether the company appears to be making a good faith effort to develop the licensed invention for public use and benefit.

LTD is happy to address any concerns or questions regarding the role of the Lead Inventor in the Marketing, Patenting, Licensing, or Finance/Agreement Management of JHU discoveries. Simply call or write Jason Paradis, at (410) 516-6514, or jpparadis@jhmi.edu, for information or forwarding to appropriate LTD personnel.

New Technology Development Associate to Manage the Growing Johns Hopkins Special Collection at ATCC

LTD is proud to announce that Andrea M. DeSanti, MS has joined our staff as a new Technology Development Associate. Her role will be as JHU’s liaison to the American Type Culture Collection (ATCC) to continue to grow the Johns Hopkins Special Collection at ATCC (see Webnotes Sept 2002 http://www.hopkinsmedicine.org/webnotes/licensing/
0209.cfm).

Building upon the very successful collaboration thus far, her goal is to significantly expand the Collection and continue to promote the valuable assets that have been obtained through the efforts of Hopkins’ researchers. She brings to her role extensive experience in scientific research and biotechnology industry economic development. Her post-graduate career focused on academic research in the departments of Pathology, Anatomy, and Neuroanatomy at University of Maryland School of Medicine, for 11 years. Subsequently, she went to work with the State of Maryland Department of Business & Economic Development as Research Associate to the State Technology Coordinator, where she helped establish the first benchmark studies and reports for informed policy making and legislation on behalf of the State’s high technology industries. She later became Director of the Maryland Bioscience Alliance with the not-for-profit organization, the Technology Council of Maryland (TCM). While at TCM, she worked successfully to elevate the prestigious network of Maryland Bioscience companies and institutions to worldwide recognition as among the nation’s fastest growing and cutting edge bio-industry hubs. Just prior to joining LTD, she served as Director of Business Development for the Greater Baltimore Alliance and actively promoted the region to life science companies looking to expand or relocate to Greater Baltimore.

She is very excited to return to the academic environment to pursue the tremendous opportunities in intellectual property commercialization that continue to arise from Hopkins research. Please join LTD in a warm welcome for Ms. DeSanti.