Technology transfer

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In 2005 the Fondazione Telethon created the Telethon Technology Transfer Office (TTTO), within the Scientific Office to both protect intellectual property of Telethon research results and to transfer these results to industry. The final goal is to allow the development and commercialization of drugs, therapies and diagnostics for the treatment of muscular dystrophy and other genetic diseases, in agreement with the Telethon mission. Possible incomes generated by the transferral of intellectual property rights to industry will ensure that the costs of the whole process will be recovered, there will be a prize for the inventors, as well as the funding of more excellent scientific research.
All Telethon-funded inventions can be patented by the Fondazione Telethon, although the TTTO initially concentrated its activity on patentable inventions made by scientists funded by the Fondazione Telethon and working in the Telethon Institutes (TIGEM, HSR-TIGET, DTI).
For invention evaluation the TTTO relies on an international technical Board of experts in patenting, scientific and industrial matters.
The Fondazione Telethon has filed 18 patent applications, 2 of which have been transferred to industry for the development of therapies ready to be tested in clinical trials.

Aims of the technology transfer at Telethon 

  • To exploit the results of telethon-funded research and to ensure their proper use.
  •  To protect intellectual property of research results.
  • To promote the industrial development and application of patented research results in order to allow the availability of such results under fair conditions.
  • To render therapies for genetic diseases available.
  • To increase the value of donations, so that further resources can be obtained and reinvested in research.

Warning for inventors: any written or oral communication to any public audience represents “prior art”, and can invalidate a patent application. before disclosing new results of your own work, think about possible commercial developments and applications and, if applicable, contact the ttto. the filing procedure can be very fast (one month on average), and it almost never requires the delaying of a publication, oral or poster presentation in order to protect the technology it describes with a patent. in the case of a disclosing communication, a patent application can still be filed in the within 12 months of the disclosure.

TTTO activities

  • Providing information to researchers.
  • Defining, updating and following-up of policy, rules, procedures and forms concerning intellectual property and patent exploitation.
  • Monitoring telethon research results.
  • Scouting of new patentable inventions close to telethon’s mission.
  • Evaluating new patentable inventions and following-up of existing patent applications.
  • Intellectual property management.
  • Defining cda, frame agreements, sponsored research contracts.
  • Licensing of intellectual property rights related to patents of the fondazione telethon: contacting companies, negotiating and finalizing ipr transferral conditions.
  • Material/animal transfer agreements (MTA, ATA).

MTAs
MTAs are contracts for the transfer of biological materials that are not commercially available, from the owner towards an external institution for research purposes only. MTAs define issues regarding the property of the material transferred and of the modifications and developments carried out on it by the recipient, the confidentiality on the materials and the rights on inventions and results developed from those materials. Every time a Telethon scientist needs to transfer materials to another profit or non-profit institution or to obtain materials from another institution an mta agreement needs to be signed before any material can be transferred.
For evaluating and processing the MTAs, please contact the TTTO.

TTTO procedures
Scientists should contact the TTTO as early as possible and fill in the Invention Disclosure Form. The TTTO will give a first evaluation on the patentability of the invention (contents, prior art and potential market); prior art searches are performed using the QPAT/ORBIT database. A Technical Patent Board composed of permanent and ad-hoc members will take the final decision on whether to file a patent application. If the Fondazione Telethon decides not to file a patent application, then the Fondazione Telethon will reassign the rights on the intellectual property to the inventor.
Collaboration with the inventors, once the patent application is filed, the TTTO will then identify potential partners. The next step is contacting and negotiating license agreements for the development and commercialization of the protected invention with such companies. A license agreement is a legal document by which the owner of the intellectual property rights related to the invention grants the company the right to use, develop and commercialise the invention. The agreement also defines the economic conditions for the transfer of the intellectual property rights. The aim of the TTTO is to negotiate the best conditions possible to support Telethon’s research and to guarantee the development and commercialization of drugs and therapies for genetic diseases, for the benefit of the whole community.

 

Links
International Patent Offices:

Patent Information: