This generally refers to the process of formally licensing usage or commercialization rights of new discoveries, inventions, or innovations, arising from scientific research to another party. Typically, it involves copyright or patent protection, followed by licensing to a commercial partner, as further described in our Innovation Guide.

Academic technology commercialization involves the licensing of innovations by universities, teaching hospitals, research institutes, and patent management firms to the commercial sector. These licensing transactions add billions of dollars to the U.S. economy and supports hundreds of thousands of jobs. It helps generate new businesses, industries, and markets. Most importantly, it leads to the development of products and services that improve our health and quality of life.

Protecting Intellectual Property

Research at Mount Sinai frequently gives rise to innovations that enhance products, processes, and approaches, which then in turn create entirely new markets and opportunities. Intellectual property (IP) rights, including patents and copyrights, are what enable inventors to benefit from these innovations.

Under U.S. law, an inventor is a person who makes an original, significant intellectual contribution leading to the conception of the invention. This is an important distinction, as inventorship is significantly different from authorship on an academic publication.

It's also important to understand that any IP developed by students, trainees, post-docs, fellows, faculty, or employees of Mount Sinai, or under Mount Sinai supervision, is owned by the Mount Sinai Health System and managed under Mount Sinai Health System Intellectual Property Policy.

IP is protected in four ways: patents, trademarks, copyrights, and trade secrets. Each form of legal protection is governed by its own body of federal and/or state law. Trade secrets and other ownership legalities are regulated by business law. Mount Sinai Innovation Partners can help you learn about protecting your IP.

Public disclosure means discussing your invention openly to those outside of Mount Sinai and it can result in losing your right to patent that invention. Public disclosure includes sharing your IP through journal publications, website publications, and conference presentations. More generally, it is when you make intellectual property publicly available and accessible to those who are skilled in the art to which the invention relates.

To avoid losing your right to patent your IP, your first step is disclosing an invention to MSIP. MSIP works with you to understand and assess your discovery to determine its commercial and IP potential. MSIP will continue to discuss your technology and its future development to confirm a commercialization plan.

A patent is a legal monopoly that allows the patent owner to prevent others from making, using, or selling an invention covered by your patent. Patents are granted by governments. Generally, they may be enforced only in the jurisdiction that has granted them.

Prior art is any relevant publication, patent, or event prior to invention that may be considered by the patent office in evaluating patentability of the invention. Anything that has been published, used in public, offered for sale or sold by anyone before the inventor(s) made the invention, may become a part of the prior art for that application.

A copyright grants legal protection to the authors of original works, including literary, dramatic, musical, artistic, architectural, and certain other intellectual works, and is available to protect both published and unpublished works. Owners have the exclusive right to authorize others to reproduce the work; create derivative works; distribute copies of the work; perform the copyrighted work publicly, display the work publicly, and if it is a sound recording, to perform the work publicly.

Bringing Technology to Market

Commercialization is the process or cycle of introducing a new product or production method into the market. Many technologies begin in the laboratory and are not practical for commercial use, but additional translational research -- done at Mount Sinai or with a commercialization partner -- can further develop a technology for commercial use. For questions relating to commercialization and agreements, please contact MSIP or consult our Inventor's Guide.

A confidentiality agreement is an arrangement whereby one party agrees to hold the proprietary technical and/or business information of the other party in confidence. Confidentiality agreements or non-disclosure agreements are a standard tool and many organizations begin technology discussions with this tool.

A Material Transfer Agreement (MTA) is an arrangement where one party provides specific material to another party under specific conditions. You should always have an MTA when sending materials to any outside collaborations with industry or other academic institutions. MTAs are typically used to protect materials that may be proprietary and/or embody Mount Sinai IP.

Option agreements enable companies to evaluate technology and consider a licensing agreement. Licenses can be exclusive to one commercial party or non-exclusive which allows licensing the technology to multiple parties. These options and eventual licensing agreements allow the licensee to practice protected intellectual property (IP).

Licensing agreements are large and organizationally significant agreements, frequently requiring both parties to engage in significant due diligence around technical capability, financial abilities, and future commercial potential. Understandably, these negotiations can span months to reach a commercially appropriate agreement between the parties.

MSIP can help answer any questions on the timing of a license agreement related to your research, and we encourage you to contact us.