While much of OTT’s work deals with the review, protection, and management of the inventions made by our faculty, there is a whole other side that is of equal importance: negotiating contracts with industry, be it for licenses, clinical trials, collaborations, sponsored work, or confidential discussions. Just as the world of patents has its own set of jargon and terms, contracts do too. Below we’ve compiled a helpful list of some common terms you may encounter in contracts. You can find part 1 of this blog here. Common Contract Terms & Concepts Continued Representation: A fact that one party states with the knowledge that the other party is relying on that fact to make an agreement. If one makes a false representation, it can allow the other party to have the contract be voided or seen as a fraud in the inducement, meaning that an intentionally untrue fact was construed in the contract. For example we often represent that we have the ability to enter into the contract, or that to the best of our knowledge we are owner of a certain technology. Warranty: A promise of the reliability of a given product or service. If a warranty is incorrect,
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IP, Contract, etc. Jargon
The Ever-Confusing World of Contract Lingo – Part 1
While much of OTT’s work deals with the review, protection, and management of the inventions made by our faculty, there is a whole other side that is of equal importance: negotiating contracts with industry, be it for licenses, clinical trials, collaborations, sponsored work, or confidential discussions. Just as the world of patents has its own set of jargon and terms, contracts do too. Below we’ve compiled a helpful list of some common terms you may encounter in contracts. What is a Contract? At its most basic, a contract is a binding legal agreement voluntarily entered into by two or more parties. Those parties can be individuals, companies, organizations, or as is the case with most contracts OTT handles, the university and an industry partner. Contract law is governed by state law. Courts review contracts based on the law of the contractually specified state or the state in which the contract was formed. Common Contract Terms & Concepts Recitals: Preliminary statements at the beginning of a contract that presents the background and purpose for the contract. Recitals are not part of the actual contract and are merely considered statements that set the stage for the relationship contemplated in the contract and
Continue readingIP Jargon: What are they talking about? – Part 2
When beginning the process of protecting your invention, lots of industry specific terms and legal jargon get thrown around and can seem a bit daunting. To help ease you into the world of intellectual property protection, OTT has collected and defined some of the most common words and phrases that you’re likely to come across. In this two-part post, we’ll discuss jargon heard in patent statutes and applications and during the patent review process and a patent appeal (Part 1 can be found here). In this part we will cover jargon often heard during the patent review and appeal processes. Patent Review Process Jargon Amending the Claim/Amendment: After the patent has been filed, if it is discovered that an aspect of the invention already mentioned within the patent is not fully described or drawn, the patent may be amended to properly describe it. Office Action: After a patent application is submitted, the case is assigned an examiner, who evaluates the application for language and structure as well as prior art. If the application is rejected (which most are initially) the case’s examiner will provide this document explaining why. Non-final Office Action: The Office Action sent after the patent application’s first
Continue readingIP Jargon: What are they talking about? – Part 1
When beginning the process of protecting your invention, lots of industry specific terms and legal jargon get thrown around and can seem a bit daunting. To help ease you into the world of intellectual property protection, OTT has collected and defined some of the most common words and phrases that you’re likely to come across. In this two-part post, we’ll discuss jargon heard in patent statutes and applications and during the patent review process and a patent appeal. In this part we will cover jargon found in patent statutes and applications. Patent Statue Jargon Statutory Subject Matter: Something that can be legally protected under a patent. There are four categories of ideas that can be protected by patents: process (a series of steps), machine (an object consisting of parts), manufacture (an object produced by giving new form to raw materials), and composition of matter (compositions of two or more substances.) Bar date (aka Statutory Bar Dates): Dates that are triggered by statue in the patent application process. If any date is missed all potential rights are lost. These are similar to statute of limitations. Provisional Patent Application: Acts almost as a “placeholder” for a patent application, a provisional application will
Continue readingUntangling the Codes
In technology transfer, as in other fields, there are quite a few acronyms that are thrown around and may seem confusing at first. In this glossary, we break down the different types of agreements that’ll help you untangle those codes. MTA MTA stands for Material Transfer Agreement. Because research and technology development are often collaborative efforts, colleagues may share research tools. MTAs are formal contracts that define the proper use and limits of these shared tools, which could include reagents, cells, antibodies, computer software, etc. It’s important to execute an MTA before any research material is sent or received. The execution of an MTA ensures clear intellectual property ownership and supports necessary patent documentation. IIA IIA stands for Inter-institutional Agreement. IIAs come into play when multiple individuals at different institutions jointly invent a new technology. In the case of joint ownership, OTT will negotiate an IIA to define the rights and responsibilities of the institutions. These agreements encompass intellectual property protection, commercialization, cost and revenue sharing, as well other issues related to protecting and licensing the jointly-owned technology. RA RA stands for Research Agreement. Research agreements detail the obligations, commitments, and expectations of the parties involved over the course of
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