Guide to Intellectual Property Policy
MedStar Health has put in place an infrastructure for supporting MedStar Health Associates and affiliated inventors in developing and commercializing their most promising MedStar Health Inventions. This infrastructure is called MedStar Inventor Services (MIS). MIS acts in compliance with MedStar’s System-wide Intellectual Property Policy (Policy) which ensures that Inventions created at MedStar are analyzed, developed and commercialized in an efficient and professional manner.
Intellectual property is defined as any of various products of the intellect that have commercial value, including copyrighted property such as literary or artistic works ideational property, such as patents, business methods, and industrial processes; or the set of rights protecting such works and property from unlawful infringement.
This guide will aid in reviewing the MedStar Intellectual Property policy and provide additional educational information not generally included in a corporate policy. Please contact MedStar Inventor Services ([email protected]) for questions or clarification regarding this policy.
The following guidelines are organized according to the articles and sections of the IP Policy. Please read the Policy articles first (MedStar's IP Policy), then the guide’s explanation.
There is an extraordinary amount of intellectual capital within MedStar Health and MedStar encourages and rewards creativity and innovation. This Intellectual Property (IP) policy defines how MedStar will transform ideas and inventions into commercial products that benefit patients, and how the rewards will be shared with the inventors. Success at this venture will enhance the ability of MedStar to attract the best and brightest minds.
2. Policy Statement
This one’s pretty self-explanatory.
This section generally explains who is subject to the MedStar IP policy and who can grant exceptions to this policy. This is explained in more detail in later sections.
Please read this section closely and refer back to it often as you read the Policy. Capitalized words in legal documents have very specific definitions. Capitalized words in this guide refer to the defined words in the Policy. These definitions are not definitions out of a dictionary but are crafted to have specific meanings. For example, “Invention” is not only defined as something that is patentable, but is also copyrights, trademarks, and even software. Lumping various forms of IP together under one term allows MedStar to refer to “Inventions” instead of “patentable invention, software, algorithms, copyrights, trademarks…”
The Responsibilities section outlines who is responsible for doing what. Basically, Inventors (capitalized means go check the definition!) need to sign a statement of compliance with the policy. This might be in your employment contract and may just say that you agree to comply with all MedStar policies. There is also a section in the Invention Disclosure Form where you sign and agree to comply with the policy. You also have to let MedStar Inventor Services know if your idea has been made or is going to be made public. This is very important for patenting. If you let the cat out of the bag too early, you may not be able to file for a patent for your idea.
Commercializing Inventions is not an easy, short or cheap process. MedStar has created MedStar Inventor Services to specifically take on this task. MIS takes on the responsibility of assessing the feasibility of commercializing your Invention, taking the steps necessary to protect your idea (patenting, copyrighting, etc.) and finding commercial partners to make and sell your Invention. MIS takes care of all the legal agreements (and there are a lot) that accompany commercializing an Invention.
MedStar uses Commercialization Agents to assist in commercializing Inventions. In March of 2011 Cleveland Clinic Innovations signed an alliance with MedStar to add their expertise and provide specialized Cleveland Clinic Innovations commercialization officers to work at MIS. This agreement states that any confidential information (i.e. your ideas or inventions) you tell these officers stays confidential and the Commercialization Agents (i.e. Cleveland Clinic Innovations) cannot run off with your idea.
MIS has an Oversight Committee to make sure that everyone is following the IP policy and any other agreements that might be relevant. Who’s on this committee you ask. Did you notice the capital letters on “Oversight Committee”? It’s a defined term, go look it up in the Definitions section of the Policy.
The rest of this section is self-explanatory.
Only the CEO/President or the Chief Medical Officer of MedStar Health, Inc., in consultation with the General Counsel or his/her delegee, may grant exemptions to this Policy. Pretty simple. Assume you’re covered by this policy.
7. Consequences of Non-Compliance
Non-compliance with this Policy could get MedStar in trouble and you may be subject to disciplinary action.
8. Requirements and Guidelines for Implementing the Policy
8.1 Invention Ownership. MedStar does not want to own all inventions you ever create. But, if you create something that is in the field of health care and is directly related to your employment with MedStar, you make it on MedStar time or use MedStar resources (even a computer to do a Google search), MedStar will own that invention. More in Section 8.3.
It might sound severe to think that MedStar owns all of your inventions, but there is a good reason for it. If we’re going to commercialize these Inventions, we’ll need to execute legal documents to transfer rights to Inventions or instruct attorneys. We can’t do that if we don’t own the Inventions. If you worked at another company, they might give you $1 or nothing for your inventions. They figure that they’re paying you to be innovative. By contrast, MedStar shares half of the revenue (after expenses) with the Inventors. That is the most generous revenue share policy that we’ve ever heard of.
8.2 Disclosure. You’ve got to let MIS know about your Invention so they can help you commercialize it. You also need to disclose inventions that you create on your own time so that MIS can determine that MedStar does not own it. It’s a pain to go back in time when MIS finds out 5 years down the road that you invented something and didn’t disclose it. Better to disclose now in compliance with the Policy so that MIS has a record that you made it in your garage, on your own time and with your own money. More on this in the next section.
8.3 Determination of Rights. Again, MedStar does not want to own all of your Inventions. If you are an ICU nurse at MedStar Union Memorial that dabbles in quantum physics in your spare time and you create a cold fusion reactor in your garage, on weekends and with your own money (come on, it could happen), MedStar is not going to claim ownership of that Invention. If you come up with an idea that directly relates to your job at MedStar or you use MedStar resources to help you develop your idea, MedStar will have ownership of that Invention. This is a common practice at just about any company, for and non-profit. However, if you work in the process improvement department and come up with a new app that helps patients navigate the confusing halls of the hospital (a true story), MedStar will own that invention.
So here’s how it works. Disclose your Invention. If you invented it at MedStar, MedStar will determine that MedStar owns it and will start the commercialization pathway. If you believe MedStar should not own the invention because you did it in your garage…etc., please request the Determination of Rights form by emailing [email protected]. MedStar Inventor Services will send you the form to complete. MedStar Inventor Services with the Oversight Committee will review your form and consider the circumstances of how the Invention was created and if it does not relate to your employment or affiliation with MedStar, MIS will not claim MedStar ownership. If you significantly develop new aspects of your invention or make significant improvements, you must again disclose the Invention to MIS for a Determination of Rights. This is simply to prevent an Inventor from initially inventing an Invention at home and then using MedStar resources to refine and further develop it without MedStar ownership.
If MedStar determines that it does not own your invention, you may do whatever you like with it.
8.4 MedStar Health Invention Review Process and Path to Commercialization. This section describes what MedStar is going to do with MedStar owned Inventions. Keep in mind that the goal is to find a third party company (“Licensee) to license the technology, develop it, market and sell it. With very few exceptions (namely mobile apps), MedStar is not going to be the company who sells the product. We are looking for a third party who has expertise in that particular field for each invention. This process is aided if you have any contacts with companies who might be potential licensees.
8.4.2 If MIS decides to move forward with commercializing your Invention, MIS may invest substantial resources in protecting (patenting, copyright, trademark, etc.), helping identify funding sources for additional development, marketing to potential licensees and negotiating the license agreement. See the MIS overview [insert link] for more information on the commercialization process. During this process MIS will instruct attorneys and carry out certain functions that require MedStar to own the Intellectual Property. MedStar cannot license technology it doesn’t own.
A quick note on patenting. Patents are very expensive and MIS will analyze your Invention and decide if the Invention is a patentable invention (i.e not a trademark, copyright, etc.) and whether filing a patent is worth the expense. MIS will look at current products on the market and patents and patent applications that are currently filed. There are two ways to look at patents. First, can you get a patent on your invention that would be useful to a company? Many times the patent scope is so narrow that it is easy for competitors to create a similar product that does not infringe your patent. Second, what other patents are out there that your invention might infringe? In this case, MIS might be able to get a patent issued on a few aspects of your invention, but making and selling the product may infringe others’ patents.
8.4.3 As necessary, MIS will work with you as a team to further develop or collect data validating the Invention concept.
8.5.1 Release of ownership of the Invention to the Associate or Affiliated Inventor. Unfortunately, for a variety of reasons, sometimes great ideas and Inventions do not fit the licensing model of commercialization or are not financially lucrative products. Occasionally MIS will make attempts to commercialize your Invention but will determine at some point that further investment in money or time are not worth the potential reward. In these cases, MIS will notify you of the decision and you may request that MIS returns ownership to you.
8.5.2 If MIS decides to release ownership back to you it does so for the invention in the state that the invention is in at the release date. If you make substantial improvements to the invention (that might change the commercialization potential) a new disclosure must be submitted. MIS wants to prevent a situation where it releases a Walkie-Talkie and the Inventor improves it to an iPhone.
8.5.3 MIS doesn’t want to get sued for using any intellectual property that was disclosed to it and subsequently released back to the Inventors. This return of rights is limited to internal use for our primary core businesses, and would not allow us to commercialize it.
8.5.4 As a condition of releasing the invention, MIS would get reimbursed for any documented expenses related to patenting, proof of concept studies, prototyping, etc. but only if you are successful in commercializing the invention. Upon request, MIS will supply to the Inventors, a list of documented expenses. Once these expenses are reimbursed, MIS does not collect any additional money from the commercialization of the invention.
8.6 Commercialization Endpoints. The licensing model of technology commercialization can successfully result in one of two ways, licensing to an existing company or starting a new company. Most of the time we will license your technology to an existing company. It takes a special technology to be the focal point of a startup however it is possible.
8.7 Net Revenue Distribution for Inventions Owned by MedStar Health. This section describes how revenue is distributed to the Inventors and within MedStar. Basically, after all documented patent, prototyping, proof of concept funding, etc. expenses are reimbursed to MedStar, net revenue is split 50/50 with the Inventors equally sharing 50% and MedStar keeping the remaining 50%. Note that part of MedStar’s share will go to the inventors’ department or division. If you ever cease being a MedStar Associate or Affiliate, please make sure MIS has your current contact information as you will still receive revenue.
8.8 Multiple Inventors Inside MedStar Health. If there are multiple Inventors, the default is that all will have equal share in revenue. If an Inventor feels that this arrangement is inequitable, a special committee will be convened to find an alternate revenue share. Please note, that this is the exception, not the rule.
8.9 Collaboration with Inventors Outside of MedStar Health. Many of our Inventors collaborate with researchers from other institutions. MIS will work out an agreement with that institution regarding such things as lead on commercialization, patent expenses and revenue share. These types of agreements are very common and should never get in the way or working with a group outside MedStar.
8.10 Compliance with Law and Contractual Obligations. We all must comply with laws and any contractual obligations.
8.11.1&2 Work for Hire. “Work for Hire” is a legal definition under Copyright law but for this policy, the definition is expanded to include work in addition to the types listed in 8.11.4. Essentially if you are assigned a project by your supervisor that you may or may not have conceived, MedStar may consider this a Work for Hire because you are getting paid to work on the idea. As an example, MedStar Quality and Safety working together with Communications creates a new program for stethoscope cleanliness awareness. The campaign is incredibly successful and is potentially commercializable outside of MedStar. MedStar would most likely consider the campaign and any intellectual property (copyrights in this case) Work for Hire.
8.11.3 MedStar does not want to own copyrights on books, chapters, articles, poems, music, etc. Publishing groups would require the author to assign the copyrights to the publisher in order for them to publish the work.
8.11.4 If you are hiring an outside firm to do work for MedStar, please make sure that the language in the contract gives ownership of any intellectual property to MedStar Health. Under copyright law, certain works are considered “Work for Hire” and ownership automatically resides with the hiring organization UNLESS there is an agreement otherwise. Don’t assume that MedStar owns work done by outside companies. As always, if you have any questions, please contact MIS. We are happy to review any contract language.
8.11.5 This is the formal way to state copyright ownership and should be on any communication going to the public.
8.11.6 Although an Invention might be Work for Hire, MIS and the President of the Subsidiary of the Inventor’s employment may decide to distribute revenue to the Inventors. This will be a case by case basis. Although every situation will be unique, a large factor in the decision to distribute revenue from Work for Hire is the amount and innovativeness of the intellectual contribution from the Inventor or Creator.
9. Related Policies. (Self-explanatory)
10.1.1 Procedures Related To Policy. Inquiries: Questions about the commercialization path or this policy should be directed to the Director of MIS at [email protected].
10.1.2 Although MIS is happy to review any contract language referring to intellectual property, questions regarding these contracts should be reviewed by MedStar Legal.
10.2 Describes the parties who will resolve disputes relating to the commercialization of Inventions. Smaller disputes shall be solved by the Director of MIS. As the seriousness of the dispute escalates, the dispute will be heard by the MedStar Inventor Services Oversight Committee and ultimately by executive leadership at MedStar Corporate. Finally, if no resolution can be found internally, we would move to binding arbitration with a neutral party arbitrating.
11. Legal Reporting Requirements. MIS will handle all of the reporting obligations (ex: Bayh Dole Act).