Please find answers to frequently asked questions below. If you have a question not covered here, email us at [email protected].
- What is an “invention?”
- What is intellectual property?
- What happens to any revenue from my invention?
- How are royalties distributed?
- How is “inventorship” determined?
- Who owns my intellectual property?
- Do I have to report my invention to MedStar Inventor Services?
- I developed a mobile app or other software program. Who owns it?
- Does MedStar Inventor Services pursue patents for all inventions?
- Can I release software under an open-source license?
- Who owns inventions resulting from collaborations with other entities (e.g., universities and companies)?
What is an “invention?”
We consider inventions to be new processes, products, devices, machines, compositions of matter, living organisms, algorithms, software, or improvements to existing technology in those categories. MedStar Health commercializes inventions that fill a healthcare need, improve patient care, create efficiencies, or enrich the performance of MedStar Health associates.
What is intellectual property?
Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce. Typically these fall into the categories of patents, copyrights, trademarks, trade dress, and trade secrets.
What happens to any revenue from my invention?
Net revenue generated from commercialization of an invention owned by MedStar Health will be shared equally (50/50) between the inventor(s) and MedStar Health, after all expenses related to patents, prototyping, proof of concept funding, etc., are reimbursed to MedStar Health. MedStar Health’s share is split between the inventors’ department or division, MedStar Health Research Institute, MedStar Institute for Innovation, and MedStar Health corporate.
How are royalties distributed?
After all direct expenses are covered:
50% of the net revenue will be awarded to the inventor(s). If there are multiple inventors who are all MedStar Health associates and affiliated inventors, the inventor share will be distributed equally among co-inventors.
Note: If you ever cease being a MedStar Health associate or affiliate, please email [email protected] to make sure MedStar Inventor Services has your current contact information as you will still receive revenue.
50% will be retained by MedStar Health. The 50% portion of net revenue retained by MedStar Health will be shared equally between MedStar Health, the MedStar Innovation Fund, the MedStar Research Fund, and the inventor's division, department, and/or operating unit.
How is “inventorship” determined?
According to The United States Patent and Trademark Office: “The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he or she is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant.”
Inventorship is a legal determination and cannot be assigned similarly to the selection of journal authors from a team of researchers. In patent law, one must contribute to the conception of the claims of a pending patent application or an issued patent to be an inventor.
If the contribution of an inventor or a potential inventor is in question, MedStar Inventor Services will engage patent council to conduct an independent inventorship determination via a series of interviews.
Additionally, in the case where there are multiple inventors who are all MedStar Health associates and affiliated inventors, the default is that all will have an equal share in the 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 the latter is the exception, not the rule.
Who owns my intellectual property?
All inventions developed by MedStar Health associates and affiliated inventors that arise out of their employment at MedStar Health, affiliation with MedStar Health, or specifically assigned to MedStar Health are owned by MedStar Health. Essentially, if you create something that is directly related to your employment with MedStar Health, you make it on MedStar Health time, or you use MedStar Health resources, MedStar Health will own that invention.
Do I have to report my invention to MedStar Inventor Services?
All inventions created by MedStar Health associates must be disclosed to MedStar Inventor Services. MedStar Inventor Services has sole discretion in determining the relationship of the invention to the inventor(s)’ employment at MedStar Health or affiliation with MedStar Health. Disclosure is the act of giving notice of inventions by the inventor to MedStar Inventor Services using the Invention Disclosure Form, which is available here.
I developed a mobile app or other software program. Who owns it?
The MedStar Health Intellectual Property (IP) Policy lists “machine-readable software code and programs” as copyrightable work. MedStar Health does not claim ownership over some forms of copyrightable work (articles, publications, posters, etc.). See the MedStar Health IP Policy for details on what forms of copyrightable work MedStar Health owns.
Does MedStar Inventor Services pursue patents for all inventions?
No. Patents are very expensive. MedStar Inventor Services will analyze your invention and, if the invention is a patentable invention (e.g., not a trademark, copyright, etc.), decide with you whether filing a patent is worth the expense. MedStar Inventor Services will evaluate current products on the market, patents, and patent applications to make a patentability determination with you. During this process, we will educate you on what the United States Patent and Trademark Office (USPTO) is looking for in order to approve, or “issue,” a patent.
There are two ways to look at patents. First, can we get a patent on your invention that would be useful to a company? In other words, even if we could get a patent, does it have value? Frequently, the scope of the patent becomes so narrow that it is easy for competitors to create a similar product that does not infringe upon your patent. Second, are there existing patents that your invention might infringe upon? If so, MedStar Inventor Services might be able to get a patent issued on a few aspects of your invention, but making and selling the product may infringe upon others’ patents. This means that even with a patent, we would not have what is called “freedom to operate,” making pursuing a patent less worthwhile.
Can I release software under an open-source license?
If you are developing software, open-source software will make it more difficult, maybe even impossible, for MedStar Inventor Services to commercialize your software. There are various open-source licenses. In general they allow for free use of software, but put limits on how it is distributed and whether you can make money from it. The Open Source Initiative (OSI) maintains the list of open-source licenses, and the Free Software Foundation (FSF) maintains the list of free licenses. Both organizations provide information on how software may be used, modified, and distributed, including derivative works. Please feel free to contact MedStar Inventor Services to discuss whether open-source software is appropriate for your work.
Who owns inventions resulting from collaborations with other entities (e.g., universities and companies)?
Ownership of intellectual property (IP) depends on the arrangement or agreement between collaborators. Agreements including, but not limited to, inter-institutional agreements, grants, and research agreements will govern collaboration with inventors outside of MedStar Health. If no relevant agreements exist or there are no IP terms at the time of disclosure, the party that creates the IP shall be the owner, and MedStar Inventor Services will negotiate with the outside institution with regard to commercialization of the invention. MedStar Health associates and affiliated inventors are invited to discuss planned or potential inter-institutional collaborations that may result in the creation or refinement of an invention with MedStar Inventor Services prior to initiation of the collaboration.