Established only 5 years ago, Baystate's Office of Technology Transfer has accomplished quite a bit recently.

Several Baystate inventions are being shepherded through the patent application process, including:

• an improved tool for endoscopic surgery
• improvements to the pessary devices that are used to treat pelvic organ prolapse in women
• a potential molecular diagnostic assay for male infertility.

In addition, license agreements have been concluded for:

• a potential new diagnostic assay to determine a woman's risk of breast cancer
• 2 innovative surgical devices for use in NOTES surgery.

A Resource for Investigators

"I want investigators to know that I am a resource for them. Because Baystate Medical Center's portfolio is small, I can devote more time and effort per invention." — David Glass, PhD Baystate Technology Transfer Officer

"With the focus on technology transfer and patents being relatively new here, many investigators don’t know Baystate has an intellectual property policy and program," says David Glass, PhD who serves as Baystate's Technology Transfer Officer. The Office, under the guidance of Baystate's Intellectual Property Committee comprised of several senior investigators, is responsible for identifying and protecting clinically or commercially significant developments arising from research or clinical activities at Baystate.

Get the Office of Technology Transfer Involved Early

According to Dr. Glass, once an investigator starts to believe there are important clinical or commercial implications in their research, they should contact him for advice as early as possible. "The best time is probably when the investigator is writing up the research underlying the invention for its first publication, or even earlier. It's important to get us involved before the research has been presented anywhere to avoid losing foreign rights to the invention."

The internal process, which typically plays out over a couple of months, can be sped up if publication is imminent.

• Glass makes a preliminary judgment about the patentability of the invention.

• Then he assesses its commercial potential, investigating whether other companies are developing similar or competing products, and whether it’s a large enough market that’s easy to get into.

• If it makes sense to move forward, Glass makes a presentation to the IP Committee who can authorize Baystate's outside patent attorneys to prepare and submit a patent application.

A Lengthy Process

Once the patent application is filed, there is a lot of waiting—depending on the field, it could take 3-4 years before it gets examined and at least 2 more years to issue as a patent. During this time, Glass will work to find licensees with the interest and funds to do R&D to move the invention forward in a commercial way.

Although his predilection is not to tell investigators how to do their own research, he or the patent attorney may suggest ways for the product to be made more patentable. For example, they worked with Dr. Oz Harmanli, the inventor of the improved pessaries, to assist in implementing additional R&D activities to add value to the invention to enhance its commercial potential.

For More Information

Dr. Glass can be contacted at 617-653-9945 or David.Glass@baystatehealth.org. He also occasionally posts tweets at @dglasstechtrans with links to news articles and other publications that might be of general interest to investigators interested in tech transfer and/or the commercialization of biomedical research.

See the Technology Transfer webpage for lists of Baystate's commercially available products and inventions for license.

This article was published in the May 2011 Academics@Baystate newsletter.