Henry Ford Health System Innovations FAQs
What is technology transfer?
Technology transfer takes many forms. It is essentially the transfer of Intellectual Property from one entity to another. To be done legitimately under the HFHS Intellectual Property Policy, dated July 26, 2013 (“HFHS IP Policy”), it should be done pursuant to a written agreement developed by HFHS Innovations (“HFI”) and executed by the Vice President and Chief Innovation Officer of HFHS.
What is intellectual property?
Intellectual Property includes all types and forms of ideas, inventions, developments, discoveries, refinements, conceptions, innovations, know-how and improvements, including but not limited to computer software programs, computer logic and computer systems and databases including the goodwill associated therewith.
Why should I disclose an invention to HFII?
First, the Procedures for Implementation of Henry Ford Health System Intellectual Property Policy dated October 28, 2014 (“IP Procedures”) require that promptly following creation of an item of Intellectual Property and/or reduction to practice, a Creator is required to complete a disclosure form (the “Disclosure form”) and submit it, together with any supporting documentation required in the Disclosure Form instructions to Henry Ford Innovations, Attn: Ms. Taryn Simon. Also, disclosing your invention to HFI starts an evaluation process that could lead to protection and commercialization of your intellectual property (IP). This sometimes involves beginning a legal protection process and/or working to identify outside development partners. If government funds were used for your research or invention, you are required, for that reason as well, to file a prompt disclosure, which HFI will report to the sponsoring agency.
What is a license?
A license is a permission granted by the owner or other holder of rights to intellectual property that allows another party to act under all or some of that entity’s rights, usually under a written license agreement.
How does HFI decide whether or not to file a patent? Who pays patent costs?
HFI assesses the commercial merit (and associated market opportunity) for inventions and associated IP. HFI also considers novelty, patentability, funding and time to market or license as well as potential competition from other products or IP. Henry Ford Health System, or its licensee, covers the costs associated with IP and patent protection.
Who owns what I create?
With the possible exception of books and articles of a primarily professional or scholarly nature, unless a contractual agreement provides otherwise, Henry Ford Health System owns the Intellectual Property created by individuals who satisfy both of the following requirements:
(1) are full or part-time Henry Ford Health System employees, trainees, students or volunteers, or have a contractual or appointment relationship with Henry Ford Health System and/or its operating divisions, including all categories of the Medical Staffs of Henry Ford Health System hospitals and medical centers; and
(2) receive financial support from Henry Ford Health System or from private or governmental entities and sponsors, or use Henry Ford Health System resources (including, but not limited to, the facilities, material, equipment, staff, intellectual property or time of Henry Ford Health System) to develop Intellectual Property.
Individuals meeting the applicability requirements set forth above are referred to as “Creators.”
If you have questions about ownership, please contact Henry Ford Innovations.
How do I submit a disclosure?
You may submit a disclosure in one of two ways. Electronically (Click here: Electronic HFHS Invention Disclosure Form_FINAL 07-2015) by digitally signing or by downloading, printing and signing a paper copy of the disclosure and returning to HFI, care of Taryn Simon.
What financial/monetary benefit might I gain from my invention?
If an invention is licensed and payments or royalties are paid, inventors share in net proceeds, as defined in the IP Procedures, 50:50 with HFHS subject, in some circumstances described in the IP Procedures, to administrative charges. Inventors’ departments receive 10 percent of HFHS net proceeds. In the event that there is more than one Creator from Henry Ford Health System, then 50% of the Net Proceeds, after any administrative charge, shall be distributed to the Creators in proportion to their respective contributions, and the remaining 50% retained by Henry Ford Health System.
Who is an “inventor?”
Under U.S. law concerning patents, an inventor is one who takes part in the conception of the invention claimed in a patent application. Inventorship of a patent application may change as the patent claims are changed during prosecution of the application. One who only highlights a problem or furnishes money to build or practice an invention is not thereby an inventor. Inventorship is a legal issue and may require a legal determination by HFI and/or appointed attorneys.
Who is a “Creator?”
The HFHS IP Policy covers Intellectual Property as set forth in the above response, not just patents. Thus, Creators are ones who create any Intellectual Property, not just inventors of patents.
What is a copyright and how is it useful?
Copyright is a form of protection provided by the laws of the United States to the authors of “original works of authorship.” This includes literary, dramatic, musical, artistic, and certain other intellectual works as well as computer software. This protection is available to both published and unpublished works. The Copyright Act generally gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc. In some instances, HFI registers copyrights, but generally not unless of clear commercial benefit.
How do I represent a proper HFHS copyright notice?
Although copyrightable works do not require a copyright notice, we recommend that you use one. For works owned by HFHS, use the following template: [Year of first publication] © Henry Ford Health System. All rights reserved. This material may not be reproduced, displayed, modified, or distributed without the express prior written permission of the copyright holder.
What is “prior art?”
Prior Art refers to inventions that are patented, or described in a printed publication (including but not limited to a published patent application), in public use, on sale, or otherwise available to the public.
What does a patent do?
In the U.S., a patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. A patent does not necessarily provide the holder any affirmative right to practice a technology since it may fall under a patent owned by others. Instead, it provides the right to exclude others from practicing the invention. Patent claims are the legal definition of an inventor’s protectable invention.
What does “first to file” mean?
The U.S. changed its law in 2013 to provide that if two independent inventors are seeking patent protection for the same invention, the inventor that first filed an application will be awarded the patent (assuming that the application fully describes and enables the invention).
Who decides whether or not to form a start-up company and will HFHS pay for forming a start-up?
Whether or not to form a start-up company is typically a joint decision between HFI and the inventors although as owner of the IP, HFHS has the authority to make the decision, itself. HFI will typically bear the start-up expenses of companies it forms.
How does HFI help with start-up/new business formation, corporate partnerships and licenses?
HFHS Vice President and Chief Innovation Officer along with HFI case managers provide directed assistance and work to plan for and execute new business formation, corporate partnerships and licenses. HFI is responsible for all related IP agreements and the Vice President and Chief Innovation Officer is the signatory and business authority for related decision-making.
Click here to download a copy of the Henry Ford Innovation’s FAQ