For disclosing a Material to Yeda, please fill in the Material Disclosure Form (MDF), attaching relevant information where necessary, such as a publication describing the material, and send by email to:email@example.com or by fax to (08) 9315927.
Please also send a signed original Form to the Patent Department, Yeda via internal mail.
As you will note, the MDF is short and contains 9 questions. Beyond the material name and type (first two questions), the form includes the following questions:
Q 3 - Statement of developer/s, who were involved in generating the material. It is important to identify non-WIS developers affiliated with another institution and state their relative contribution to the development of the material (in percentage, Q 6). The reason for the latter being that the material is thus joint to Yeda and the other institution/s. Accordingly, commercialization activities should be coordinated and agreed upon in advance between the two (or more) parties owning the material. Such coordination is documented via an Inter-Institutional Agreement (IIA), signing of which is a pre-requisite to Yeda attempting to commercialize the material.
Q 4 addresses public disclosures. The question is relevant in the event that Yeda wishes to consider protecting the material by a patent application or use it as confidential know how, in which case prior disclosure unfortunately bars the ability to file a patent application in most countries due to novelty considerations, or use as know-how. For more information re novelty, please see (link to the 5 page explanatory document).
Q 5 addresses funding sources. While most funding agencies are benign, or have manageable IP policies, some pose more difficult conditions (such as that IP generated with their funding is owned by the funding agency, considerable percentage of any future proceeds generated based upon said IP is to be transferred to the agency etc.). Accordingly, Yeda should be informed in advance of any funding received, as it may be crucial to the decision if to file a patent application. For more information re the policies of some common funding agencies, please see Intellectual Property Policies of Common Funding Agencies at the following link: http://www1.weizmann.ac.il/vptt/iproperty.html.
Q 7 addresses past sharing of the disclosed material with other institutes and/or commercial entities. This information has bearing on the current availability of the material to other entities and accordingly, Yeda’s ability to commercialize the material, e.g., exclusively. Naturally, if the material was transferred under a Material Transfer Agreement, Yeda’s control and rights in the material are better secured.
Q 8 addresses materials received under a Material Transfer Agreement (MTA) from a third party, as the latter normally has IP related clauses. These clauses may have bearing on Yeda’s rights in the material disclosed, which may originate from a third party’s material. Accordingly, Yeda has to examine the MTA, if exists, in order to verify its rights as the material owner and/or its obligations to the third party, which may limit our ability to commercialize the material.
Q 9 addresses the use of the Celera database in generating the material, as the WIS agreement with Celera has IP related clauses, which may limit our ability to commercialize the material.