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Frequently Asked QuestionsGeneral:
Industry:
GENERAL1) Why should I file an Invention Disclosure?
2) When should I file an Invention Disclosure? We recommend that you contact CVIP or file a disclosure whenever you have research results that you think may have a commercial potential as a therapeutic agent, diagnostic tool, research reagent, device, or medical/laboratory procedures. You should file prior to any public disclosure, whether oral or written, that describes the invention. Sharing data with colleagues, posting it on the internet, or displaying it at poster sessions are all examples of public disclosure. Public disclosure prior to filing a patent application may result in loss of patentable rights.
3) How do I file an Invention Disclosure? You can download the Invention Disclosure form directly from this site in PDF or MS word format. If you wish to discuss your Invention Disclosure prior to preparing the form please call the CVIP office (545-3606). Within the form you will be asked to describe briefly your invention, funding sources, and potential commercial applications of your technology. You will also be asked to provide a copy of your manuscript and the contract if your research was government-sponsored. It is also helpful to include copies of papers submitted to journals for possible publication.
4) What happens after CVIP receives my Invention Disclosure? The Invention Disclosure is reviewed by key personnel in the CVIP office. You may be contacted to discuss certain aspects or to clarify certain points. The disclosure is then submitted to the system-wide case managers. If the case managers feel your invention is patentable, it will be forwarded to the appropriate Patent Evaluation Committee (PEC), which consists of faculty and a CVIP representative. There are four PECs:
If the Patent Evaluation Committee and CVIP recommend that UMass Amherst file a patent, the Invention Disclosure is sent to our patent counsel, who will prepare the patent application. During the patent process, you may be contacted by the law firm regarding questions and clarification of your work. In addition, the CVIP office will contact you in order to have you sign legal documents forwarded by the patent attorney assigned to your case. 5) How long does the process take? The evaluation process may take anywhere from three weeks to three months, and possibly longer, depending on the complexity of the invention. After filing a patent application, it can take up to five years and sometimes longer for the patent to be issued or denied by the U.S. Patent and Trademark Office. 6) How can my invention be commercialized? After creating a licensing strategy for your invention that includes financial goals for UMass Amherst, CVIP will put together a profile of what a potential licensee might look like including those industry contacts recommended by Investigators. Since these industry contacts are familiar with the investigator's research, these contacts are often instrumental in getting the technology to market. CVIP will then identify and contact one or more appropriate for-profit companies to determine their interest in your invention and their ability to commercialize the technology. Your assistance during this period is very valuable and CVIP will keep you informed of all developments. CVIP has primary responsibility to draft agreements, conduct negotiations and execute final agreements with interested companies. If you have contacts with companies who may be interested in your technology that you have not listed in your invention disclosure, please let CVIP know cvip@research.umass.edu. 7) What about public disclosure before I file the Invention Disclosure? Since premature public disclosure will negatively impact CVIP's ability to obtain a patent, you should submit the Disclosure before any publication or oral presentation that describes the invention. As stated earlier, sharing data, posting on the internet, and poster sessions are just some examples of public disclosure. In no case should an outside company be informed of your invention before you notify CVIP. Your intellectual property can be protected with a Confidential Disclosure Agreement between UMass Amherst and the company/institution. 8) Does CVIP use inside or outside counsel? The prosecution of patent applications is done by outside patent attorney firms that have been approved by the University's general counsel. Collaboration with the investigator is essential in preparing and filing an application.
9) What is a Materials Transfer Agreement and when should I use it? Read more about Material Transfer Agreements 10) What is a Confidential Disclosure Agreement and when should I use it? Read more about Confidential Disclosure Agreements 11) What is a Non-Confidential Technology Disclosure? A Non-Confidential Technology Disclosure (NCTD) is a marketing tool used by CVIP to provide basic information about an invention to companies that might be interested in commercialization. We also list these in the available technologies section of our website. After reading the NCTD, a company might want more in-depth information about the invention. At this point, CVIP prepares a Confidential Disclosure Agreement that protects the invention and provides the company with additional information so that they can decide whether to commercialize it
12) What is the University's policy on Intellectual Property? The University of Massachusetts-Amherst Intellectual Property Policy: PDF | MS Word
Industry1) How can I license University technology? Once you have reviewed information about a particular technology and decide you may want to license it from the University simply contact the CVIP office at 413-545-3606 or cvip@research.umass.edu and we can begin negotiations towards a mutually satisfying agreement. 2) Does CVIP take equity as part of a licensing deal? During the license negotiating process we take into consideration all circumstances to achieve the "best deal" for all parties involved. We realize, for example, that startup companies may not be able to afford large initial payments but are able to compensate with equity in the company. 3) How do I get more in-depth information about a technology listed on the "Available Technologies" database? If you would like more in-depth information about a technology listed on our database please contact the CVIP office at 413-545-3606 or cvip@research.umass.edu and we can arrange to prepare a Confidential Disclosure Agreement that will allow detailed information to be provided to you and your company. 4) How can I locate departments and inventors who conduct research that is of interest to my company? The CVIP staff would be happy to put you in contact with the appropriate department or inventor. Simply contact us at 413-545-3606 or cvip@research.umass.edu. 5) What is the University's Policy on Intellectual Property? The University of Massachusetts-Amherst Intellectual Property Policy: PDF | MS Word 6)How can I provide material to, or receive material from, the University? A Materials Transfer Agreement can be prepared for you and your company by the CVIP office. Please contact our office at 413-545-3606 or cvip@research.umass.edu. |
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© 2004 University of Massachusetts Amherst. Site Policies. |
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