1) Why should I file an Invention Disclosure?
- The terms of your grant, whether from a government or private source, may require you to commercialize your invention.
- Commercial agreements may provide a source of research funding.
- Researchers and their departments receive a significant share of the revenue derived from licensing agreements.
- Researchers and the University have an obligation to protect their intellectual property for the Commonwealth of Massachusetts.
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. 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. Please note that all UMass inventors listed on the Invention Disclosure must have a signed Participation Agreement on file.
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 we determine that a patent application should be filed, 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 firstname.lastname@example.org.
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?
Click here to read more about Materials Transfer Agreements
10) What is a Confidential Disclosure Agreement and when should I use it?
Click here to 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 can be found here.
Commercial Ventures & Intellectual Property
University of Massachusetts
Arnold House, Room 232
715 North Pleasant Street
Amherst, MA 01003-