Submitting an Invention Disclosure
All researchers with potentially commercializable research results, including staff, faculty, students and laboratory personnel, should fill out a confidential Invention Disclosure form and submit it to CVIP for review. The Invention Disclosure form asks for the names of all inventors, a brief description of the invention, funding sources, and potential commercial applications of the technology. If a manuscript is available, it should be attached to the Disclosure form. Please note that all UMass inventors listed on the Invention Disclosure must have a signed Participation Agreement on file.
When To File An Invention Disclosure
Whenever you have research results that may have a commercial potential as a therapeutic agent, diagnostic tool, a research reagent, a device, a potential therapeutic target or a medical/laboratory procedure, it is recommended that you submit an Invention Disclosure form to CVIP or contact us at (413) 545-3606 or at email@example.com for consultation. Since any premature public disclosure will negatively impact the ability to obtain a patent, the submittal of an Invention Disclosure should precede any publication or oral presentation that describes the invention. Sharing the data with colleagues or posting an abstract on the Internet are examples of public disclosure that need to be prevented if the invention might be patentable. In no case should outside entities be informed of an invention prior to notifying CVIP. Your invention can be protected with a Confidential Disclosure Agreement between the University and the off-campus institution.
After An Invention Disclosure Is Submitted
Once a researcher has submitted an Invention Disclosure form to CVIP it is reviewed by the assigned Case Manager. The disclosure is then submitted to the system-wide CVIP Case Managers for discussion and guidance.
If CVIP determines that the University should file for a patent, the Invention Disclosure is sent to our patent counsel who prepares the patent application. Some of your time is required during the preparation stage of the patent application, but you can minimize this if you have a manuscript available. CVIP manages the patent prosecution process from the filing of a patent application to the issuance of the patent (a process that may take three-to-five years). As a first step to commercializing the invention, CVIP devises licensing strategies including financial goals for the University, and creates a profile of strong potential licensees 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. We then identify and contact one or more appropriate for-profit companies to determine their interest and ability to commercialize the technology. Your assistance is very valuable during this effort, and we will keep you informed of all developments. CVIP has primary responsibility to draft agreements, conduct negotiations and execute final agreements.
Why File A Disclosure?
There are several excellent reasons to file an Invention Disclosure form, which include:
- The terms of your grant, whether from the government or a private source, may include the requirement that efforts be made to commercialize valuable inventions.
- Commercial agreements could become a significant source of research funding for your laboratory.
- Individual researchers and their departments receive a share of revenues derived from licensing agreements.
- Intellectual property developed at UMass, using UMass resources, belongs to the University. We all have an obligation to protect University property, whether tangible or intellectual.
Faculty are often called upon to give talks on campus, at other institutions, at meetings, and at companies. Topics typically contain information about ongoing research or early stage concepts, for which research has not begun. When improperly disclosed, such information is considered to have entered the public domain and therefore may not be patentable. If you make a presentation on work that is, or could be, the subject of a patent and may be a potentially commercializable invention, we strongly urge you to consult with us beforehand. We can advise you on how to best protect your work, which may ultimately be a source of revenue for you and your laboratory. Remember the following points:
- Public disclosure prior to filing a patent can bar the work from being patented in the U.S. or abroad.
- Submittal of papers to refereed journals is not public disclosure and will not affect the ability to patent an invention, as long as it is not published or circulated outside of the journal reviewers.
- Once a patent application is filed, you are free to discuss the work, but limit such discussions to the areas covered by the patent application.
- The use of a Confidential Disclosure Agreement is widely accepted and protects you from loss of intellectual property rights.
If you have any questions, please contact CVIP at (413) 545-3606 or at firstname.lastname@example.org.
Commercial Ventures & Intellectual Property
University of Massachusetts
Arnold House, Room 232
715 North Pleasant Street
Amherst, MA 01003-