1) Why should I file an Invention Disclosure?
The terms of your grant, whether from a government or private source often require you to commercialize your invention.
Commercial agreements may provide a source of research funding for your laboratory.
Researchers and their departments receive a 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 the Technology Transfer Office (TTO) or submit an Invention Disclosure form to us whenever you have research results that you think may have a commercial potential.
Please contact our office prior to any public disclosure, whether oral or written, that describes the invention. Sharing data with colleagues outside UMass, 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 our Invention Disclosure form here. If you wish to discuss your Invention Disclosure or need assistance completing the form please contact us at firstname.lastname@example.org or call us at (413) 545-3606.
4) What happens after TTO receives my Invention Disclosure?
The Invention Disclosure is reviewed by our licensing professionals. Based on the products and services you and the TTO identify in the disclosure, we do initial market sizing and competitive analyses. We conduct an initial prior art search to begin to define the scope of patentability. We will then set up a meeting with you to discuss your invention and how you envision commercializing it. We’ll also present the results of our analyses, solicit your feedback, and decide on next steps, which will be unique to every case.
5) How long does the process take?
Our goal is to make a quick evaluation of the invention and determine the commercial prospects of the invention. Upon receiving your disclosure, we aim to set up our initial meeting within 2-4 weeks. This timeline may be expedited should you be approaching a potential bar date (e.g. journal publication, conference presentation).
6) How can my invention be commercialized?
There are two major pathways for commercialization: licensing to one or more companies or forming a start-up. For the former, the TTO will put together a profile of potential licensees and will then identify and contact those most appropriate to determine their interest in your invention. Your assistance during this period is very valuable and TTO will keep you informed of all developments. If you wish to start a company, we will guide you through the initial process and point you to the various other resources on campus to assist you.
7) What about public disclosure before I file the Invention Disclosure?
Since premature public disclosure will negatively impact the TTO's ability to obtain a patent, submitting the Disclosure before any publication or oral presentation that describes the invention is important. Sharing data, posting abstracts and papers on the internet, and poster sessions are just some examples of public disclosure.
8) Does TTO use inside or outside counsel?
The prosecution of patent applications is done by outside patent counsel that have been approved by the University’s general counsel. Collaboration between the attorney and the inventor is essential in preparing and filing a patent application.
9) What is a Materials Transfer Agreement and when should I use it?
A Materials Transfer Agreement (MTA) is a legal contract that governs the transfer of materials to and from the University for research purposes. MTAs are needed whenever transferring or receiving materials such as cultures, cell lines, proteins, bacteria, transgenic animals, nucleotides, pharmaceuticals, and other chemicals. Key personnel from TTO are the only authorized signatories who can execute MTAs on behalf of the University. For more information, please see our MTAs page.
10) What is the University's policy on Intellectual Property?
The UMass Amherst Intellectual Property Policy may be downloaded here. Please don’t hesitate to contact us with any questions.