Disclosing an Invention

Whenever you have research results that may have commercial potential such as a therapeutic agent, a diagnostic tool, a new composition of matter, a research reagent, a device, a novel system or method, a potential therapeutic target or a laboratory procedure, it is recommended that you submit an Invention Disclosure form (found here) to the TTO at [email protected] or contact us for a consultation. Since any premature public disclosure will negatively impact the ability to obtain a patent, you should submit your Invention Disclosure before 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. Outside entities should not be informed of an invention prior to notifying the TTO. If you wish to discuss your invention with an outside group, your invention can be protected with a Confidential Disclosure Agreement between the university and the off-campus institution.

Once you have submitted an Invention Disclosure form to the TTO, it is reviewed by the assigned Licensing Officer who will then set up a meeting with you to discuss your invention and possible next steps. If the TTO determines that the university should file for a patent, the Invention Disclosure is sent to our outside patent counsel who will draft the patent application. Some of your time is required during the drafting of the patent application. Having a manuscript, even in draft form, is very helpful. The TTO manages the patent prosecution process from the filing of a patent application to the issuance of the patent (a process that may take 3-5 years).

Input from the inventors is key in devising a commercialization strategy. We will first explore with you the question of start-up versus corporate license. If you decide you would like to explore starting a company around your technology, we can guide you and point you to the various other resources on campus to assist you. If we decide a corporate licensing strategy makes more sense, the TTO will create a profile of potential licensees including those industry contacts recommended by you and your co-inventors. Since these industry contacts are familiar with your research, these contacts are often instrumental in getting the technology to market. We then will 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. The TTO has primary responsibility to draft agreements, conduct negotiations, and execute final agreements.

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 often require that efforts be made to commercialize valuable inventions.
• Commercial agreements may provide a source of research funding for your laboratory.
• Researchers and their departments receive a share of revenues derived from licensing agreements.
• Researchers and the university have an obligation to protect their intellectual property for the Commonwealth of Massachusetts

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 wish to 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.