Frequently Asked Questions

 

Why should I disclose an invention to the OTM? 

According to the University of Massachusetts Medical School's Intellectual Property Policy, you have an obligation to disclose your inventions, whether or not patentable, to the OTM for evaluation. Further, the commercial development and distribution of the results of research and creative work to benefit the inventor or creator and the economy is part of the University's mission of public service as the development and commercialization of your invention may benefit society and generate funds for research and education. In addition, a licensee of your invention may also elect to sponsor research in your lab.
Top of Page

When should I submit an invention disclosure form? 

If you have evidence of a discovery that may have practical utility and represent an attractive licensing opportunity, you should complete an invention disclosure form. If you have any questions about whether or not to fill out a form, please call an OTM licensing associate to discuss your invention.
Top of Page

When should I disclose an invention to the OTM? 

An invention should be disclosed to the OTM when it has been successful in practice and before it has been published or publicly presented. If an invention is disclosed after it has been published or publicly presented, there is no longer an opportunity to obtain patent rights outside the United States. Patent rights in the United States may be obtained until the first anniversary of the date of the first publication describing the invention. Please contact OTM staff if you have any questions regarding the submission of an invention disclosure.
Top of Page

Should I disclose work with an outside collaboration to the OTM? 

Yes. Even if your collaborator offers to handle the invention, please disclose to the OTM as each inventor almost always has an obligation to inform his or her employer. Further, the employer of each inventor may have some ownership in the invention. The OTM is here to coordinate with other joint owners of inventions.
Top of Page

What happens after I disclose an invention to the OTM? 

In instances where the OTM determines that an invention has the potential for positive business and licensing development, an OTM licensing professional will be assigned based on your departmental affiliation and will work to find ways to commercialize the invention for the benefit of the public while generating income for the university. After discussing your invention, the licensing professional will first contact prospective licensees with a non-confidential description of the invention. A prospective licensee may then sign a confidentiality agreement prepared by the OTM in order to review confidential information about the invention, such as a scientific manuscript, drawings, working prototype, etc. In addition, the strategy for commercialization may or may not involve seeking patent protection and licensing patent rights.
Top of Page

Will every invention disclosed to the OTM result in a patent application? 

No. The senior management team and the licensing professional will determine whether or not patent rights are valuable to a potential licensee as obtaining patent rights can be quite expensive. During the process, the licensing professional will determine whether and filing of a patent application is necessary in order to commercialize the invention. In most cases, a potential licensee will reimburse the Medical School for patent costs before the application is filed. Patent rights are most significant when market exclusivity is required by the licensee.
Top of Page

What is a patent? 

A patent is a document issued by the Department of Commerce Patent and Trademark Office (PTO) under authority of the United States Constitution and other laws and implementing regulations. A patent contains a narrative description of the subject matter covered by the patent called the specification. It also contains one or more claims that describe the subject matter covered by the patent in highly technical and specific terms. A patent represents the right to exclude others from making, using, or selling the subject matter described by the claims of the patent. Virtually every country in the world provides its government with the right to issue patents in order to allow patent owners to exclude others from using the patented subject matter within its borders. In the United States, only the person or people who invent the subject matter have the right to obtain a patent. However, it is commonplace for employers to require employee-inventors to assign to the employer the right to seek the patent, and therefore the ownership of the patent.
Top of Page

What is a license? 

With a license, the University grants a company permission to use an invention that belongs to the University for commercial purposes, subject to certain terms and conditions that typically include fair compensation to the University based on the estimated value of the invention. A license may be exclusive, co-exclusive or non-exclusive. A license may be restricted to a particular field of use and/or geographical area. In the United States, only one owner needs to sign a license if the subject matter is patented. Thus, a patented technology co-owned by three parties can be licensed by one of the parties without the other owners' knowledge or consent. This is not so in most European countries, which require that all owners join in any licenses. Although licenses generally address a standard set of legal issues, there is no standard license or license term. The terms negotiated into licenses by the parties are as varied as the circumstances driving the agreement.
Top of Page


Who is an inventor? 

Unlike authorship of a scientific publication, inventorship is a matter of law and a patent that fails to name the correct inventors may be ruled invalid. Determining who is named as an inventor on a patent is a legal decision rather than a choice made among participants, such as for a credit in a publication. Only those individual(s) who furnish an idea, not the employer or the person who pays for the development of the idea, can be named as inventors. An inventor is the one who first conceives of the invention in sufficient detail that someone skilled in the art could reproduce the invention. If two or more persons work together to make an invention, and each had a share in the ideas forming the invention, they are joint inventors. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor.
Top of Page

What if an external collaborator makes a contribution to my invention? 

In most cases, each inventor has an obligation to inform his or her employer of the invention. The employer of each inventor may have ownership in the invention. Each owner of an invention has an undivided interest in the intellectual property, which is called a joint invention. Sometimes, two or more universities own an invention jointly. In such cases, the universities typically establish an inter-institutional agreement that assigns to one university the responsibility for managing and licensing the invention on behalf of all the joint owners and provides for sharing costs and income among them. However, in the absence of any such agreement, under the law each co-owner is free to license its rights in the invention independently of the other co-owner(s), without notifying them, seeking their permission, or sharing income with them.
Top of Page

What is a Materials Transfer Agreement? 

A materials transfer agreement (MTA) is a negotiated contract between the owner of a tangible material and a party seeking the material and the right to use the material for research purposes. The material may be either patented or unpatented. Material transfer agreements tend to be shorter than license agreements, and they are generally considered to be more informal than licenses agreements, although both are enforceable contracts. The purpose of an MTA is to document the transfer and outline the terms of use, including identification of the research project, terms of confidentiality, publication, and liability.
Top of Page

Why do I need to use an MTA when I give materials to other researchers or receive materials from other researchers? 

Materials Transfer Agreements protect the materials provider. In addition to addressing liability issues, MTAs help to maintain the University of Massachusetts Medical School's property rights associated with materials sent to other researchers. The OTM is responsible for negotiating Material Transfer Agreements on behalf of the University.
Top of Page

I have a start-up company, will the OTM license my invention to it? 

Yes. An OTM licensing professional will pursue the best avenues to commercialize any invention for the benefit of the public and to generate income for the University. Your start-up company will be considered along with any other opportunities for commercialization.
Top of Page