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Report Invention

Why should I disclose an invention to BIBD?

According to the UMass Chan Medical School's Intellectual Property Policy, as a “Covered Individual”, all faculty, students and staff have an obligation to disclose their inventions, whether or not patentable, to the Bridge Innovation and Business Development team for evaluation. Virtually all research sponsors including companies, non-profit organizations and the US government require the disclosure of inventions as a condition of grant awards. In addition, while the publication of research results is the primary mission of the Chan Medical School, no company will spend money developing an invention unless it is protected by a patent.  In order to turn research results into useful products for society, which is also an important mission of the Chan Medical School, patenting and licensing of inventions is a critical first step in the product development and commercialization process.

When should I submit an invention disclosure form? 

If you think you have or might have conceived of an invention, you should complete an invention disclosure form. The staff in BIBD will perform a review of your invention alongside patent attorneys to determine if your invention is patentable and also if it might have commercial utility and value. If you have any questions about whether or not to fill out a form, please contact a New Ventures team member to discuss your invention.

When should I disclose an invention to BIBD?

The publication of an invention prior to filing a patent application leads to the forfeiture of all patent rights in every country, including the United States. For inventions made in the US, the law provides a one (1) year grace period starting from the date of public disclosure of the invention in order to file the patent application covering the invention. Inventions should be disclosed as soon as it has been made but certainly 2-3 months prior to submitting any manuscripts for publication. Please contact a New Ventures Team member if you have any questions regarding the submission of an invention disclosure.

Should I disclose work with an outside collaboration to BIBD? 

Yes. Even if your collaborator offers to handle the invention and the patent application process, please disclose to BIBD. Regardless of which of the collaborator’s employers handles the patent prosecution process, each employer has ownership rights and disclosure is the only way to alert BIBD of this fact. A New Ventures team member will coordinate with other joint owners of inventions.

What if an external collaborator contributes to my invention?

In cases where an invention has co-inventors from different institutions through a collaboration, the invention is then considered to be jointly owned by those institutions.  Each inventor has an obligation to inform his or her employer of the invention. Each owner of an invention has an undivided interest in the joint invention, which in practical terms means they can act as if they own the entire invention. In these instances of joint ownership, the co-owning institutions will usually negotiatean inter-institutional patent management and licensing agreement that gives to one co-owner the responsibility for managing the patent prosecution and licensing of the invention on behalf of all the joint owners. It also provides for sharing costs and income among the co-owners. 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.

Who is an inventor?

Authorship is not inventorship. An inventor is an individual who conceived of at least one claim of a patent. Merely contributing solely to the reduction to practice of a claim of an invention does not constitute inventorship. Unfortunately, the determination of inventors is often difficult to ascertain completely when a patent application is filed since the claims that will ultimately be allowed by the PTO are not yet known and often change dramatically during prosecution. As such an inventorship analysis is done when the claims in a patent application are allowed.  The correct listing of inventors on a patent is required by law and if purposely or even inadvertently incorrect can lead to the invalidation of the patent. 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. If you are unsure if an individual is an inventor, contact a New Ventures team member.

What happens after I disclose an invention to the BRIDGE? 

In instances where the BRIDGE determines that an invention is patentable and likely has commercial value, an BRIDGE licensing officer will be assigned based on your departmental affiliation and will work to find ways to license the invention to entities that will be committed to develop the invention for the benefit of the public.  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 confidential disclosure agreement prepared by the BRIDGE in order to review confidential information about the invention, such as a scientific manuscript, drawings, working prototype, development plans, therapeutic potential, etc. If successful, these discussions will lead to the negotiation of a terms sheet defining the overall financial and other key provisions of a license agreement. Once the terms sheet is mutually acceptable, a license agreement will be negotiated, drafted and executed by University and the Licensee. The University and the inventor(s) benefit from the income that is derived from this license. After deducting the costs incurred by the University for patenting, marketing, licensing or developing the subject invention, Net Licensing Income is distributed as follows: 30% to the inventor(s), 15% to BRIDGE to support operations, 15% to the department(s) of the inventor(s) and 40% to the School to support the research enterprise.

What is a patent?

A patent is a document issued by the U.S Patent and Trademark Office (USPTO) under the authority of Article 1, Section 8 of the United States Constitution and other laws (Title 35 of the US Code) and implementing regulations. A patent is a right granted to an inventor of a process, machine, article of manufacture, or composition of matter that is novel, useful and non-obvious.  A patent grants to the patent owner the right to exclude others from making, using, or selling the subject matter described by the claims of the patent. Notable, a patent does not grant the patent owner the right to make, use or sell his invention as that may be subject to other laws (e.g., FDA) nor does it require the owner to do so. 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. In the United States, only the person or persons who invent the subject matter or their assignees have the right to obtain a patent. It is commonplace for employers to require employee-inventors to assign to the employer ownership of the invention and resulting patents and the right to seek prosecution of the patent.

Will every invention disclosed to BIBD result in a patent application?

No. Patent Laws determine what types of inventions are patentable and BIBD will first determine whether the invention is patentable as determined by US patent law and recent Appellate and Supreme Court decisions. BIBD will then determine whether the invention is commercially useful as obtaining patent rights can be quite expensive, easily costing in excess of $100,000 for a US patent. During the process, a BIBD committee will determine whether the filing of a patent application is necessary in order to commercialize the invention.

 

DISCLOSE INVENTION