According to the University of Massachusetts 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 OTM 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 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 Medical School, patenting and licensing of inventions is a critical first step in the product development and commercialization process.
If you think you have or might have conceived of an invention, you should complete an invention disclosure form. The staff in OTM 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 call an OTM licensing officer to discuss your invention.
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 OTM staff if you have any questions regarding the submission of an invention disclosure.
Yes. Even if your collaborator offers to handle the invention and the patent application process, please disclose to the OTM. 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 OTM of this fact. The OTM will coordinate with other joint owners of inventions.
In instances where the OTM determines that an invention is patentable and likely has commercial value, an OTM 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 OTM 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 OTM to support operations, 15% to the department(s) of the inventor(s) and 40% to the School to support the research enterprise.
No. Patent Laws determine what types of inventions are patentable and OTM will first determine whether the invention is patentable as determined by US patent law and recent Appellate and Supreme Court decisions. OTM 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, the licensing professional will determine whether the filing of a patent application is necessary in order to commercialize the invention.
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.
With a license, the University grants a company permission to use an invention that belongs to the University for research and/or commercial purposes, subject to certain terms and conditions that typically include 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.
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 inventorhip 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.
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.
The University owns any material made by its faculty and staff and OTM has developed procedures and agreements to facilitate the sharing of these material among other academic researchers but also with researchers at non-academic research institutions including for profit companies. The agreement for sharing materials is commonly known as a Material Transfer Agreement or MTA. A Material Transfer Agreement is what is known as a bailment, a loan of sorts. A simple analogy is when you hand your car over to a valet. Although you’ve given them your car, you are not transferring ownership but merely loaning it to them for the specific purpose of parking the car for you. The MTA documents the exchange of materials as explained below. OTM uses the simplest MTAs, either the NIH’s Simple Letter Agreement (SLA) or the Uniform Biological Material Transfer Agreement (UBMTA) and encourages other non-profits to do the same.
The use of an MTA is important for a variety of reasons. 1) it establishes that the University remains the owner of the materials being shared. 2) it establishes how the material may be used and prohibits use in humans without our express consent. 3) it establishes that the University has no liability for the recipient’s use of the material. 4) it may provide for the recipient to share their research results with us including preprints of any publications. 5) it sometimes prohibits the recipient from filing patent application making claims directly pertaining to the materials. 6) it provides for the return or destruction of the materials by the recipient after a certain period of time or the completion of the permitted research. An exchange of materials should always be done with an MTA. Also, if you are leaving the university and want to take material with you, this should also be documented with an MTA. Legal disputes over theft of valuable material has resulted in the payment of damages in the tens of millions of dollars.
Yes, under certain conditions relating to capabilities and funding. 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.