Why do I need a confidential disclosure agreement?
Public disclosure of an invention prior to filing a patent application will forfeit patent protection in most countries. Disclosures made under an appropriate confidentiality (CDA) or nondisclosure (NDA) agreement are not considered public disclosures.
Investigators are strongly advised to consult with OTC regarding the nature and timing of presentations, posters, and discussions outside UMass that might include intellectual property.
Only OTC representatives are authorized to approve and sign confidentiality agreements for on behalf of UMass Lowell.
Please see the Forms page for more information.
What are the fees?
The upfront or signing payment, annual maintenance or minimal royalty payments, and milestone payments are fees that are designed to encourage the licensee to be diligent in their commercialization efforts. The specific amounts of these fees are determined during the license negotiation.
What is a “field of use”?
Our licenses are defined by specific “fields of use”. A field of use is a limited area of commercialization such as telecommunications, therapeutics, or agriculture. The “fields of use” granted to a licensee depends on their demonstration of ability to achieve commercial success in those areas.
What if I need to talk about my invention?
Call the OTC to determine if you need a confidential disclosure agreement (CDA). Information exchanged under these agreements is not considered a public disclosure. See below for more information on CDA's.
What is actually licensed in the agreement?
This depends on the technology. It may be any of several forms of intellectual property including an issued patent, pending patent applications, copyrighted materials, a trademark, and/or "know-how". Patent grants typically include “progeny” of the parent application such as divisional and continuation applications, as well as foreign counterparts.
What are milestones?
Milestones are mutually agreed upon points in the commercialization process that represent progress toward the end goal. Usually, the licensee makes a payment to the university upon achieving a milestone event. If a company misses a milestone, the university will not automatically revoke the license. The parties will typically discuss what factors contributed to the missed milestone and whether commercial success is still possible, and new milestones may be negotiated.
Do I have an obligation to notify OTC of inventions?
If your research is supported in whole or in part by federal funding, you likely have an obligation to make a disclosure of the technology to OTC prior to any public disclosure. You may also have other obligations of disclosure to OTC for industry sponsored research.
What is a public disclosure?
Giving the public access to information about your invention, even if accidentally, is a public disclosure. This release of information completely bars international patent rights, and if a patent application is not filed within one year of the public disclosure, U.S. rights can be lost as well.
- Printed publications (journals, news papers, magazines)
- Online articles
- Conference abstracts
- Oral and poster presentations
- Thesis defense presentations and written dissertations
- Public use or sale of the invention
What if I want to publish my results?
Call the OTC Office in advance so that we can work with you to get the patent protection you need without delaying publication. It is always recommended that a fully enabled patent application be filed prior to any public disclosure to ensure maximum patent protection and commercial value of your invention. However, in no event will OTC ever prevent you from publishing or presenting your research.
What is the royalty rate?
The university does not set one standard royalty rate for inventions, nor can it assign value to an invention which has not yet been created (i.e., future inventions whether related or not). The royalty rate ultimately negotiated depends on several factors including the stage of development of the technology, the applicable commercial industry, and the nature of the invention (e.g. whether it is a platform technology or one of many patent rights a company may need to secure to produce a product). For most technologies, the royalty payments are based on net sales of the product.
We're just a start-up and short on cash. Can we offer equity in our company?
Yes, the university does accept equity in certain instances, but it will not completely eliminate required cash payments and we will ask for reasonable protection from dilution. Before entering an equity arrangement, companies should consider how much further assistance they will need from the university. Conflict of interest rules may preclude the university from assisting in certain tasks (i.e., clinical trials), once it has taken an ownership position in a company.
What is a sublicense?
Exclusive licensees are typically granted the right to pass-through the licensed rights to third parties for the express purpose of achieving those commercialization goals established in the primary license agreement. For example, a licensee may need to sublicense its rights to a manufacturer and/or distributor in order to bring the product to market. A sublicense is usually granted with prior approval of the university, and the university shares in any income generated by the sublicense. Sublicense rights are not granted to non-exclusive licensees. .
Why do I need a material transfer agreement?
A material transfer agreement (MTA) is needed whenever a researcher wants to send or receive research materials from another institution or company. Not all materials can be sent freely between parties. Some materials have stringent regulations on their use and transport such as federal export control laws. Universities and researchers can be fined and even face criminal charges for violations. MTAs can also protect intellectual property rights should an invention arise from the use of the transferred materials.
Only OTC representatives are authorized to approve and sign Material Transfer Agreements on behalf of UMass.
Please see the Forms page for more information.
Do you offer warranties or indemnification?
No. Universities cannot offer warranties or indemnification for their technologies.
What is a territory?
The university may hold patent rights in multiple countries. The territory of the license defines in which countries the university grants rights for the technology. The territory may be defined as “worldwide” provided the licensee has the capability and intention to commercialize reasonably broadly overseas.