Commercial Ventures and Intellectual Property

Faculty Frequently Asked Questions

This FAQ is divided into three categories:

  1. Intellectual Property (IP Basics)
  2. Protecting Intellectual Property
  3. Invention Disclosures at UMass Lowell


Intellectual Property (IP Basics) 

Q. What is intellectual property?
A. Intellectual property includes patentable inventions (for example, new compositions of matter, new methods of using existing materials, new methods of manufacturing a material), copyrightable works (for example, software), and tangible research materials invented, created or discovered by UMass investigators. 

Q. What is a patent?
A. A U.S. patent gives the holder the right to exclude others from making, using, selling or offering to sell an invention within the United States for a certain period of time. Unlike copyrights, which exist from the moment the work is created, no patent or inventor rights exists until the patent is issued by the United States Patent and Trademark Office. 

Q. How much does it cost to file and obtain a patent?
A. Filing a U.S. patent application may cost between $8,000 - $12,000 or more.  To prosecute the application and obtain an issued patent may easily require double that amount.  Filing and obtaining issued patents in a foreign country may cost $20,000 or more for each country.  Once a patent issues, periodic maintenance fees are required to keep the patent current. 

Q. How long does it take to obtain a patent?
A. On average, a U.S. patent application is pending for three years before it issues, though inventions in the biotech and computer fields take longer. 

Q. What is a copyright?
A. A copyright is the grant of protection under the laws of the United States to authors of original works that are fixed in a tangible form of expression. Examples include literary, dramatic, musical, artistic, and architectural works. Software may be copyrighted, but may also, in limited circumstances, be patentable.

A copyright owner has the exclusive right to authorize others to reproduce the work, create derivative works, distribute copies of the work, perform the copyrighted work publicly, display the work publicly, and if it is a sound recording, perform the work publicly. 

Copyright protection automatically exists from the moment of creation, and a work is created when it is fixed in a tangible form. Therefore, no publication or registration or other action by the Copyright Office is required to secure a copyright.  However, copyright registration is required before a copyright infringement suit may be filed.  


Protecting Intellectual Property 

Q. What is a public disclosure?
A. 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.
Examples:

Q. What if I want to publish my results?
A.
Call the CVIP 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 CVIP ever prevent you from publishing or presenting your research.

Q. What if I need to talk about my invention?
A.
Call the CVIP Office 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.

Q. Do I have an obligation to notify CVIP of inventions?
A.
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 CVIP prior to any public disclosure.  You may also have other obligations of disclosure to CVIP for industry sponsored research.

Q. Why do I need a confidential disclosure agreement?
A.
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 CVIP regarding the nature and timing of presentations, posters, and discussions outside UMass that might include intellectual property.

Only CVIP representatives are authorized to approve and sign confidentiality agreements for on behalf of UMass Lowell.
Please see the
Forms page for more information. 

Q. Why do I need a material transfer agreement?
A. 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 CVIP representatives are authorized to approve and sign Material Transfer Agreements on behalf of UMass.
Please see the Forms page for more information.


Invention Disclosures at UMass Lowell 

Q. When should I file an invention disclosure or a software disclosure?
A.
The preferred time for UMass Lowell investigators to disclose intellectual property is before publication or any other public disclosure (lecture, poster presentation, etc.). With respect to inventions, you may disclose as soon as the invention is conceptualized, rather than waiting until the invention is reduced to practice.  You can download the disclosure forms
here

Q. What are the benefits of disclosing inventions to CVIP?
A. The benefits are:

  • Protection of intellectual property created at the university.
  • Management of technology evaluation and patent prosecution process.
  • Payment of patent office fees and legal fees.
  • Revenues derived from licensing intellectual property are distributed to the inventors as personal income and to the departments and programs of the inventors to fund further research.  
  • Satisfies eligibility requirement for the CVIP Technology Development Fund Award.
Q. What happens to my disclosure at the CVIP Office?
A. When CVIP receives a disclosure form, a case manager is assigned to process the disclosure.  Once the disclosure form is fully completed, the case manager will interview the investigator to gain an understanding of the disclosed intellectual property.  CVIP is responsible for evaluating the commercial value of the intellectual property by conducting market and prior art assessments.  The case manager will discuss the technology and the potential market with other case managers at other UMass campuses.  Through this process, CVIP determines whether it is in the interest of UMass Lowell to file for patent protection.

Q. How can I help?

A. You can help by:
  • Filling out your invention disclosure form as completely as possible (doc). The more information we have, the better we can make an accurate evaluation of the new technology.
  • Conducting a preliminary prior art search.  As the inventor, you are the one most intimately familiar with the technology.  Search academic journals relevant to your field, previously issued patents and published patent applications. Even a keyword search on Google can be highly informative.  Include any relevant findings with your disclosure and let us know how your invention is unique from the existing technology.  If CVIP decides to go forward with a patent application, we will do a more thorough prior art search with patent counsel, but your efforts will expedite the process.
Q. Why didn't you patent my invention?
A. What is great science isn't always a great patent, and what is a great patent isn't always great science.  There are many reasons why the CVIP Office may decide not to go forward with a patent application on a new invention.  Here are some of the most common:
  1. Not patentable. An invention must be novel, non-obvious, useful, and deemed patentable subject matter in order to be patented.  In addition, the invention must be sufficiently disclosed and enabled in order to result in an issued patent.
  2. No freedom to operate.  Most inventions are improvements or extensions of existing inventions.  Sometimes the unique portion of a new invention is so small as to force anyone who wants to use your invention to license several other patents to avoid infringement.  These situations reduce the usefulness of obtaining a patent.
  3. No market.  A patent provides a competitive advantage in the marketplace by creating a temporary monopoly.  If there is no market for the invention or there are other barriers to entering the market, it is not worth the cost to obtain a patent.  The size of the potential market and decision not to file for a patent is not a reflection on the quality of the research.  For products like software, the market changes so quickly that the time to obtain a patent is far longer than the usefulness of the product.  In these cases, it may be better to depend on copyright.
  4. No licensee.  CVIP must eventually find a licensee to cover patent expenses and hopefully provide future royalties.  Unfortunately, they cannot always find an interested party.  If you have industry contacts or know individuals forming a start-up who may be interested in your invention, let CVIP know.