Technology Identification

What is a copyright?

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.

How do I find out what technologies are available for licensing at the university?

Short summaries of our technologies are available online in a searchable database under the Technology Search tab.

How long does it take to obtain a patent?

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.

I found a technology I'm interested in. Now what?

Contact the OTC for more detailed information on the technology.  The case manager will work with you to provide additional non-confidential or confidential information (under a confidential disclosure agreement) as the situation warrants.

What is intellectual property?

 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.

Great! I want to license the technology. What information does OTC need from me?

Since the university deals with all sorts and sizes of organizations, the specific information we require in one situation may differ from that required in another (e.g. large, established multinational corporation vs. start-up company).  

In general, we will need a description of your company, business model, and possibly resumes of the management team or project leads.  There is no required format for these reports.  It could be a simple few paragraphs or the formal business plan you send to potential investors. We will want to see a written description of how you plan on commercializing the technology with an indication of your estimated time line.  Later you will also need to prepare a term sheet for the license agreement. 

In summary, we will require at a minimum the following items: 
  • Description of your company: industry, business units, size, etc.
  • Management description: key officers of your organization, including the key business and scientific contacts we should work with
  • Technology development and commercialization plan: how you plan to develop and commercialize the technology
  • Licensing term sheet: address the material terms of the proposed license agreement, including but not limited to the grant of rights such as exclusive vs. non-exclusive, territory rights and the field(s) of use

How much does it cost to file and obtain a patent?

 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.

What is a patent?

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.


Terms of License Agreements

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. 
Examples:
  • 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.

Patent Prosecution and Litigation

What are the benefits of disclosing inventions to OTC?

  • 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 OTC Technology Development Fund Award.

What happens to my disclosure at the OTC Office?

When OTC 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.  OTC 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, OTC determines whether it is in the interest of UMass Lowell to file for patent protection.

How can I help?

  • Fill 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.

  • Conduct 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 OTC 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.

What if I discover someone infringing the patent?

Exclusive licensees are generally permitted the first right to take action against alleged infringers of university patents.  Non-exclusive licensees are not allowed to pursue alleged infringers.  However, we encourage all licensees to contact the university as soon as possible after being made aware of the potential infringement to discuss the appropriate response.

Why didn't you patent my invention?

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 OTC 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.  OTC 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 OTC know.
What patent costs do I have to pay?

Exclusive licensees are expected to reimburse the university for all patent costs: past, present, and future related to the licensed technology.

How is patent prosecution managed?

The university maintains control of the prosecution to protect ongoing research and commercialization efforts.  However, exclusive licensees are encouraged to participate in the patent prosecution process as the university recognizes they have valuable first-hand knowledge of the market.  We typically provide the licensee with copies of all material documents, consult with on significant prosecution decisions, and allow access to our outside patent counsel upon request.  The university also consults with the licensee when determining whether and where to file and maintain patent rights in foreign countries. 

When should I file an invention disclosure or a software disclosure?

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.