Commercialization Process

Discover

Research conducted by the faculty and staff at UMass Chan Medical School typically lead to new technologies and inventions that are protectable, usually with a patent. Patent protection may be sought for novel and non-obvious compositions of matter, processes, articles of manufacture, machines, or improvements to the foregoing. Research may also result in other forms of protectable intellectual property such as software or other tangible expressions of creative works can often be protected by copyrights.

Disclose

The commercialization process is initiated when an inventor discloses invention. An invention disclosure provides a detailed description of the invention, identifies past and future publications, and identifies potential licensing leads. This form allows BIBD to generate an official disclosure date of the invention, identify publication deadlines, perform preliminary patentability and market analysis, and fulfill obligations to the university, industry sponsors, and government. Inventors are encouraged to utilize the USPTO website to identify prior art relevant to their invention prior to submitting an invention disclosure. Each new invention disclosure is assigned to an BIBD licensing professional - assigned based on the departmental affiliation of the disclosing faculty member - who is responsible for moving the invention through the technology management life cycle.

Analysis

In the next stage of the commercialization process, the licensing associate will meet with the inventor(s), to discuss the invention in more detail and determine what the inventor wants to do with the invention. The licensing professional will also check the rights and ownership in the invention. If it is determined that the UMass Chan Medical School does own the technology, the invention will be assessed for market potential, patentability, capabilities for future development, and other issues affecting commercialization efforts. ­

Protect

After evaluating the invention in each of these important areas, the decision to move forward is made by a committee of senior BIBD and University management in consultation with the licensing professional. Typically, those ideas with the most commercial potential will be pursued. BIBD works with inventors to determine the best type of protection for each technology. Protection may include patents, copyrights, or other forms of intellectual property protections. Seeking patent protection is costly, approximately $25,000 in the U.S. and $150,000 for other major international markets. For this reason, UMass Chan Medical School only pursues protection for inventions meeting patentability and commercial criteria.

After deciding to pursue commercialization, the licensing professional in collaboration with other BIBD staff will make strategic decisions regarding patenting and other relevant legal protection as appropriate. Patent Protection typically begins by filing a provisional patent application. A licensing officer will select an attorney to review your disclosure and analyze prior art. The attorney then works with the inventor to draft the application, a process which can take up to two months.  Prior to expiration, 1 yr from filing, a U.S. non-provisional application and/or an international patent application will be filed.  A U.S. Patent can take up to six years to obtain.  

License

With their significant expertise in their chosen fields, many inventors will be able to offer insight on the potential of their invention and markets where their invention might be in demand. Consequently, the licensing professional and inventor will work together to further identify and understand potential markets. The licensing professional is then responsible for researching and contacting possible licensees.

After identifying interested potential licensees, the licensing professional will begin to negotiate license terms that provide fair return for the inventor and the university, while protecting the rights and ownership for all involved.

Licenses can vary greatly in nature, as can the consideration received for a license. An exclusive license generally costs more than a non-exclusive license. A license can be limited in scope or very broad in terms of the field of use. A license term can be just a few years, or can be in effect for the life of the patents. In all cases, the University retains the right to continue to conduct research in the field of the technology which is the subject of the license.

After an invention is licensed, the licensing professional will work to maintain intellectual property protection and ensure that licensee relations are kept current. This includes the collection and distribution of royalty payments. More information on the specific distribution of royalty payments at the UMass Chan Medical School can be found in the campus' Intellectual Property Policy (PDF). 

Start-Up Company

The BIBD office helps inventors interested in turning their innovations into start-up companies by evaluating the current capital and development stage, regulatory hurdles and reimbursements, and market opportunity of the technology.  For innovations with a strong value proposition and patent protection, we serve to connect inventors to capital, management, and advisors to create a business plan and launch the company. 

Further Develop

After analysis, a technology may be deemed in need of further development, prototyping, or proof of concept.  In such cases, the commercialization process will be put on hold until further data is generated.