The UCIPO initiates a marketing effort to identify and contact appropriate
companies to commercialize the technology in return for royalties, license
fees and/or research funding. The UCIPO maintains contact with companies
that have potential commercial interest in UC technologies.
Inventors can be of great assistance in helping the UCIPO staff solicit
interest in their invention by identifying specific individuals or companies
whom they think would be particularly useful in providing a commercial
evaluation. Inventors who are involved in the marketing effort are much
more likely to see their invention commercialized and we encourage such
If one or more companies express interest in obtaining licensing rights
to the invention, the UCIPO will negotiate an agreement which is appropriate
for the given technology, its stage in development and its commercial potential.
The UCIPO also allows for the possibility of individuals to create new
business ventures involving UC patentable technology and works with faculty
and staff as well as non-UC individuals in the early stages of such ventures.
The UCIPO should be considered a resource when a UC employee is considering
starting a business venture, especially one based on UC technology.
When a faculty member wishes to discuss his/her work with individuals
outside of UC, the UCIPO can prepare and execute a Confidential Disclosure
Agreement (CDA) on behalf of UC. This protects the University's right to
file patent applications, and it makes it more difficult for others to
steal the faculty member's ideas (although a patent, if feasible, may be
a better defense against such theft). We strongly recommend the use of
a CDA if you wish to discuss your work with somebody working in industry.
Confidentiality Agreement Forms may be obtained
from the UCIPO office.
1. The name, organization, address, telephone,
and fax number of the requesting individual and a description of the subject
matter to be disclosed should be given to the UCIPO as well as the reason
for the disclosure.
2. The UCIPO will prepare a Confidentiality
Agreement with the requesting outside organization. Please note that only
designated University signatory officials, and not faculty members or department
chairs, are authorized to sign CDAs for the University.
3. After the agreement has been completed,
the originator of the confidential information will be allowed to release
it. It is important that written confidential information be stamped "CONFIDENTIAL."
It may also be necessary, depending on the terms of the CDA, for orally
disclosed information to be declared confidential at the time of disclosure,
and a follow up letter describing the disclosed confidential information
sent to the other party.
Our standard CDA includes language that exempts
previously published information, as well as certain otherclasses of information,
from obligations of confidentiality. Patent information is considered confidential
by the Patent and Trademark Office until the patent issues.
Confidentiality Agreements from Other Parties
Outside organizations may request that the
University sign agreements with confidentiality provisions to protect confidential
information given during the course of sponsored research, clinical trials,
material transfers, or discussions between the parties for other reasons.
All agreements with confidentiality terms should be reviewed by UCIPO.
This ensures the protection of the University's and faculty members' intellectual
University of Cincinnati employees can sign
confidentiality agreements on their own behalf only in cases where they
are acting as consultants to a company and not in their role as University
The U.S. Patent and Trademark Office (PTO)
has asserted that funded grant applications are part of the public domain
and hence constitute "prior art" against subsequent patent applications.
The Dept. of HHS specifically requires that
any requests for grant applications submitted under the Freedom of Information
Act be reviewed by the principal investigator before release, affording
an opportunity for deletion of confidential information. Including the
following disclaimer at the top of the specific aims section of a grant
application will help ensure that proprietary rights are maintained:
"The following information is proprietary
and confidential and may not be released without the prior written approval
of the principal investigator. "
Material Transfer Agreements
Researchers in the biological sciences frequently develop useful biological
materials, including transgenic animals, genes, DNA fragments, cell lines,
antibodies, plasmids, expression vectors, etc. It is common practice
for scientists at different institutions to exchange these materials with
each other. In fact, many journals insist that the person who first
publishes such a material must share it with other investigators.
Such exchanges can pose problems, as the materials may contain commercially
valuable intellectual property. This may be true even if the material itself
is not patentable. As one example, if a gene produces a predisposition
to a certain disease, cells or animals containing that gene may be the
key to developing valuable diagnostic and therapeutic agents.
Materials containing DNA are likely to be self-replicating. In
other words, a minute amount of the material can serve as a template
or factory for the production of unlimited amounts of identical material.
This presents special problems.
Companies and universities seek to protect the intellectual property
embedded in their biological materials (and to protect themselves against
liability) by asking the recipient and his/her institution to sign a form,
commonly called a Material Transfer Agreement or Statement
of Investigator Form. There are many variations on the theme, but
we will refer to all of these agreements as MTAs.
Tips on Material Transfer Agreements
We know that MTAs are sometimes seen as an impediment to research progress,
especially when they delay the receipt of needed samples. Accordingly,
we would like to provide a few tips to expedite the handling of these documents:
For materials coming into UC:
Do ask if the material can be provided under the Uniform Biological Material
Transfer Agreement (UBMTA). This simple, standardized MTA has been
signed by over 130 academic institutions. (Unfortunately, it does
not apply to companies.) To use it, the institutions only have to sign
a simple Implementing Letter recording the exchange. You can find
the text of the UBMTA, the Implementing Letter and a list of signatory
institutions, along with other information, at the Association of University
Technology Managers (AUTM) website: AUTM
Do send or hand-carry the completed MTA for
signing directly to Lynn Brigs in UC's
Intellectual Property Office, ML 0829, University Hall, Suite 240.
Do attach a note advising us if the material is listed as hazardous in
42, Code of Federal Regulations, Part 72, Appendix A
- Do call us if you have any concerns about the terms of the MTA or your ability to comply.
- Do tell us if you think your use of the material could lead to a patentable invention.
- Do not sign any MTA on behalf of the
University of Cincinnati. You may sign as Investigator, but a
UC signature is also required, and you are not authorized to sign on
behalf of the University.
Do not fax a copy to us for advance review.
We would prefer to receive the original and sign it immediately if
- Do attach an A910-M
- Do not send an MTA to Sponsored Programs. It will just take longer to reach
For UC materials being sent to other
Do contact Missy Baines (558-5274 or via email) to obtain an appropriate MTA and send a completed A910-M.
- Do advise us if you believe the material
has important economic value. We do not want to inadvertently lose
rights to any such material. Companies are sometimes willing
to pay lump sums and/or royalties for access to any unique
biological material that has potential value as a therapeutic or
diagnostic agent, or that can be used as a key to discovering such
- Do advise us if the recipient is at an academic institution listed as a UBMTA Signatory Institution in the
AUTM website: http://autm.rice.edu/autm/. If so, we
can simplify routine transfers by using the standard Implementing
- Do advise us if the material that you plan
to send out did not originate in your laboratory at UC, or if it is
derived from material that did not originate at UC. If you obtained
the original material under an MTA, we will need to determine
whether or not you have the right to send your derivative material
to a third party.
- Do not sign any MTA on behalf of the
University of Cincinnati. You may sign as Investigator, but
you are not authorized to sign on behalf of the University.
- Do not assume that you can use an MTA
provided by another party to transfer UC materials. Our legal
requirements may differ from those of another institution.
Sponsored Research Issues
Any arrangement to conduct research on campus for an outside sponsor
must be accompanied a contract stating the terms and conditions of the
program. The Office of Sponsored Programs is responsible for reviewing
and approving any such contracts and can provide standard contracts for
use in various situations. These contracts set forth the requirements of
the sponsor and the University concerning payments, work to be done, and
terms and conditions concerning publication and intellectual property rights.
Whether or not a standard contract is used, it is the University's objective
to protect the right of the investigator and his/her students to publish
their work in timely fashion without undue delays or interference on the
part of the Sponsor; and to protect the University's ownership and rights
with respect to patents and copyrights. Any deviation from the standard
intellectual property clauses must be approved by the UCIPO.
Like any sponsor, the U.S. Government acquires certain rights in any
invention made using its funds. Although such rights rarely inhibit the
commercial potential of the invention, any federally funded invention must
be reported to the funding agency and must be acknowledged in the patent
application. When you report an invention to the UCIPO, it is essential
that you list any sponsored research that supported the invention, so that
the University can comply with any obligations to the sponsor. All funding
sources should be listed. An effort should be made to avoid commingling
funds from several sources that might lead to conflicting or overlapping
Only certain UC administrators and contracting officers are authorized
to sign licensing agreements, CDAs and MTAs. Neither department chairpersons
or faculty members are authorized to sign these agreements. If you receive
such an agreement from a company or another university, please forward
it to the UCIPO for processing. Likewise, neither department chairpersons
or faculty members are authorized to promise any ownership rights in any
inventions or discoveries to potential commercial research sponsors.
Conflict of Interest
Inventors and creators should be aware of the University of Cincinnati's
Conflicts of Interest Policies. Any actions which cause the inventor or
creator of intellectual property to personally benefit from the exploitation
of his or her intellectual property in a manner inconsistent with that
policy should be avoided. The policy provides that conflict of interest
should be disclosed in order that the inventor can be adequately advised
in a constructive manner so that further entrepreneurship can be rewarded.
Faculty should disclose potential or real conflicts of interest or commitment
to their Dean. Staff should make such disclosures to their supervisor.
It has been found that early and complete disclosure of conflict of interest
or commitment situations is most successful in managing these situations
for the benefit of all involved.
See Additional Information on Conflicts of Interest