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 participation.

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.

Confidentiality Agreements

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.

Procedures and Policies

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 property rights.

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 employees.

Grant Applications

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 (MTAs)

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 Title 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 possible.
• Do attach an A910-M
• Do not send an MTA to Sponsored Programs.  It will just take longer to reach us.

• 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 agents.
• 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 Letter.
• 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 obligations.

Authorization

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