An invention disclosure is a formal written description of an invention provided to HIIE. Instructions on how to submit a disclosure are available on Disclose an Invention page. The disclosure initiates the process for the HIIE team to evaluate the invention and, in partnership with the inventors, make decisions on the best approach to marketing and commercialization.

When UAB’s faculty, staff and students disclose their potential intellectual property, the benefits to the institution and to the surrounding community are multifold. If UAB is seen and acknowledged as a cradle of innovation and invention, it can and will lead to more research funding and will further UAB’s advancement into the top tier of academic research institutions. In addition, there is also a professional obligation to disclose potential IP. UAB Patent Policy requires all faculty members, university employees, and students, as a condition of their employment and/or enrollment, to report any invention or discovery which they have conceived or developed, or which has been conceived or developed under their direction, during their employment or enrollment. Even if you believe that you are not required to assign (i.e., to transfer ownership of) the invention or discovery to the HIIE, you still must disclose it to the HIIE. Once the invention or discovery is disclosed to the HIIE, a determination will be made as to whether the invention or discovery meets the criteria for assignment per university requirements.

Invention disclosures to our office should happen well before presenting the invention through publications, abstracts, posters, conferences, press releases or other forms of communication. For patentable inventions, presenting them or publishing them in any form before filing for patent protection significantly reduces the possibility of maximum societal impact by barring the university from seeking patent protection in many jurisdictions (which can disincentivize companies from further investing in the technology as needed to enable the technology to actually reach the market). However, publishing after filing for patent protection is fully encouraged. The HIIE team is committed to ensuring that inventors can publish their discoveries as soon as possible. Please don’t hesitate to contact the HIIE at innovation@uab.edu with any questions or concerns you might have.

An issued patent conveys the right to the owner of the patent to exclude others from making, using, selling, offering to sell, and importing the patented invention. The patent must be actively defended or enforced by the patent owner.

Processes, machines (such as devices), compositions of matter, articles, some software, and specific methods can all be patented.

Under U.S. law, an inventor takes part in the creation of the invention claimed in the patent application. A person who only gives funds to build an invention or is an assistant following specific directions is not generally considered an inventor. A registered patent attorney will determine appropriate inventors.

Patent applications are drafted by patent attorneys that the HIIE hires and reviewed by inventors and licensing associates. When an application is filed, inventors are asked to sign documents confirming that the inventions and any resulting patents have been assigned to the UAB Research Foundation. Patent applications can be filed in the United States and/or in other countries.

A provisional application reserves, for 12 months, the applicant’s right to file a more detailed non-provisional application. Since a patent may only be issued to the first inventor to file an application (or the first applicant to file on the inventor’s behalf), a provisional patent application can be used to secure a priority filing date for a patent application before disclosure (via publications, etc.) of the invention.

The process typically works in a similar fashion to the United States. However, in almost all other countries, an inventor will lose any patent rights if the invention is publicly disclosed prior to filing the patent application. In the United States, there is a one-year grace period.

The average time required to obtain a patent is 3-5 years, although some fields such as biotechnology may have a longer wait time. It may take some back-and-forth with the United States Patent and Trademark Office (USPTO) before a patent is granted/issued. Once issued, it is generally enforceable in the United States for 20 years from the initial filing of the non-provisional patent application. Contact HIIE at innovation@uab.edu for specific information pertaining to your invention.

No. Only a validly issued patent can be enforced.

HIIE makes the final decision, in consultation with the inventor and any joint owners, if applicable. Not all inventions are patentable or justify the significant time, expense, and effort required to seek patent protection. The HIIE team will review both the patentability and commercial potential of an invention before starting the patent process.

The HIIE licensing associate will need to determine ownership and other rights as well as next steps. If the technology is jointly owned with another academic institution, UAB may enter into an Inter-Institutional Agreement that will allow one of the institutions to take the lead in protecting the invention. The agreement usually also provides for sharing of expenses associated with the patenting process and allocating any licensing revenues.

Research materials are unique materials that are owned by and created at UAB. Most often, this refers to biological materials such as animal models, antibodies, cell lines, plasmids and vectors. It may also refer to chemical compounds. Research materials are sometimes patent-eligible. Contact HIIE at innovation@uab.edu with specific questions.

The up-to-date UAB Patent Policy can be accessed at tinyurl.com/UABPatentPolicy.

Any invention or discovery which is:

• The result of research carried on by or under the direction of a UAB employee and/or having costs paid from funds provided by, under the control of, or administered by UAB,
• Made by a UAB employee and which relates to the employee’s field of work, or
• Developed in whole or in part by using UAB resources or facilities,

is the property of the University of Alabama at Birmingham, not of the individual inventor. As a condition of employment or enrollment, faculty members, employees and students agree to disclose any invention or discovery conceived, discovered, developed and/or reduced to practice at any time following their initial employment or enrollment. Such inventions or discoveries are disclosed to the Harbert Institute for Innovation and Entrepreneurship at uab.edu/innovation/disclose.

If the HIIE team determines that an invention was not developed with UAB resources or in connection with a faculty or staff member’s employment, the HIIE will not claim ownership of the invention.

Student inventions are governed by the UAB Patent Policy, but as a general matter, inventions created by students are much less likely to qualify under the categories of inventions that the university would own. However, student inventions that result from research that is carried out by the student under the direction of a UAB employee or that are developed in whole or in part through use of UAB resources would be owned by the university. If you have questions about specific circumstances surrounding your invention, please contact the HIIE at innovation@uab.edu.

The agreement for allowing commercial use of a UAB-owned invention by a company outside of UAB is a “license.” If UAB grants a license, the company can develop and sell products based on the invention. HIIE will typically keep the inventor(s) informed during the licensing process, but licensing negotiations are independently managed by HIIE. For more on licenses, see the “Agreements & Contracts” section of this guide.

License revenues are distributed according to the Patent Policy. Revenues from license fees, royalties and equity will be shared with inventors according to a pre-existing formula as described in the graphic found on this webpage.

While the HIIE team works diligently to license UAB technology, in the end, the success of a licensed invention depends on finding a committed licensee. A licensee company needs to invest resources to develop an early-stage university invention, which carries significant financial risk for that company. While the HIIE team works to broadly market technology to potential company partners, it is not always possible to find the right licensee for each invention. Even after we find an interested licensee, our associates must still negotiate the terms of that license. So, there are no guarantees that your invention will be licensed.

There are myriad other factors that also play a part, such as personal and professional connections that inventors have and relationships that the HIIE team continues to build within the scientific community. We also strive to give our technologies a larger platform by attending conferences and showcasing technologies for license on social media and in other marketing materials. We also encourage inventors to continue to publish their research.

A U.S. patent costs $15,000-$50,000 over the life of a patent. Broad foreign patent protection costs more than $100,000 per patent. Many patents are never licensed, which means they don’t generate revenue. The HIIE team must consider the considerable risks along with the patentability and commercial potential of an invention before starting the patent process.

A confidential disclosure agreement (CDA, also known as a non-disclosure agreement or NDA) is a binding, legal agreement between two or more parties that defines confidential information, allows the parties to exchange such information, defines each party’s allowable actions with the other party’s confidential information, and defines the purpose of the information sharing. CDAs can also protect the patentability of proprietary information that has not yet been published.

An option agreement describes the conditions under which the HIIE grants a right for a limited period of time for the option holder to negotiate a license for UAB-owned intellectual property. Option agreements do not generally allow option holders (i.e. companies) to use the intellectual property in any commercial manner.

A term sheet is usually a non-binding understanding between the HIIE and a potential licensee, setting forth the basic terms (typically the financial terms) and conditions under which a UAB invention could be licensed. This is typically the basis upon which a more detailed legal document, such as a license agreement, will be drafted.

A materials evaluation agreement allows interested companies to access and evaluate UAB inventions (such as a potential drug or cell line) to see if those inventions are of commercial interest before entering into a license agreement.

A license includes a grant of rights to a form of intellectual property, such as an issued patent, a research material or reagent, a piece of software, etc. The license agreement will describe the rights and responsibilities related to the use of that intellectual property by the licensee. An exclusive license gives the licensee the exclusive right to use that intellectual property in the licensed field, subject to certain limited rights retained by UAB. A non-exclusive license, conversely, means that more than one licensee can obtain a license to the same intellectual property in the same field.

A start-up is a new business formed to commercialize inventions (including but not limited to patentable inventions, devices, software, know how, etc.) through the development and sale of products or services. Those considering the launch of a start-up should consider several key factors, including:

• The stage of the technology and the level of development risk;
• The cost to bring a product to market versus the potential return on investment;
• The potential to launch multiple products or services from the same technology;
• The size of the target market and the competitive advantage;
• Market saturation;
• Alignment with potential commercial partners; and
• Potential revenue streams and funding sources, and whether those are sufficient for the company to thrive.

The HIIE team is here to help UAB inventors and entrepreneurs evaluate these factors. Please email the team at innovation@uab.edu for assistance.

The choice to establish a start-up company around a UAB-owned technology is typically a joint decision made by HIIE and the technology’s inventors.

There are certain roles that a full-time UAB faculty or staff member may fill in a start-up company. These roles include:

• Chief scientific or technical officer,
• Founder,
• Member of board of directors,
• Consultant.

A full-time faculty or staff member may not serve in a managerial role, such as:

• President,
• Chief Executive Officer,
• Chief Financial Officer,
• Chief Operating Officer.

It is important to understand that a faculty member’s relationships with a start-up may create a conflict of interest, thereby affecting the faculty member’s ability to participate in research and other activities at UAB. Faculty or staff involvement in a start-up that constitutes a significant financial interest as defined by university policy must be disclosed as specified in the policy. The UAB Conflict of Interest Review Board (CIRB) will review potential conflict of interest in any of the faculty member’s research.

Once an inventor, after discussions with HIIE, decides to create a startup to further the technology, the first step is to identify a source of money and management given the constraints as noted above for the inventor role. Equity allocation between the entity that provides money and management and inventors is the most important discussion point between those parties. HIIE staff can provide some high-level guidance on these matters. Inventors with questions about equity allocation should contact their licensing associate.

An inventor who receives equity or stock from a company must report it to UAB. For more information on this requirement, contact the Office of Compliance & Risk Assurance (OCRA) or the Conflict of Interest Review Board (CIRB).

Starting a company is a considerable undertaking that typically requires a good amount of time and interest. Until the start-up team begins operations, the faculty or staff member will likely be highly involved in the company formation process. Once that team is in place, there may not be as much daily effort required, but the start-up will likely still demand significant time and attention.