Do you have an idea or invention? Let's talk.

The Bill L. Harbert Institute for Innovation and Entrepreneurship (HIIE) encourages UAB faculty, employees and students to discuss scientific discoveries and possible inventions with our office as early in the research as is practical. Together we can explore important issues such as commercial potential and timing of public disclosures.

If you think you have an invention, disclose it to the HIIE promptly — before you submit a manuscript for publication, and before you address a meeting, conference, seminar or symposium. Any public disclosure of an invention (whether a publication, presentation, abstract, or conversation) can limit our ability to file a patent application. 

Frequently asked questions for researchers


Policies and Guidelines

Materials Transfer

Disclosing Intellectual Property

To submit an Intellectual Property Disclosure (IPD), please complete an IPD Form, provided below in PDF format.

Please note that you must print out the completed document and obtain original (wet) signatures, then submit the completed form to the Bill L. Harbert Institute for Innovation and Entrepreneurship (HIIE). We can take no action on your disclosure until the completed form is submitted. If the document is received and is not complete, it will be returned requesting the missing data and/or signatures.

Important reminder: The submission of an IPD does not constitute the filing of a patent application or any protective right with the appropriate federal authorities. It is merely documentation with the HIIE (and UAB) that you feel that you have a discovery worth documenting and triaging for such protection.

If you experience difficulty with the forms or have questions, please notify us at This email address is being protected from spambots. You need JavaScript enabled to view it..

Releasing Intellectual Property to Researchers

If the Bill L. Harbert Institute for Innovation and Entrepreneurship (HIIE) has informed you that it is closing a particular case and invited you to request release of the intellectual property (IP) rights, you may contact us at (205) 934-9911 or This email address is being protected from spambots. You need JavaScript enabled to view it. to request an assignment agreement.

Assignment agreements can be negotiated only for technology disclosures that the HIIE has decided to close. You will be informed when such decisions are made. Other technologies in the HIIE's portfolio, even those that are currently not licensed or patented, remain the property of the HIIE. Information about commercializing HIIE technologies is available in the Frequently Asked Questions below.

Frequently Asked Questions

What is the role of the Bill L. Harbert Institute for Innovation and Entrepreneurship (HIIE)?

The UAB HIIE was created in 2013 to serve as a focal point for UAB innovation, entrepreneurial educational models, applied research, management of intellectual property (IP) and an entry point for industries seeking to collaborate with UAB, our world-class university. The HIIE empowers cross-campus disciplines, while actively seeking real solutions for our local regional and state partnerships, utilizing the deep scientific and academic talent base residing within the core of UAB. This includes aggressively marshalling core curricula in education, innovation, knowledge, entrepreneurship, technology transfer and community/industrial engagement via novel means to drive technology based economic development.

What is the role of The UAB Research Foundation (UABRF) and how does it relate to the HIIE?

The UAB Research Foundation (UABRF) is the technology transfer office of UAB. UABRF was formed in 1987 as a non-profit corporation with a mission to identify, assess, and market commercially viable technology developed at The University of Alabama at Birmingham (UAB). UABRF is a part of the broader HIIE but remains the legal entity which exists for the benefit of UAB for contracting in matters of IP. UABRF owns all UAB IP which falls under UA Board Rule 509 by assignment from UAB.

What is IP?

IP is any product of the human intellect which is protectable by law and unauthorized use by others. The ownership of IP inherently creates a limited monopoly in the protected property. IP is traditionally divided into four categories: patents, copyrights, trademarks, and trade secrets.

Why disclose an invention or discovery to the HIIE?

  1. Disclosure to the HIIE initiates a process of protecting and marketing the innovation that provides the greatest opportunity for the innovation to be used in practice for the public good.
  2. The same process provides the greatest opportunity for the innovation to generate revenue to be shared among the innovator(s) themselves and their associated department(s), school(s), and the university.
  3. Some federal and industry grants require such disclosure to comply with the terms of the award. Furthermore, UAB policies require disclosure of IP to the HIIE if such IP was developed using UAB funds or resources.

Who is required to disclose an invention or discovery to the HIIE?

According to UAB policy, all faculty members, university employees, and students, as a condition of their employment and/or enrollment, shall report to the HIIE any invention or discovery which they have conceived or developed, or which has been conceived or developed under their direction during their employment or enrolment. Even if you believe that you are not required to assign the IP to the HIIE, you still must disclose it to the HIIE.

What should I do when I have created IP?

You should complete an IP Disclosure (IPD) form (link to disclosure forms) as soon as possible and submit it to the HIIE. The form asks questions including specifics about the innovation, important dates in the history of its development, the investigators involved, and any funding sources or other obligations.

The associated Revenue Distribution Agreement clarifies, in the event of multiple investigators, the percentage share of the invention or discovery by each UAB innovator for future use in allocating any revenues generated. Questions about the disclosure process and help with IPD preparation are available through the HIIE office (205-934-9911).

When should I disclose an innovation to the HIIE?

An innovation should be disclosed as soon as you believe you have created new IP, and definitely before any public disclosure of the IP. Public disclosure of the innovation can prevent a patent from being granted, and without patent protection, companies are less likely to invest in turning the innovation into an actual product. Thus, public disclosure of the innovation (before protecting the IP) can actually prevent it from being used for the public good.

What if federal funding was used to create the invention?

The HIIE reports to the NIH and other government agencies about certain events in the life of any IP generated using funding from that agency. These events include the filing of an IPD, the granting of a patent, and revenue gained by licensing the IP. If the HIIE decides not to pursue the commercialization of an innovation funded by a government agency, it waives the IP to that agency and, if requested, assists the innovator in his/her petition to obtain IP rights to innovation from the specific government agency.

What happens once the IP has been disclosed?

The HIIE assigns a licensing associate to the innovation. The licensing associate determines if the IP must (by UAB policy) be assigned to the HIIE and, if so, investigates the patentability and possible commercial benefits of the innovation. Normally, this process starts with a meeting between the licensing associate and the primary investigator of the innovation.

If the HIIE elects, after careful consideration and market analysis, not to pursue protection or commercialization of the innovation, the HIIE may negotiate an assignment of the innovation back to the innovator or waive the IP back to the government agency that funded the research.

If the HIIE elects to pursue commercialization and/or protection of the IP, the licensing associate determines and executes an appropriate protection and licensing strategy. In many cases, both IP protection and marketing will take place in short order. However, there are exceptions. For example, a monoclonal antibody may be commercially valuable without patent protection, and an innovation with long-term potential may be worth patenting now but may not yet be ready to market. Also, limited resources may sometimes delay the investigation or marketing of a particular innovation.

How long will it take to patent my invention?

Although timelines for each innovation will vary based on a number of factors, the following outlines the typical process. The initial meeting between the innovator and the licensing associate will generally take place within one to two weeks. Next, a preliminary phase of market research and patentability studies will take between two and four weeks. Assuming that these studies indicate that patent protection and technology marketing is warranted, it will take about four to eight more weeks to file a provisional or non-provisional patent application. After filing, communications occur between the HIIE, its patent attorney, and the U.S. Patent and Trademark Office (USPTO) periodically, but it may be several years before the patent is granted or denied.

patent

What are the inventor’s responsibilities, if any, during patent prosecution?

Once the HIIE has filed and converted a provisional patent application on behalf of the inventor(s), the next stage is active patent prosecution. During this process there will be various items that will require signatures from both our office as well as from the named inventor(s), including assignment documents, powers of attorney, declarations, affidavits, etc. It is vitally important that we have the complete cooperation of all inventors (whether here at the university or elsewhere) to ensure prompt and proper assistance in obtaining these signatures. Neither our office, your spouse, partner nor colleague (except for an authorized UAB administrator in the event of a named inventor’s death) can sign on your behalf. The USPTO now accepts pdfs of most documents; however, several foreign countries still require “wet” or original signatures. We will endeavor to advise you at the time we request your signature if we require the original document be returned to us. Delays in obtaining these signatures can result in an application being abandoned for failure to comply with requirements of the USPTO. If that occurs, we have often found it very hard, as well as very costly, to have the application reinstated. For these reasons, we request that all inventors make every effort to complete the request for signatures in a timely manner and, if a named inventor leaves the university, we request they contact our office as soon as possible with updated contact information for updating our records to ensure we can adequately and appropriately notify them. This will hopefully eliminate any unnecessary delays in completing our requirements and maintaining patent protection for both inventors and the university, as well as assure potential or engaged licensees that our office has met and maintained all filed matters in a timely manner.

Does the HIIE ever release IP ownership to the innovator or anyone else?

Yes. If the HIIE determines that it has no plans to pursue commercialization of an innovation, it pursues the release of the IP. If the research was funded by a government agency (NIH is a common example), and the innovator wishes to obtain rights to their IP, the innovator may contact the HIIE who will in turn notify the federal government agency of the request. The HIIE will then assist the innovator with the necessary documentation.

If the research was not funded by a government agency, the HIIE may negotiate an assignment of the IP to the innovator. The assignment agreement will usually provide some benefits to the university in the event of successful commercialization of the innovation; for example, the repayment of any patent expenses incurred, and/or a share in future revenue or equity.

Note, however, that improvements to the technology are not covered in the assignment agreements. Even after the release of an innovation that may have been deemed not commercially viable, UAB innovators are required to disclose to the HIIE any improvement they make to the technology, and this new IP will be governed by all the policies listed here.

What are copyrights and trademarks and does the HIIE file such protections?

A trademark protects names, terms and symbols that are used to identify the source of goods and/or services on the market. A copyright protects original creative works such as books, movies, songs, paintings, photographs, web content and choreography. The HIIE files both trademark and copyright registrations with the assistance of outside legal counsel when appropriate to protect UABRF-owned IP.

How does the licensing process work?

If the HIIE pursues licensing of IP, the licensing associate will develop a marketing plan with the initial assistance of the innovator. The licensing associate will seek organizations that may be interested in licensing the IP. In some cases, the innovator has identified the companies (and even individuals within the companies) most likely to license this technology. In other cases, the licensing associate researches companies in the field and markets directly to them through phone calls, sending flyers, or other methods. The licensing associate may also package several related technologies together and seek to license the package.

Once one or more interested companies are identified, the licensing associate negotiates license agreements. This can be an involved process, as there are issues of exclusivity, cost, and payment terms, among others.

Once a license agreement is signed, the HIIE monitors this agreement for compliance, distributes revenue received per university policy, and (if the agreement is non-exclusive) may seek other license agreements.

If no license agreements are reached, the HIIE may eventually decide to delay further licensing efforts or to negotiate an assignment of the IP back to the innovator(s).

How is revenue from any commercial licensing of UAB innovations distributed?

License revenues received are distributed quarterly according to the following UA and UAB policies.

By UA policy, fifteen percent (15%) of gross license revenues are retained by the HIIE to cover administrative costs, in addition to any expenses incurred patenting the IP. UA policy authorizes each campus president to determine the distribution of remaining (net) license revenues. By UAB policy, for each license agreement, revenue is distributed as follows:

revenue

If there are multiple innovators involved, the distributed funds are allocated to the innovators, departments and schools according to the Revenue Distribution Agreement submitted and signed at the time of disclosure.

Quarterly distributions are made within 30 days of the end of each fiscal quarter. UAB innovators are paid by check. Departments and schools are paid by transfer between university accounts.