Frequently Asked Questions (FAQ) For Researchers

What is the role of the UABRF?

How are UAB and The UAB Research Foundation related?

Why disclose an invention or discovery to the UABRF?

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

What should I do when I have created intellectual property?

When should I disclose an innovation to the UABRF?

Who owns the intellectual property created?

What happens once the intellectual property has been disclosed?

How does the patent process work?

How does the license process work?

How long will it take to patent and commercialize my innovation?

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

May I, as the inventor, patent and commercialize the intellectual property myself?

What does the UABRF do to comply with government regulations?

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

What if I disagree with these policies?

What if the information on this site conflicts with official University policy?

Where can I find more information?


What is the role of the UABRF?
The responsibility of The UAB Research Foundation (UABRF) is to identify, assess, protect, and market commercially viable intellectual property developed at UAB. The UABRF reviews intellectual property disclosures submitted by UAB associates and initiates steps to protect the rights of the discovery, including the filing of domestic and foreign patents, when appropriate. The UABRF seeks, negotiates, manages, and monitors commercial licensing agreements on behalf of UAB. It also ensures compliance with certain government regulations.
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How are UAB and The UAB Research Foundation related?
The UAB Research Foundation (UABRF) is the technology transfer office of UAB. The 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). The UABRF is the assignee of all intellectual property developed at UAB, and is responsible for reviewing all invention disclosures submitted.
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Why disclose an invention or discovery to the UABRF?
There are several reasons.
1) Disclosure to the UABRF starts 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 for the innovator(s) themselves and the associated department, school, and University.
(3) Most people affiliated with UAB are required as a condition of employment or matriculation to disclose their inventions or discoveries.
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Who is required to disclose an invention or discovery to the UABRF?
According to policy, all faculty members and university employees, as a condition of employment, both while employed by the university and thereafter, and all graduate students performing research, shall report to the UABRF 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 the intellectual property to the UABRF, you still must disclose it to the UABRF.
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What should I do when I have created intellectual property?
You should complete an Intellectual Property Disclosure (IPD) form as soon as possible and submit it to the UABRF. The form asks questions including specifics about the innovation, important dates in the history of the innovation, 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 innovator for future use in allocating any revenues generated. Questions about the disclosure process and help with IPD preparation are available through the UABRF office (205-934-9911).
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When should I disclose an innovation to the UABRF?
As soon as you believe you have created new intellectual property, 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.

Any disclosure of the IP outside your UAB colleagues may be considered public disclosure. Examples include a published paper, a talk at a conference, or even a discussion with a colleague from another university or a company. The following events are all good times to consider whether you have IP to disclose to the UABRF: drafting a paper to submit for publication, applying to speak in a public setting, writing a grant proposal, seeking or being invited for collaboration outside UAB. If possible, disclose the IP to the UABRF at least two months before any public disclosure of the innovation, so there is time for the UABRF to evaluate the IP and file for patent protection if warranted.

The requirement for IP disclosure must not impede the course of research, since research is at the core of the University’s mission, but early disclosure to the UABRF can ensure that the benefits of patent protection are retained without any negative impact on the course of academic research. Feel free to call the UABRF to discuss whether it is the right time to submit an IPD on your research.
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Who owns the intellectual property created?
Intellectual property must be assigned to the UABRF if it meets any of the following criteria:
  1. it is the result of research carried on by or under the direction of any employee of the University and/or having the costs thereof paid from University funds or from funds under the control of or administered by the University, or
  2. it is made by an employee of the University and which relates to the inventor's field of work at the University, or
  3. it has been developed in whole or in part by the utilization of resources or facilities belonging to the University.
UAB employees and UAB graduate students are required to follow this policy as a condition of employment or matriculation. The UABRF will evaluate each individual innovation to determine whether it must be assigned to the UABRF under this policy.
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What happens once the intellectual property has been disclosed?
The UABRF assigns a licensing associate to the innovation. The licensing associate determines if the intellectual property must (by UAB policy) be assigned to the UABRF, 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 UABRF chooses not to pursue protection or commercialization of the innovation, the UABRF 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 UABRF wishes 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 license 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.
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How does the patent process work?
If the UABRF pursues protection of the IP, it will choose a patent attorney who will work with the licensing associate and primary innovator to draft and file an appropriate patent application. The involvement of the innovator is crucial to this process, as the commercial value of the IP is directly related to the accuracy and generality of the patent claims.
Since patent applications are expensive, the UABRF does not immediately patent every innovation that is disclosed. In some cases, it will file a “provisional” application which costs less, preserves the same priority date, and allows a year before deciding whether to proceed with a full patent application. In other cases, it may delay any patent application, especially If there is no planned public disclosure of the innovation, no perceived competitor for the patent rights, and no immediate commercial application seen.

Once a U.S. patent application has been filed, in parallel with prosecuting the U.S. patent the UABRF must decide whether to invest in seeking foreign patents. As with the U.S. application, this decision will be made weighing the cost of these applications versus the possible benefits, and there are delaying tactics available (notably the Patent Cooperation Treaty, or PCT) which can delay the expense of filing applications while preserving priority dates.
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How does the license process work?
If the UABRF pursues licensing of the 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 UABRF 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 UABRF may eventually decide to delay further licensing efforts or to negotiate an assignment of the IP back to the innovator(s).
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How long will it take to patent and commercialize my innovation?
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 study will take between two and four weeks. Assuming that this study indicates that patent protection and technology marketing is warranted at this time, it will take about four to eight more weeks to file a provisional or nonprovisional patent application. After filing, communications go between the UABRF, its patent attorney, and the U.S. Patent and Trademark office periodically, but it may be several years before the patent is granted or denied.

Meanwhile, shortly before the patent application is filed, enough information about the patent claims is available for a licensing associate to begin marketing the technology to companies that may be interested. Sometimes an interested company can be located very quickly, but often it can take months or years to find a company interested enough even to spend its time signing a CDA and seriously evaluating the technology. Then, the company may take anywhere from one to twelve months to decide whether it wants to license the technology. At that point, negotiating and signing a contract can take anywhere from one to twelve months, depending on whether the company and the University have difficulty finding mutually agreeable terms.

In sum, even though the UABRF, like you, wants to protect and commercialize your innovation as soon as possible, the process does take time. We encourage you to participate (on the patent front) in carefully reviewing and editing the patent application draft, and (on the marketing front) in working with the licensing associate to develop a marketing plan and keeping them informed if you later become aware of new marketing opportunities. We, in turn, will keep you informed of the status of patent applications and commercialization opportunities.
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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 UABRF to cover administrative costs, and 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:

Rev_Dist_Chart

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.
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May I, as the inventor, patent and commercialize the intellectual property myself?
In some cases, but there are many risks to you and the University. The UABRF is in favor of starting strong companies based on technology developed at UAB. ( examples ). However, it must compare the potential benefits to the public and the University of licensing to your new company versus licensing to an established company.

If the UABRF has chosen to pursue protection or licensing of the technology, you may start your own company and negotiate a license agreement with the UABRF to commercialize the technology. The UABRF will consider your business plan, your management team, your funding, and the current economic environment for startups, for example, as it considers whether licensing to your company is the best decision for UAB. Note that there are many costs of starting a company. As just one example, the UABRF license agreements generally obligate the licensee to pay all patent costs, which alone may cost your company $15,000 per patent in the first year of patent prosecution. You must also consider possible conflicts of interest with your UAB employment.

Though the UABRF mission does not currently include advising or funding startup ventures, other resources are available within the University for incubating startups. One such resource is the Innovation Depot.

Finally, if the UABRF assigns the technology to you (either because you are not required to assign it to the UABRF, or because the UABRF has chosen not to pursue commercialization of this innovation), you are free to pursue patenting and commercialization using your own resources, with the same caveats listed above.
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What does the UABRF do to comply with government regulations?
The UABRF reports to 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 intellectual property disclosure, the granting of a patent, and revenue gained by licensing the IP. If the the UABRF 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.
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Does the UABRF ever release IP ownership to the innovator or anyone else?
Yes. If the UABRF 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 innovater may contact the UABRF who will in turn notify the federal government agency of the request. The UABRF will then assist the innovator with the necessary documentation.

If the research was not funded by a government agency, the UABRF may negotiate an assignmnet 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 UABRF any improvement they make to the technology, and this new IP will be governed by all the policies listed here.
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What if I disagree with these policies?
If you would like to discuss these policies or the UABRF implementation of them, contact the UABRF, at the phone number listed below. If you disagree with the policies themselves, please note that these are set by the University of Alabama Board of Trustees and the UAB President. Written requests for policy changes may be submitted to the office of the President or Legal Counsel.
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What if the information on this site conflicts with official University policy?
Though we intend for this site to be accurate, official University policies are the final word. Please let us know if you believe any information on this site is in error,This email address is being protected from spambots. You need JavaScript enabled to view it.
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Where can I find more information?
Contact the UABRF at the phone number listed below, or email This email address is being protected from spambots. You need JavaScript enabled to view it. .
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