Our office works to protect and commercialize research from faculty, staff, and students across campus. Learn more about our programs and policies in our Frequently Asked Questions.

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Policies

FAQs

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

The HIIE was created in 2013 to serve as a nexus for UAB innovation, entrepreneurial educational models, applied research, management of intellectual property and an entry point for industries seeking to collaborate with UAB innovators. The HIIE empowers cross-campus collaboration, while actively seeking real solutions for our local, regional and state partnerships.

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

The 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 UAB. UABRF is a part of the broader HIIE but remains the legal entity that exists for the benefit of UAB for contracting in matters of intellectual property. UABRF owns all UAB intellectual property that falls under UA Board Rule 509 by assignment from UAB.

What is the UAB Commercialization Accelerator?

The UAB Commercialization Accelerator is a program offered by the HIIE that provides the support and infrastructure for faculty, staff and student entrepreneurs to innovate. The UAB Commercialization Accelerator offers workshops, lectures, panel discussions, networking events, and structured multi-week accelerator cohort programs.

What is Intellectual Property (IP)?

IP is any product of the human intellect that the law protects from 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?

Disclosure to the HIIE initiates a process of protecting and marketing the innovation that provides the greatest opportunity for the innovation to be used for the public good.

The same process provides the greatest opportunity for the innovation to generate revenue to be shared among the innovator(s), their associated department(s), school(s), and the university.

Some federal and industry grants require such disclosure as a term of the award. Furthermore, UAB policies require disclosure of IP developed using UAB funds or resources.

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

UAB 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 the IP to the HIIE, you still must disclose it to the HIIE.

What should I do when I have created IP?

IP must be disclosed to the HIIE as soon as possible via an IP Disclosure (IPD) form. The IPD form asks specific questions about the innovation, important dates in the history of its development, the investigators involved, and any funding sources or other obligations.

Questions about the disclosure process and help with IPD preparation are available through the HIIE office at (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 before any public disclosure of the IP. Public disclosure of the innovation can prevent a patent from being granted, and companies are less likely to invest in innovations without patent protection. Thus, public disclosure of the innovation before the IP is protected can prevent it from being used for the public good.

What if federal funding was used to create the invention?

We report to the NIH and other government agencies about certain events in the life of any IP generated using funding from those agencies. These events include the filing of an IPD, the filing of a patent application, and revenue gained by licensing the IP. If the HIIE decides not to pursue commercialization of an innovation funded by a government agency, it waives the IP to that agency, or if requested, requests a waiver for the innovator(s) to obtain IP rights to the innovation.

What happens once the IP has been disclosed?

Once an IPD form is submitted, the HIIE assigns a licensing associate to the innovation. The licensing associate determines whether the IP must (by UAB policy) be assigned to the HIIE and investigates the patentability and possible commercial benefits of the innovation. This process starts with a meeting between the licensing associate and the primary investigator of the innovation.

After market analysis, the HIIE may elect not to pursue patent protection or commercialization of the innovation, and may negotiate 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. 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.

How long will it take to patent my invention?

Although the timeline for each innovation will vary, the HIIE utilizes the following process for pursuing patent protection.

  1. An initial meeting between the innovator and an HIIE licensing associate will be scheduled within one to two weeks of IPD processing.
  2. Next the HIIE conducts a preliminary phase of market research and patentability studies between two and four weeks from disclosure.
  3. Assuming these studies indicate that patent protection and technology marketing is warranted, a provisional or non-provisional patent application will be filed, which can take four to eight weeks.
  4. After filing, coordination between the HIIE, its patent attorney, and the U.S. Patent and Trademark Office (USPTO) takes place, but it will take several years for the patent to be granted or denied.

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 various documents will require signatures from both our office and the named inventor(s), including assignment documents, powers of attorney, declarations, affidavits, etc. It is vital that we have complete cooperation of all inventors (whether here at the university or elsewhere) in obtaining signatures promptly. Neither our office, a spouse, partner, nor colleague (except for an authorized UAB administrator in the event of a named inventor’s death) can sign on an inventor’s behalf. Delays in obtaining signatures can result in an application being abandoned. If that occurs, it is difficult and costly to have the application reinstated. For these reasons, we request for all inventors to complete their signatures in a timely manner, and when named inventors leave the university, we request they provide updated contact information to the HIIE. This helps eliminate unnecessary delays in maintaining patent protection for both inventors and the university, as well as assures potential or engaged licensees that our office has met and maintained all filed matters in a timely manner.

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

Yes. If the HIIE determines not to seek commercialization of an innovation, release or waiver of the IP is a possibility. If the research was funded by a government agency, and the innovator wishes to obtain rights, the HIIE will make a request for a waiver from the federal government agency. The HIIE assists the innovator with documentation as necessary.

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 most likely to license the 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 to consider.

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 UABRF, in addition to expenses incurred during the patent process. 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 outlined in the UAB Revenue Distribution Summary.

Once the distribution is determined, revenue is allocated to the innovators, departments, and schools according to the percent contribution indicated on the Revenue Distribution Agreement at the time of disclosure.

Quarterly distributions are made to UAB innovators by check. Departments and schools are paid by transfer between university accounts.

I have an idea for a startup company. Can UAB help me?

Yes. Whether you have specific questions, wish to brainstorm about a potential business idea, or want to learn more about what it takes to launch a new venture, there are a variety of resources available in our department and across campus to help you get started. Email us at This email address is being protected from spambots. You need JavaScript enabled to view it..

I think I might have a patentable invention. How can the HIIE help me?

When it comes to realizing the commercial potential of a new patentable invention, our team of business and legal professionals can help evaluate and provide resources for the next steps of your invention. Contact us at This email address is being protected from spambots. You need JavaScript enabled to view it. to connect with our team of licensing associates.

I’m a student—does UAB have an ownership claim to my invention?

Per our policy, student IP ownership resides with the student as long as the following criteria are true:

  • All UAB-affiliated inventors are students or otherwise not covered by the UAB patent policy (UA System Rule 509);
  • None of the UAB-affiliated inventors is employed by UAB in a research setting (e.g., research-related work study, part-time, casual, or temporary roles; or research assistant, teaching assistant, fellow, or post-doc positions; or in any other research capacity); and
  • The activity from which the invention arose did not make significant use* of funding provided by, through or to UAB (e.g., use of gifts provided to UAB, UAB departmental funds, or funds provided by federal or state governments (NIH, DoD, NSF, etc.), industry or nonprofits (Komen Foundation, Arthritis Foundation, etc.)), use of university resources (e.g., laboratories or technical equipment) more than on an incidental or “de minimus” scale, or university employee time (e.g., Faculty, technical staff).

*“Significant use” shall not be considered to mean:

  • Advice that a student may receive from a faculty or staff member as may be commonly solicited in the context of an educational experience (i.e., related to a course);
  • Use of UAB resources by students in the context of their coursework or other programs or educational spaces made available to them through their enrollment at UAB (e.g., UAB MakerSpace, classrooms, dorms, and email);
  • Attendance and participation in the Student Commercialization Accelerator Program

Can telling others about my invention jeopardize my ability to file a patent application?

Unfortunately, yes. In the U.S., there may be up to one year from the date of the first public disclosure of the invention to file a patent application. This one-year period is commonly called “the grace period.” However, outside the U.S., there is generally no grace period – an application must be filed before any non-confidential disclosure of the invention. Determining whether a disclosure is public (U.S.) or non-confidential (non-U.S.) can be challenging. But the following general guidance can be given to help avoid inadvertently triggering a filing deadline:

  • Conferences and publications (both online and in print) are usually considered public/non-confidential.
  • Discussions among UAB students and UAB instructors in a class, and discussions between a UAB student and a UAB faculty advisor, are usually considered confidential.
  • Discussions with non-UAB personnel (e.g., outside mentors) are usually considered public/non-confidential by jurisdictions outside of the U.S. unless there is a confidential non-disclosure agreement in place, though these discussions may still be considered confidential from the USPTO’s perspective. There is no bright line to determine public and non-confidential disclosures. We invite you to contact us at This email address is being protected from spambots. You need JavaScript enabled to view it. if you would like more information on this topic.