Forms and Agreements
If you have an idea that you think might be patentable or otherwise protectable (e.g. through copyright protection), first contact any of the OTT staff members. The next step is to fill out an Invention Disclosure Form. We need this form to identify inventions developed under federal sponsorship. Federal law requires that the university notify the government of inventions made under federally supported research.
The invention disclosure also performs another legal function. It serves as an assignment from the inventor(s) to the university. Formalizing this transfer of ownership means that the university can act as Power of Attorney in future patent prosecution-related activities. For further information about the ownership of intellectual property developed at the university, please see Form: H-1. Employment Agreement Concerning Intellectual Property at the foot of Chapter 5: 5300 in the Faculty-Staff Handbook.
Not every invention submitted to the OTT will be successfully commercialized. Even successful commercialization cases can take years to complete. During this time, some of the team members invariably move on to other career paths. It makes sense for the research team to agree upon a royalty division among themselves while still employed or attending the university and document that in the invention disclosure form. For details concerning the university’s policies regarding royalties, please see Chapter 5: 5300, B-4, Royalties and Income, Faculty-Staff Handbook.
Material Transfer Agreement (MTA) is a contract used to govern the transfer of tangible research materials between the university and other organizations. It defines the rights of the provider and the recipient with respect to the transferred material, its derivatives and related information. It prevents the material provider from losing control over the material and its research use, protects a researcher's existing and potential intellectual property and ensures the transfer doesn't conflict with federal regulations and rights afforded in other agreements associated with the research project.
At U of I, all the incoming and outgoing MTAs are reviewed, negotiated and signed by OTT. The individual investigator has no right to sign a MTA on the behalf of the university. U of I investigators are strongly advised to contact OTT to put a MTA in place before sending out research materials, such as chemical compounds, new materials, plant seeds, bacteria, cell lines, plasmids and animals. To expedite the process of review and negotiation, university investigators are asked to contact OTT as soon as possible after receiving a MTA from other organizations.
A confidentiality agreement (CA), also known as a nondisclosure agreement (NDA), is a contract to protect nonpublic research or business information between UI and other organizations. It outlines confidential material, knowledge or information that the parties wish to share while restricting access to any other parties.
At UI, all the incoming and outgoing CAs should be reviewed, negotiated and signed by the OTT. An individual investigator has no right to sign a CA on the behalf of the university. To protect the potential intellectual property, UI investigators are strongly advised to contact OTT to put a CA in place before talking about their unpublished research with other organizations. UI investigators are also asked to contact the OTT as soon as possible after receiving a CA from other organizations.