Forms & Agreements

Invention Disclosure Form and Instructions

The Invention Disclosure Form is an important first step in the process of ultimately protecting and licensing your invention. With the information you provide, we can evaluate your invention’s commercial potential and our ability to protect the invention via patent protection.

Typical Agreements

Agreement Types

Non-disclosure Agreements (NDAs) are often used to protect the confidentiality of an invention as it is being evaluated by outside parties.  NDAs also protect proprietary information of third parties that UA researchers need to review in order to conduct research or evaluate research opportunities. UA’s Office for Technology Transfer can help facilitate the negotiation and execution of NDAs for University proprietary information shared with someone outside of the University or two way NDAs that enable both partners to share information.  Go to NDA to see a sample of UA’s Non-Disclosure Agreement.

Option Agreements, or option clauses within research agreements, describe the conditions under which UA preserves the opportunity for a third party to negotiate a license for Intellectual Property.  Option clauses are often provided in a Sponsored Research Agreement to corporate research sponsors or are entered into with third parties wishing to evaluate the technology prior to entering into a license agreement.

License Agreements describe the rights and responsibilities of a party related to the use and exploitation of Intellectual Property developed at UA.  UA license agreements stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good and provide a reasonable return to the University.  To assist you in understanding the principles behind the structure of most university technology licenses, refer to our Licensing Principles.

Material Transfer Agreements (MTAs) used for incoming and outgoing materials at UA, are administered by UA’s Office for Technology Transfer and describe the terms under which UA researchers and outside researchers can share materials, typically for research or evaluation purposes.  Intellectual property rights can be jeopardized if materials are used without a proper MTA.

Inter-Institutional Agreements describe the terms under which two or more institutions (e.g., between two universities) will collaborate to assess, protect, market, license and share in the revenues received from licensing jointly owned Intellectual Property.

Research Agreements describe the terms under which sponsors provide research support to the University.  These are negotiated by the Office for Sponsored Programs with assistance by UA’s Office for Technology Transfer on IP related matters.

Material Transfer Agreements (MTAs)

Material Transfer Agreements (MTA) describe the terms under which University researchers can share materials, typically for research or evaluation purposes. These agreements are administered by OTT Intellectual property rights can be endangered if materials are used without a proper MTA.

Incoming Materials

If a UA researcher is requesting materials from your company (or university) or you are UA researcher requesting materials from a company (or university), please contact OTT us to facilitate obtaining the necessary MTA.

Outgoing Materials

If you would like to obtain materials from The University of Alabama, or are a faculty/staff member interested in sending your materials out, please contact us for help with an MTA.

Instructions for Sending “Materials” Outside the University

UA Investigators may send Materials to outside entities without a formal Material Transfer Agreement (MTA) if ALL of the following are true:

The Material is NOT or does NOT contain any of the following:

  • Human-derived tissues, fluids, or samples of any kind
  • A controlled substance containing pathogens or other harmful biological agents subject to special guidelines and/or procedures
  • Technology described in, or is part of, an Invention Disclosure Form that UA is protecting or has protected under one or more patents or pending patents
  • Intellectual property exclusively licensed by UA to another party
  • Any Material that was received from another party under an agreement (e.g., other Material Transfer Agreements, sponsored research agreements, or commercial purchases with use limitations) that prohibits or limits redistribution or further transfer of such material

AND

The Material will be transferred to a recipient who meets all the following criteria:

  • Is a Principal Investigator at a non-profit and/or educational research institution only
  • Plans to use the Material for non-commercial academic research purposes only, and
  • Will not use the Material for research, testing, or treatment involving human subjects or for making any decisions relating to human diagnosis or care

AND

The UA PI does NOT wish for any of the following:

  • Limit whether and to whom the Material is resent (e.g., without an agreement, the Material may be sent to others without notification to the UA PI)
  • Review any publications relating to use of the Material prior to publication
  • Limit how the Material will be used
  • Protect the ownership or potential patentability of the Material or any derivatives of the Material; or
  • Exchange the Material for other material or services to be provided by the recipient.

If your situation does not meet all of the above criteria, please contact OTT to have a Material Transfer Agreement (MTA) developed for the transfer of the Materials. Please send the following information to Rick Swatloski (RPSwatloski@ua.edu) at UA’s Office for Technology Transfer:

  • Description and amount of Material to be sent
  • Complete address and contact information (including email) of Recipient
  • Any special instructions or conditions to be included in the MTA (i.e., restrictions on breeding animals, review of publications, research use restrictions, restrictions on transfer)

Note 1: Materials to be sent outside of the United States

If you are shipping materials outside of the U.S., the materials may be subject to federal regulation, including export control laws that define the conditions under which certain information, technologies, and commodities can be transmitted to individuals outside of the U.S. (including U.S. citizens that are outside of the U.S.) or in the case of information, to certain foreign nationals within and outside of the U.S. OTT, in collaboration with the Office for Research Compliance will review with you conditions that may trigger review of the intended transfer under U.S. export control laws and regulations.