- Confidential Disclosure Agreements (CDAs)
- Intellectual Property
- Licensing & Corporate Partnership
- Licensing Income & Revenue Distributions
- Material Transfer Agreements (MTAs)
- Wellspring Sophia Database
For more information about the UI’s IP Policy and a detailed look at a typical patenting and copyrighting process at the UI, click here.
Confidential Disclosure Agreements (CDAs)
Do not share your confidential information before consulting the UIRF
- A Confidential Disclosure Agreement (CDA) is a legal contract that protects proprietary information and binds the parties to hold information in confidence for a set period of time.
- CDAs may be titled as a Nondisclosure Agreement (NDA), or Secrecy Agreement when received from an outside institution.
- A CDA may be a two-way (Mutual CDA) agreement, covering information disclosed by both parties, or may cover disclosures by only one (Unilateral CDA) of the parties.
- The CDA specifies how the receiving party will use the information, emphasizing the recipient’s handling and protection of the confidential information.
- To protect your confidential information
- Provides documentation or evidence of the receiving party’s understanding of the confidential nature of the information received.
- Allows for the exchange of confidential information between the University of Iowa researchers and staff with an outside party or parties.
- Details the restrictions on use and dissemination by receiving party.
- Used when two parties are considering pursuing a relationship together and need to understand each other’s processes, methods, or technology solely for the purpose of evaluating the potential for the possible future relationship.
- Can be used as evidence in subsequent patent prosecution, i.e. to defeat an allegation that the invention is not novel because the inventor treated it as public information. This kind of allegation arises frequently from those contesting a potentially lucrative patent, so a CDA is more than a “mere formality”.
- Unilateral CDA
- Used for transfers of confidential information by the UI Provider to the other party
- Managed by UIRF
- UIRF must sign the Unilateral CDA
- Bilateral (Mutual) CDA
- Used for transfers of confidential information between all parties to the agreement
- Managed by UIRF
- UIRF must sign Bilateral CDA
- Information exchanged between two parties that the receiving party is required to keep confidential and not disclose to a third party
- Information that is NOT common knowledge or known to the public
No – the UIRF must sign the CDA, and/or the DSP
- The Investigator is not an authorized signatory for the University of Iowa
Track all your agreements in Sophia
- Login with your HawkID and password (DO NOT use the username and password to sign in)
- Click on your online request routing #, or
- Click on CDA agreement # (assigned by Sophia at the time of approval of the online CDA request)
Intellectual Property (IP)
Intellectual Property (IP) is a category of intangible rights protecting commercially valuable products of the human intellect. IP can take the form of and be protected in various ways. For instance,
- Patents provide a grant of property rights to a patent holder based on an invention or discovery of any new, useful, and non-obvious process, machine, manufacture, or composition of matter, or any new improvement thereof. Patents are issued by the US Patent and Trademark Office and exclude others from making, using, selling, or offering to sell or import an invention for up to 20 years. 
- Copyrights protect original works of authorship such as software code, writings, works of art or drama, musical compositions, etc. that have been tangibly expressed. Unlike a patent, a copyright protects the specific expression of an idea in a tangible medium, rather than the underlying subject matter. A copyright holder has the exclusive right to reproduce, to prepare derivative works based upon, to distribute copies, and to perform and display the work. Copyrights can be registered with the Library of Congress and their duration varies depending on specific circumstances, but they almost always last longer than patents.
- Trademarks and Service Marks cover words, logos, names, symbols, sounds, or colors that distinguish goods and services and help identify their owner. Trademarks can be registered with the US Patent and Trademark Office and have the ability to remain perpetually. The UIRF generally does not pursue trademark protection except in select cases.
- Trade Secrets are information, such as formulas, patterns, compilations, programs, devices, methods, techniques, or processes that (1) derive independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by a person able to obtain economic value from their disclosure or use, and (2) are the subject of efforts that are reasonable under the circumstances to maintain their secrecy. Trade secrets have the ability to remain perpetually.. Trade secrets are rarely used in academic settings.
- Proprietary Materials or Information are tangible materials, such as cell lines or antibodies, that may or may not be patentable, or information such as know-how, either of which are owned or controlled by and have objective value to a person or entity.
The UIRF team can explain these types of IP in more detail and help guide you through the University of Iowa (UI) process for obtaining IP protection. For more information about the UI’s IP Policy and a detailed look at a typical patenting and copyrighting process at the UI, click here.
One goal of IP law, especially as applied in the public academic setting, is to incentivize innovation and creativity, and to encourage and support the exercise of academic freedom. For example, the owner of a patent or copyright is able to prevent others from using those IP rights without permission for some limited period of time, in exchange for making the invention or creation public.
If you invent something reasonably related to the work you were hired to do at the UI, you are required under your employment contract and/or by UI policy to assign all IP rights for that invention to the UI. The UI would also have ownership of any other inventions created using significant UI resources. If the invention was developed in collaboration with inventors at other institutions or companies, their employers may be co-owners of the IP. In that case, the UI will collaborate with the other institution to assess, patent, and commercialize the invention.
Some companies may request or purport to require their consultants to assign all IP developed under the consulting agreement, or even anything proprietary you discuss with them, to the company. Because doing so may be counter to your UI employment and UI policy obligations, you may not agree to do so if any of this IP would be reasonably related to your work at UI or developed with significant UI resources. We can advise you on how to avoid outside consulting agreements that counter your employment and UI policy obligations.
UIRF regularly works with the UI Division of Sponsored Programs (DSP) to review and clarify IP terms in sponsored research agreements. The UI is very rarely in a position to be able and willing to agree to freely and customarily give ownership of IP rights to industry sponsors, but will usually instead negotiate a royalty-bearing or technology fee-based license to IP resulting from that sponsorship.
Inventorship and creatorship are legal and factual determinations. If the determination or list of inventors or creators is not accurate, the IP can be invalidated or its use could be infringing, so it’s important to get it right. Our team will work with you to make the determination.
For more information about the UI’s IP Policy and a detailed look at a typical patenting and copyrighting process at the UI, click here. Black’s Law Dictionary (10th ed. 2014).  35 U.S.C.  17 U.S.C.  37 C.F.R.  Iowa Code §550.2(4) (2016).  University of Iowa Operations Manual V-30.3(b).  University of Iowa Operations Manual V-30.3(b).
Congratulations! Please fill out the UIRF Invention Disclosure Form (IDF) in as much detail as possible and submit it to us online or via email. Our office will be in contact soon!
- If you’re ready to submit a disclosure but aren’t sure how, contact the UIRF Invention Disclosure Manager, Spencer Stumpf, at 319-384-3592, or email him at email@example.com.
- If you’re not sure yet but would like to discuss the technology with us, contact one of our licensing associates.
A formal invention or copyright disclosure is how UI faculty and other researchers let us know about their ideas and inventions so that we can protect and commercialize them. By filling out a disclosure form, you provide us with a description of your invention or work, the identities of possible inventors or creators, and other information that we need to assess your invention, file for IP protection, and meet our reporting requirements to sponsors. Receipt of an invention or copyright disclosure triggers our formal evaluation, protection, and commercialization process.
An invention should be developed enough that you can explain how to make and use it, and show that it works. Typically, this means that you’ll need to have at least some preliminary data or a prototype, not just an idea for future work. However, if you discuss an invention (or idea for an invention) in public, that can affect the ability to later get a patent. A good rule of thumb is to disclose when you have a first draft of a manuscript ready, but before the invention is published or presented at a meeting. If you have any doubts, please speak with a licensing associate in the UIRF. They can give advice on when to disclose an invention to the UIRF.
You should use the UIRF disclosure process to let us know about inventions and works derived from your research that may have commercial value. These include:
- Devices such as a new type of laser or surgical tool
- Processes such as an improved method of purifying cells or a new software technique
- Compositions such as a new chemical or drug compound
- Copyrightable works such as surveys, software or educational tools
- Software, which can be copyrighted and sometimes patented
- Biological materials such as cell lines or plant varieties
The main criterion distinguishing an invention from an idea is that an invention is something that is useful for a particular application. Laws of nature, physical phenomena, and abstract ideas such as solely identifying a problem or a new area for research, are not patentable subject matter. An invention also needs to be both new and nonobvious. Not only should it be something that no one has done before, but it should be unexpected in some way to your peers. Finally, an invention needs to be developed enough that you can show that it works – if all you have is an idea for future research, that isn’t an invention yet. Basic scientific discoveries that illuminate natural phenomena, abstract ideas, or laws of nature may not fall within the UIRF’s purview. If in doubt, however, please talk with a member of our team.
UI copyright policy generally provides for personal ownership of works of scholarship and creations of original works of art and literature. In most cases, these works do not need to be disclosed. Researchers should disclose copyrightable technologies with commercial potential such as software and some non-software educational materials.
The UIRF uses the Wellspring Sophia database system to manage all inventions and agreements. Click here to go to Wellspring Sophia database system.
- Click the link “Log in with your HawkID” then enter your HawkID and password
- Under Tasks, click on “New Disclosure”
- Complete the online disclosure and submit to UIRF
If you have questions, contact Spencer Stumpf via email or at 319-335-3592.
Not necessarily. The path to getting a patent is long and costly, so our process involves a significant amount of diligence. Throughout this process, we’ll be looking not just at whether we can get a patent issued, but also at what market needs, industry interests, and public benefit would support the need for a patent.
A public disclosure is any oral or written communication to others that is not confidential and either teaches the invention completely or provides enough information to make development of the invention obvious. Public disclosure of an invention prior to patent filing will prevent us from seeking foreign patent rights and creates a strict deadline for seeking US patent rights. By disclosing early, you give us the opportunity to retain as many IP rights as possible while taking into account your publication needs.
The types of disclosure that can put patent protection at risk include:
- Presentations at conferences, whether or not the presentation includes printed handouts
- Research abstracts presented in a public forum. This includes research abstracts that are published before meetings either online or in printed materials
- Posters shown at meetings (considered public publications)
- Catalogued thesis or dissertations
- Posting of information on websites. This includes postings on your individual lab web sites. If it can be accessed through the web, it is considered a public disclosure
- Publications are considered public disclosures the minute they become available to the public. For many publications, this occurs when published online in advance of the printed journal
- Published grant applications
- Meetings with company representatives or colleagues outside the UI where information is disclosed without a confidentiality agreement
- Public use or sale of an invention
Under the UI Intellectual Property Policy, the University owns inventions made by UI employees and appointees, and in some cases students and visitors, that are reasonably related to the inventor’s field of employment or that were developed using significant university resources. UI faculty, postdocs, staff, and student employees are required to disclose such inventions to the UIRF.
In most cases, undergraduate students who invent something as part of their coursework are not required to disclose or assign their inventions to the UIRF. However, a student working within a faculty advisor’s laboratory should disclose any inventions they make as part of that research.
Under U.S. patent law, an inventor is a person who is involved in the conception of an invention as claimed in a patent application. This is a legal determination that is distinct from authorship on a paper and is determined by our outside patent counsel. Correctly naming inventors on a patent is important for patent validity so you should list all individuals on the Invention Disclosure Form (IDF) who may have made an inventive contribution and outside patent counsel can then determine who qualifies as inventors.
No problem, the UIRF is happy to work with technology transfer offices at other universities and organizations. If you are working with a collaborator at another institution or company, your inventions may be jointly owned by both organizations. In this case, you and your collaborator should both disclose the invention to your employers – we’ll work with the other institution to sort out the details and come to an agreement on which office will take the lead on the technology and then move forward together.
Intellectual property and inventions created while employed by UI are handled by our office the same as if the inventor is still affiliated with University of Iowa.
Great! The UIRF is happy to put you in touch with UI Ventures who will help you decide whether to move forward and connect you with resources to get your company off the ground. If you have questions about that process, please consult the Startups tab.
Licensing & Corporate Partnership
A license agreement provides a company the right to commercially use intellectual property such as a patent or copyright. The agreement spells out the financial and legal terms under which the University grants the licensee rights to commercially utilize this intellectual property so as to benefit society and the general economy.
An option agreement provides a company a time-limited right to obtain a full license agreement by “exercising” the option to obtain this license. Options are typically used in instances where the company would like to do further research and development to evaluate the technology prior to entering into a full license agreement. One of the key differences between an option and license agreement is that the former does not allow the company to commercially market and sell the technology.
Active involvement from inventors can dramatically improve the chances of finding a licensee. Often, inventors provide important insight into the state-of-the-art for their new technologies and are able to identify potential licensees. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. Typically companies are most interested in licensing technology where the inventor is invested in moving the technology toward commercialization.
Our Available Technologies page lists technologies currently available for licensing. If you do not see a specific technology or are unsure if a listed one is still available, contact the licensing associate associated with the technology for further information.
Research agreements between the University and outside entities come in many form and serve a wide array of purposes. They cover applied research, evaluation, training, demonstrations, material transfers, confidentiality terms, equipment loans, and more. Outgoing subawards and subcontracts also fall into this area. If interested, please visit the UI Division of Sponsored Programs, or contact them at firstname.lastname@example.org.
Licensing Income & Revenue Distributions
The UIRF diligently seeks to license assigned invention rights and will negotiate the license terms directly with the potential company. When an agreement is reached, it will typically include the following components:
- License Fee – The initial fee, in cash or equity or a combination, paid by a licensee when a new license agreement is executed.
- Patent Cost Reimbursement – The incurred patent costs to be reimbursed by licnesee. When licensed exclusively, the UIRF expects the licensee to reimburse the UIRF for all costs, and reimburse ongoing patent costs, The UIRF may ask partners with non-exclusive, or exclusive licenses in only certain fields, to reimburse a percentage of total costs.
- Developmental Milestone & Payments – The UIRF generally requests that partners provide some type of developmental blueprint to outline the various development phases for technologies that involve longer or more conditional development phases to reach marketability. Milestones in the development process are identified and may involve a payment to the UIRF, thereby linking developmental successes directly to financial payments.
- Royalties – A percentage of product sales are made to the UIRF when our partners generate income from the commercial sale of products.
Under The University of Iowa IP Policy (https://opsmanual.uiowa.edu/administrative-financial-and-facilities-policies/university-iowa-intellectual-property-policy), inventors/authors of disclosures filed after February 28, 2005 are entitled to the following:
The UIRF shall receive all payments due under a license and shall distribute such earnings under the terms of this policy within 45 days from the end of the quarter in which the earnings were received. Prior to any distribution, the UIRF shall recover any out-of-pocket expenses incurred in applying for the licensed patent(s), maintaining the licensed patents(s), or defending the licensed patent(s). Also prior to any distribution under this policy, the UIRF shall make any payments to others required by agreements, including but not limited to interinstitutional agreements for the management of jointly owned patents. Gross UIRF earnings, less its out-of-pocket expenses, less payments required to others, are designated as “distributable income.” Distributable income shall be allocated as follows:
- The first $100,000 of distributable, cumulative income earned under a single license will go to the inventor(s).
- After the first $100,000 is distributed to the inventor(s), any further distributable income will be allocated as follows unless income in any fiscal year triggers the conditions of V-30.3b(7)(c) below:
- 25% of distributable income to inventor(s)
- 25% of distributable income to the UIRF
- 20% of distributable income to an institutional “research enrichment fund” (REF) administered on a discretionary basis by the University of Iowa Vice President for Research
- 15% of distributable income to the department from which the invention arose
- 15% of distributable income to the college from which the invention arose
- In the event that income from a single license or licensure of a single patent or set of patents exceeds $10 million in any single fiscal year, the University itself shall be granted a share of distributable income in that year, it being understood that the University President shall determine the use of such institutional share. In any year in which an institutional share is awarded, the shares allocated to the UIRF, REF, college, and department will be reduced. The share allocated to inventor(s) shall remain at 25 percent. In the event that distributable income from a single license or from licensure of a single patent or set of patents exceeds additional thresholds over $10 million, the institutional allocation for that year shall grow while the allocations to the UIRF, REF, department, and college will be further reduced.
See The University of Iowa Operations Manual for more information.
When more than one University inventor is named on any licensed patent, the inventors will receive equal portions of the share of distributable income allocated to that patent unless there is a modifying written agreement signed by all inventors and approved by the UIRF. If the authors or inventors wish to split their share of income in a different manner, this form provides a mechanism for providing that information to the UIRF. The form must be signed by all inventors and submitted to the UIRF before distributions are made.
When income results from transactions processed through the UIRF but NOT associated with University of Iowa owned intellectual properties (patents or copyrights) such as material transfers, the UIRF will determine the distribution to include reimbursement to the grant for costs incurred, royalties or license fees to other third parties, with the remainder split 10% to the UIRF, 10% to the UI department, 80% to the principal investigator. A Fund 240 MFK is to be established for the department and the PI to access the amounts distributed for their use that is restricted to further the objectives of the grant program supporting the original research.
If the PI is an HHMI Investigator, the UIRF portion of income is split 5% to UIRF, 5% to the department, and 10% to HHMI. A Fund 240 MFK is to be established for the department and the PI to access the amounts distributed for their use that is restricted to further the objectives of the grant program that supported the original research.
Please refer to the Divison of Sponsored Program website for more information.
Material Transfer Agreements (MTAs)
- An MTA is a legal contract that governs the transfer of tangible materials between institutions for use in research
- An MTA addresses the rights, obligations, and restrictions of both the University of Iowa (UI) and the party receiving your materials regarding ownership, publication, intellectual property and permitted use and liability.
- An MTA is executed for the transfer of cell lines, plasmids, nucleotides, proteins, transgenic animals, plant varieties, bacteria, pharmaceuticals and software
- Sending Materials to another institution (Outgoing MTAs)
- The Materials can be easily replicated or reproduced
- The Materials and/or information is the subject of a patent application
- The Material or information has been licensed for commercial use or sale
- The Provider is concerned about potential liability
- To protect intellectual property rights
- The provider wishes to obtain clear rights to what is produced from the Materials
- The provider wishes to ensure that correct and appropriate acknowledgement is included in any publications regarding the use of the Materials
- Receiving Materials from another institution (Incoming MTAs)
- Contact Division of Sponsored Programs
- Biological Materials
- Transgenic Animals
- Recombinant Proteins
- Cell lines
- Data access to databases
Any intellectual property rights in the Material will not be protected if Material is transferred without an agreement in place. DO NOT transfer materials without consulting with the UIRF.
Outgoing MTAs (Transferring Materials to another Institution)
Incoming MTAs (Receiving Materials from another Institution)
The University of Iowa Research Foundation MUST sign all Outgoing MTAs
- Only the UIRF has the authority to bind UI to the terms of the Outgoing MTA
- The Principal Investigator requesting the Outgoing MTA will be asked to sign indicating that the PI has read and understood the terms of the Outgoing MTA.
The Division of Sponsored Programs manages all Incoming MTAs
The UIRF uses the Wellspring Sophia database system to manage all agreements
The time it takes to complete an MTA is based on the following:
- Type of Material being exchanged
- Complexity and nature of the terms (a clear and complete statement of intended use helps identify appropriate vs. inappropriate terms)
- Foreign vs. national institution
- Responsiveness of the receiving parties
- Track the status of the MTA click here
- Uniform Biological Material Transfer Agreement (UBMTA)
- UBMTA Implementing Letter
- Copyright Permissions
- Software Transfer Agreements
- Many academic institutions are signatories to the “Uniform Biological Material Transfer Agreement” or “UBMTA” Master Agreement, which was developed by the National Institutes of Health (NIH) on behalf of the U.S. Public Health Service (PHS) and the Center for Disease Control (CDC).
- As a matter of convenience, the Association of University Technology Managers (AUTM) serves as the repository for the signed UBMTA Master Agreements from those institutions wishing to use the UBMTA for some or all of the exchanges of biological materials, including the University of Iowa.
- For institutions that have signed the UBMTA Master Agreement, materials can be transferred upon execution of an Implementing Letter for the particular transfer.
- This can be be a very convenient mechanism for the transfer of biological materials between signatory institutions as the terms of the UBMTA have been preagreed by all signatory parties.
- Please consult with the UIRF if you have additional questions regarding the UBMTA
- Covers transfers of both patented and unpatented research material
- Used for transfers between nonprofits and between nonprofits and governmental entities
- Is not used for transfers to commercial entities
- Does not allow recipient to use for commercial purposes
- Does not allow recipient to transfer to third parties
- Allows recipient to retain ownership of Modifications
- Covers transfer of both patented and unpatented research material
- Used for transfers to commercial entities
- Can be used for transfers to nonprofits under certain circumstances
- Material is considered proprietary but has not yet been disclosed to UIRF nor a patent application filed
- Covers transfer of both patented and unpatented research material
- Used for transfers to commercial entities.
- Can be used for transfers to nonprofits under certain circumstances
- Material is considered proprietary but has not yet been disclosed to UIRF nor a patent application filed
- Used when both parties have agreed to and signed the full version UBMTA
- Used for transfers of both patented and unpatented research materials
Original Material plus Progeny and Unmodified Derivatives
- The MATERIAL shall not include
- (i) Modifications or
- (ii) other substances created by the RECIPIENT through the use of the MATERIAL which are not Progeny or Unmodified Derivatives.
Progeny: Unmodified descendant from the MATERIAL
- Some examples include:
- virus from virus
- cell from cell, or
- organism from organism
Unmodified Derivatives : Substances created by RECIPIENT which constitute an unmodified functional sub-unit or an expression product of the Original Material.
- Some examples include:
- subclones of unmodified cell lines
- purified or fractionated sub-sets of the Original Material
- proteins expressed by DNA/RNA supplied by Provider
- monoclonal antibodies secreted by a hybridoma cell line
- sub-sets of the Original Material such as novel plasmids or vectors
What does Modification mean?
- Substances created by RECIPIENT which contain/incorporate the MATERIAL (Original Material, Progeny or Unmodified Derivatives)
The sale, lease, license, or other transfer of the MATERIAL or MODIFICATIONS to a for-profit organization.
- Shall also include uses of the MATERIAL or MODIFICATIONS by any organization, including RECIPIENT for the purposes of:
- performing contract research
- screening compound libraries
- producing or manufacturing products for general sale
- conducting research activities that result in any sale, lease, license, or transfer of the MATERIAL or MODIFICATIONS to a for-profit organization
- industrially sponsored academic research shall not be considered a use of the material or modifications for commercial purposes per se, unless any of the above conditions of this definition are met
A university or other institution of higher education or an organization of the type described in section 501(c) (3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or educational organization qualified under a state nonprofit organization statute. The term may also include government agencies.
Most MTAs occur with a nominal charge to the recipient, which includes:
- Preparation costs
- Shipping costs of the Material or Animal
Universities typically avoid terms that:
- Restrict academic freedom, such as restrictions on publication
- Assert excessive rights of ownership in the research results or device materials
- Ask for inappropriate indemnification by the university and/or
- Create conflicting obligations (with other sources of funds or materials)
- Director of Lab
- Principal Faculty
- Inventor(s) (If material has been disclosed to UIRF)
- Track all your agreements in Sophia
- Login with your HawkID and password
- Click on your online request routing #, or
- Click on MTA agreement # (assigned by Sophia at the time of approval of the online MTA request)
- Wellspring Sophia database is the state-of-the-art system for academic technology transfer used by hundreds of organizations worldwide. The system is used by the UIRF to manage all agreements, intellectual property, invention disclosures, patent applications, and appropriate financial functions.
- First time and returning users, go to the Sophia database website at: https://iowa.wellspringsoftware.net/kms/auth/login/?r=1&from=%2F
- Log in with your HawkID and password (DO NOT use the username and password access)
- The Provider’s first notification to the UIRF that you are preparing to transfer outgoing materials to another researcher.
- Online form that provides the necessary information for UIRF to negotiate and execute the outgoing MTA.
Click here to access Sophia database to submit an online MTA request.
- Login to Sophia with your HawkID and password
- Click on Request an Online MTA
- Accept the Outgoing Material Transfer Agreement Statement
- Complete the online form and submit to the UIRF
- Click here for detailed instructions to complete an Online MTA request
Wellspring Sophia Database
Wellspring Sophia database is the state-of-the-art system for academic technology transfer used by hundreds of organizations worldwide. The system is used by the UIRF to manage all agreements, intellectual property, invention disclosures, patent applications, and financials.
Some items don’t automatically populate when you first log in to Wellspring Sophia. In that case, you may need to customize your homepage to view the appropriate invention disclosure forms or agreements. Instructions for customizing your homepage can be found here. If you still have trouble, please contact Erin Gallagher or the UIRF central line at 319-335-4546.