HOW CAN OIC HELP PROTECT YOUR INNOVATION?
OIC can help determine the best type of protection for your innovation – such as a patent or an agreement – that allows you to collaborate and share your research or ideas without giving up intellectual property rights.
MATERIAL TRANSFER AGREEMENTS & CONFIDENTIALITY AGREEMENTS
OIC is the authorized signatory for all Material Transfer Agreements (MTA) and confidentiality agreements to help protect confidential or proprietary materials and information about your research, idea or innovation.
A Material Transfer Agreement (MTA) and Non-Disclosure Agreement (NDA) are legal agreements between two or more parties intending to share research materials and/or confidential information with one another for certain purposes, but wish to restrict access to, or by, third parties. An NDA/CDA creates a confidential relationship between the parties to protect any type of confidential and/or proprietary information or trade secrets from being shared with other parties.
- One-Way (Unilateral): One party is providing research materials and/or confidential information and will not receive research materials and/or confidential information from the other party.
- Two-Way/Mutual (Bilateral): Both parties are providing research materials and/or confidential information to each other.
- Multi-Party: Three or more parties are providing research materials and/or confidential information to one another.
- Simple Letter Agreement (SLA): The simplest standard agreement to accomplish a basic material transfer between research institutions.
- Uniform Biological Material Transfer Agreement (UBMTA): Transferred material may be subject to patent protection; also used for patented as well as unpatented materials. Both parties must be signatories to the UBMTA to execute this agreement.
- SUBMIT A REQUEST: Initiate an MTA or NDA by emailing uhmta@hawaii.edu or uhnda@hawaii.edu with the following information:
- Brief description of the purpose for the MTA or NDA
- Name & email for the Principal Investigator (PI), the main contact, and the contact for the other party
- Copy of the other party’s MTA or NDA, if available
- FOLLOW UP: OIC staff will conduct an initial review and contact the PI or designated contact if additional information is needed.
- NEGOTIATE: OIC will contact the other party to negotiate the agreement terms, if necessary. It is preferable to work directly with the other party to allow for timely follow up and minimize the processing time.
Processing time varies depending on the complexity of the agreement. OIC works with various UH offices if the agreement requires subject matter review including but not limited to: the Office of General Counsel (OGC), Data Governance Office (DGO), and the Office of Risk Management (ORM).
- EXECUTE: Once the terms are finalized, the agreement is circulated for signature. Original wet-ink signatures are NOT required. However, if the other party requires original signatures, OIC will accommodate their request. A copy of the signed agreement is provided to the original requestor.
For more information, call OIC at (808) 956-9024 or email:
- MTAs: uhmta@hawaii.edu
- NDAs: uhnda@hawaii.edu
UH INTELLECTUAL PROPERTY POLICIES
- RP 12.205 Board of Regents Patent and Copyright Policy
- EP 12.101 Delegation of Authority to Execute Contractual Documents for University Inventions, Patents, Copyrights and Technology Transfer
- EP 12.205 Administration of the Patent and Copyright Policy
- AP 12.205 Patent and Copyright Disclosure Procedures, Determination of Respective Rights, and Appeals
A patent gives the holder the right to exclude others from making, offering to sell or selling, and importing the patented invention. Each patent is enforceable only in the country the patent is issued. The patented invention is defined by the patent claims in the issued patent. In the U.S. patents are issued by the United States Patent and Trademark Office (USPTO).
A copyright is a form of protection for authors of original works. Copyrights protect the form of expression and give the holder the exclusive right to reproduce the work, prepare derivative works, distribute copies and perform the work. Copyright may be used to protect educational materials, artistic works or computer software. Copyrights are registered with the U.S. Copyright Office.
According to U.S. patent law, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent” subject to the conditions and requirements of the law.
- “Process” is defined by law as a process, act, or method, and primarily includes industrial or technical processes.
- “Manufacture” refers to articles that are made, and includes all manufactured articles.
- “Composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds.
A patent cannot be obtained upon a mere idea or suggestion. Rather, a complete description of the subject matter for which a patent is sought is required.
More information concerning patents can be found on the USPTO website.
According to the United States Patent and Trademark Office, an inventor is a person who “contributes to the conception of the invention.” Inventorship is a matter of law and determined by U.S. patent law. For more information, visit the USPTO website.
Throughout the process, inventors are needed to review drafts of the patent application, answer any technical questions about the invention and assist patent counsel with providing responses to communications from the USPTO.
Filing and obtaining a U.S. patent application may cost between $25,000 and $30,000. Filing and obtaining patents in other countries may cost an additional $25,000 or more per country. Once a patent is issued in the U.S. or other countries, there are required maintenance fees to keep the patent alive.
A public disclosure occurs when you share or show your invention or idea in any form that would allow for someone skilled in the art to reproduce your invention. This includes oral presentations at a conference or meeting, publishing research papers, thesis/dissertation presentations and posting on the Internet.
A trademark or servicemark is a word, name, symbol or device used in trade with goods to indicate a source of goods that distinguishes it from other goods.