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The Basics about Material Transfer Agreements, Inventions, and Other Intellectual Property Issues  

Material Transfer Agreements

Scientists often create useful materials, and it is common practice among academic scientists to share such materials with each other, in order to replicate results or to facilitate new research. These useful materials may contain commercially valuable intellectual property. Material transfer agreements (MTAs) are signed between the organization providing the material (Provider) and the organization receiving the material (Recipient). MTAs identify the material being transferred, disclose existing rights and ownership of the material, and set forth rights in any invention made as a result of research with the material.

Read more about Material Transfer Agreements and the procedures for receiving material and for transferring material to another researcher.

Principles and Guidelines for Recipients of NIH Research Grants and Contracts on Obtaining and Disseminating Biomedical Research Resources

Confidential Disclosure Agreements

Confidential Disclosure Agreements (CDAs) are sometimes called Confidentiality Agreements, Non-disclosure Agreements or Secrecy Agreements. CDAs may be unilateral (one party disclosing information to the other party) or bilateral (both parties disclosing information to each other). CDAs are signed by the parties to protect each party’s intellectual property and proprietary know-how and to establish legal and procedural guidelines for disclosing and managing confidential information.

When is a CDA appropriate? Here are a few examples:

• Execute a CDA before sharing unpublished research results with a company
• Execute a CDA before disclosing an invention to a potential licensee
• The Sponsor of a clinical trial will require that a CDA be signed before the protocol is released for the PI’s review

 
Who signs the CDA? Usually, UMB is named as a legal party to the agreement and therefore the CDA is signed for UMB by an ORD authorized official. A common exception is the CDA related to clinical trial protocols—the legal party is often the UMB PI for the clinical trial, and in that case, the PI may sign the CDA.

Inventions

Have you made a discovery or invention as a result of your sponsored project funding? The invention should be disclosed to ORD. Be sure to include the source of project funding in the disclosure form. ORD will review the award document to determine whether the invention needs to be reported to the Sponsor, and whether the Sponsor has any rights in the invention. For Federal grants and contracts, the invention must be reported to the Government, and the Government has a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world. Under a Research Agreement, UMB may agree that the corporate Sponsor will have an option to negotiate a license to make, use and sell an invention.

Read about the invention disclosure process at UMB.

University of Maryland, Baltimore and University System of Maryland policies related to intellectual property issues