CDA, MTA, and DTA

If you need to speak about confidential intellectual property with a collaborator outside of University of Miami, please click here to request a Confidential Disclosure Agreement.

If you need to send either data or material to a collaborator outside of University of Miami, please click here for either a Material Transfer Agreement or Data Transfer Agreement.

If you need to receive either data or material from a collaborator outside of University of Miami, please click here to send an email inquiry to the Office of Research Administration.

Publish AND Protect Your Intellectual Property Rights

Maintaining your rights as an inventor is a matter of avoiding communication at the wrong place and time. Mistakes are most typically made through public disclosure:

(1) Publishing manuscripts, book chapters, journal articles, theses, abstracts, etc. (whether in print or on a public website)
(2) Poster presentations, oral presentations, departmental seminars, thesis defense, etc.
(3) Private correspondence with collaborators/individuals outside the University (be sure to have a Confidential Disclosure Agreement in place first)
(4) Public use, display, or sale of invention (be sure to have an Material Transfer Agreement in place first)

The best way to protect your rights is to not to publicly disclose your invention unless a patent has been filed or either a Confidential Disclosure Agreement or an Material Transfer Agreement has been executed. The Office of Technology Transfer appreciates the gravity of the publish or perish paradigm. It is critical to work with us early and often during the innovation process in order to reduce publications delays.

Have I Lost My Rights?

Not every disclosure means you have lost your intellectual property rights. The critical factor is whether enough of the invention was disclosed to constitute “enablement.” This a legal concept meaning that the disclosure is detailed enough so that a person skilled in the art can understand and recreate the invention independently. It is possible that leaving out a critical step or piece of information can make all the difference. However, there is no guarantee that the enabling content can be later patented. This is a risk and should only be taken after consulting with the Office of Technology Transfer.

Let’s assume that your intellectual property rights have been forfeited due to disclosure. Are all your rights lost? Under US patent law, you have a grace period of one year after the date of an enabling disclosure within which a patent application can still be filed. Unfortunately, there is generally no opportunity to pursue patent filings in the rest of the world. For this reason, such a disclosure will severely limit the potential commercial value of your invention.