Commercialization FAQ

Nothing. TLA provides all of its services – invention assessment, intellectual property protection, startup mentoring and more – free of charge to all University employees working to commercialize UA intellectual property. 

Generally, intellectual property (IP) is a work or invention that is the result of creativity, such as a compound, process, software, literary or artistic works, manuscript or design, to which one has rights and for which one may protect by law by applying for a patent, copyright, trademark, etc. In the case of the U of A, IP might be patentable items (processes, compounds, machine, etc.) or copyrightable items like software (which may or may not be patentable), books, music, art and more. We don’t expect UA employees to determine if they have intellectual property. Our team of trained professionals work with employees to learn more about their work and determine the best path forward for IP protection.

The ABOR Intellectual Property Policy establishes the basic rights and obligations relating to intellectual property created by employees, students, and others connected to the University. The University of Arizona Intellectual Property Policy supplements the ABOR IP Policy primarily with respect to course materials.

This is a University account administered by the IP Official to promote the development of intellectual property and directly enable technology transfer. It is funded by a portion of the University's share of net income received from the licensing or sale of ABOR-owned IP that flows through Tech Launch Arizona.

Contributors, Inventors, and Authors are similar terms referring to those who have added to an invention. The terms are often used interchangeably when discussing inventions at U of A. Inventors and Authors are determined in accordance with U.S. intellectual property laws.

For patentable inventions, the laws regarding who is considered an inventor will apply. Authorship, on the other hand, relates to copyrights and indicates contribution to copyrighted work. An individual may be included as an author on a research paper resulting from the work, along with all the other people who may have contributed in a similar manner to the work, while still not being an inventor. U.S. patent law defines an inventor as an individual who contributes to at least one patent claim.

Anyone who qualifies as an inventor or author has an equal interest in the Intellectual Property as a Contributor, unless a different allocation is agreed upon in writing among the joint inventors or authors. If there are Contributors who are not employees of the University, such as sponsors, federal agencies or other universities, these non-University contributors will not be included as Contributors for the purposes of revenue distribution but note that those non-University individuals/entities may be entitled to a portion of the revenues before they are distributed (see definition of Net Income under Royalty Distribution Schedule). Contributors receive their Contributor share regardless of their employment status, and upon death, their heirs receive that income until the termination of the agreement(s) that produce the revenue.

Authorship, on the other hand, relates to copyrights and indicates contribution to a copyrighted work. An individual may be included as an author on a research paper resulting from the work, along with all the other people who may have contributed similarly to the work, while still not being an inventor. U.S. Patent law defines an Inventor as an individual who contributes to at least one patent claim.

For Departmental Works (defined below), notwithstanding the above, the department that commissioned the work will be deemed the “Contributor” for the purposes of revenue distribution under this Policy. 
 

A “Departmental Work” refers to Intellectual Property developed not as the result of an individual’s independent research or work, but rather as a directed effort initiated by a college, department or unit within the university. In such cases, the work is typically conceived as a result of an assignment given either formally or informally by leadership or university administration (e.g., a department chair, lab director, center head, Dean or other leader), with an objective, goal and/or an expected outcome. The direction may take many forms, such as a directive, work plan or even an expectation tied to the individual's role. In a departmental work, to ensure fairness among all employees of the department, although named individuals may have contributed to the work, the Contributors will not share in the royalties received by the University, and instead the intellectual contribution is attributed to the college, department, center, unit or other entity, which is seen as the functional Inventor or Contributor. Contributors will agree in writing in these circumstances.

An “invention” is any new technical contribution, discovery, process, device, program (including software and mobile apps), method, use, product improvement, design improvement, or other intellectual property that an individual or team creates during the course of research or other work, or with the significant use of University resources, at the University.

While only some inventions ultimately meet the legal requirements for patent protection, all inventions should be disclosed to Tech Launch Arizona to assess their potential for patenting and/or commercialization opportunities. In many cases, you will hear “intellectual property,” “IP” and “invention” used interchangeably.

Authorship and inventorship are not the same. Patent inventorship is a legal determination, under U.S. patent law as the individuals who contributed to the conception of at least one claim in a patent. Incorrectly naming inventors to a patent, whether by including someone who did not contribute or omitting someone who did, can render a patent invalid. During prosecution of the patent, the patent attorney may need to revise claims. It is possible that the original inventors listed on the patent application and/or an invention disclosure may change depending upon which claims are allowed by the Patent Office and who actually contributed to those claims. Final inventorship is set at the time the patent issues. If any party disputes inventorship, TLA may engage the services of an independent attorney to assess the issue.

For all other forms of intellectual property — such as copyrights, trademarks, and trade secrets — there are no legally designated "inventors." The concept of inventorship is unique to patent law, where it is critical to determining ownership and validity. In contrast, authorship for copyrights or ownership for trademarks and trade secrets is determined by different criteria and does not require identifying an inventor. (See FAQ on “What is a Contributor vs an Inventor vs an Author?”)

In practice, the contributors of any intellectual property are required to come to an agreement related to the distribution of royalties related to the commercialization of intellectual property. If the contributors cannot agree on contribution percentages, the IP Policy allows for equal distribution of the contributor share among the contributors. In addition, any individual contributor can request that the IP Official review the case, and if disputes continue, the IP Committee is delegated the authority to review such cases.

As laid out in the ABOR IP Policy (see above) the University claims ownership of all inventions created by employees in their capacity as employees. The primary exceptions to this are: (a) when IP is created by employees under consulting or sponsorship agreements with outside entities, and unrelated to their research at the University, or (b) created outside the scope of their duties and with no use of University resources. In either of these cases, it is vital to involve TLA early, especially when consulting with outside entities, as consulting agreements may conflict with University employment agreements. Employees have already assigned their intellectual property to the University through their employment agreement, but need to provide additional written documentation evidencing the assignment if requested by Tech Launch Arizona.

Tech Launch Arizona involves inventors in all aspects of the protection and licensing process. During the patenting process, inventors work directly with TLA and a patent attorney to explain and refine elements of the invention. This interaction is crucial in developing the prosecution strategy for patent applications.

As TLA markets and licenses inventions, inventors participate in multiple ways, but only to the extent they are interested and able. Inventors might assist in the identification of companies as potential target licensees, deep-level technology discussions with potential licensees, and other ways.

Inventorship in patents is a legal determination based on contribution to patent claims and can be difficult to determine in some cases. Contribution to copyright-related intellectual property, however, doesn’t have the same legal determination and usually vests in the employer.

Any individual contributor/inventor/author can request that the IP Official review a specific case and determine ownership, inventorship or contribution. In patent inventorship cases, the IP Official may elect to engage outside counsel to perform an inventorship analysis. The results of such an analysis will be considered the final position of TLA. If disputes continue, the IP Committee has the authority to review such cases and may be asked to do so.

The University claims ownership of all intellectual property created by individuals in their capacity as employees. When other parties contribute to an invention, generally those parties’ employers would also have a claim of co-ownership in the intellectual property. When more than one party has a claim of ownership in the same intellectual property, the U of A will typically enter into an agreement (if with another university, it is usually called an “Inter-Institutional Agreement”) that describes how the intellectual property will be managed.

The University does not claim ownership of intellectual property created by students who are not employed by the University or working on a sponsored project (e.g., those who are not graduate assistants or otherwise student-employees; see part A.3, the Student-Created Works section of the ABOR IP Policy).

However, a student acting in his or her capacity as an employee of the University (e.g., a graduate assistant) or working under a sponsored project will be subject to the standard rules applicable to all other employees under the IP Policy.

In addition, under certain limited circumstances, the University may ask students to agree to assign intellectual property to the University in exchange for access to University resources in a laboratory or classroom setting as part of a particular project. This is most often seen when University faculty introduce University IP into classroom projects. In these circumstances, students should have the option of taking part in another project in that class where an assignment of student intellectual property is not required.

The U of A offers students free legal advice via ASUA. Information is available on the ASUA Student Legal Services website.

The University of Arizona James E. Rogers College of Law also offers an Intellectual Property Clinic to help student entrepreneurs get their businesses off the ground.

Yes, faculty, staff or students working on funded research or in their roles as employees of the university – have an obligation to report new inventions. The invention disclosure process serves as the basis for communication with TLA about the invention. Often, you will be asked to complete this process even when requesting confirmation of individual ownership of IP.

Learn about the invention disclosure process

You should feel free to contact TLA for a conversation anytime, whether or not you believe you have an invention. Generally, the earlier the better. TLA Licensing Managers are well-versed in both specific science areas and the identification of potential IP resulting from research. In order to fully protect it, a disclosure should be made before publication using the Invention Disclosure Form. Contact your Licensing Manager or anyone at TLA if you have questions or need help.

Ultimately, whether an invention receives an issued patent is up to the patent and trademark office of the country in which a patent is being sought. Although TLA’s intention is to patent as many inventions as reasonably possible, occasionally, after detailed discussions with the inventors, in-depth assessments and market research, it may become evident that the cost of pursuing a patent is not justified. Such situations might include those where there are existing related patents, where enforcement of patent rights would be extremely difficult, or where the relevant target licensees are unlikely to be interested. In these cases, the intellectual property is handled according to the provisions of any applicable sponsored agreement (e.g., for government-sponsored inventions, rights are returned to the government). In the event a decision is made not to pursue a patent, and it is not related to federally funded research, the inventor may request that TLA release the invention to them.

Prepaid fees related to potential IP (IP that might be created under an industry-research agreement – for examples of such agreements, see Arizona Choice) are distributed under the royalty distribution schedule when IP is created and disclosed. Occasionally, no IP is developed under these agreements, and given that the IP Policy does not apply, these prepaid fees are distributed under an alternate distribution process related to such fees where no inventor can exist (as there is no invention). This alternate distribution replaces the inventor with the department. (See “What is the “Alternate Revenue Distribution Schedule.”)

The IP Committee is a University committee that hears appeals by employee Contributors, reviews proposed changes to the IP Policy, and makes recommendations to the President through the IP Official, as outlined in Sections D(3) and D(5) and the ABOR IP Policy. It is generally composed of five persons, including faculty and staff. The IP Official appoints the members. Learn more at the IP Committee website.

The following ranges are rough but are provided to offer a general idea of the costs involved in protecting intellectual property. Every situation is unique, and costs may vary greatly. In the United States, filing a patent application and prosecuting it through to issuance typically costs between $20,000 and $30,000. The University covers these costs; there is no cost to the inventors for filing and managing patents. TLA works to recoup these expenses when the IP is licensed.

If foreign patent applications are filed, costs can increase significantly and may range from tens of thousands to hundreds of thousands of dollars, depending on the countries selected and the number of jurisdictions in which protection is pursued. Because of these expenses, TLA typically files only in the United States unless a licensee exists and is willing to cover the additional foreign costs.

University employees are required to comply with all Conflict of Interest and Conflict of Commitment policies, guidelines, and procedures of the University, as well as any management plans or resource usage requirements. Obligations to the University are and must be kept separate from work with, or in support of, any outside interests. Approval of any individual license, or conflict of interest or conflict of commitment requests, will be subject to continued compliance with University obligations, including any current or future project or research-specific management plans. For additional information, see Principles for Managing Competing Interests Between UArizona and Startup Companies from the Office of Responsible Outside Interests.

No employee (or anyone else) may use University-owned IP outside the University without proper notification to the University, and appropriate licenses to that intellectual property. In addition, there are Conflict of Interest and Conflict of Commitment policies and procedures that must be followed when employees wish to start companies outside of the University. Tech Launch Arizona can help with navigating these requirements. Learn more on the Research & Partnerships website at Principles for Managing Competing Interests Between UArizona and Startup Companies, link requires UA NetID.

Equity is a form of consideration the University often receives in a license with a startup, usually in lieu of an initial license fee. This stock is held by the UA Foundation. Equity is held until some form of “liquidation event.” That is, typically until the startup is acquired by another company or “goes public” with an initial public offering (IPO) of stock in the company.

Before entering into any consulting arrangement, you should seek your own legal counsel to review the agreement, ensure you understand your rights and obligations, and identify any conflicts with University policies or existing commitments. Legal advice is essential to help you navigate compensation terms, IP ownership, confidentiality provisions, and other obligations that may affect your University responsibilities. Refer to the UA Consulting Agreement page for help and details.

The University permits faculty to spend a portion of their time consulting with outside organizations. These consulting agreements often specify that any intellectual property created in the course of the consulting work will belong to the external entity. As long as the consulting activity complies with the University’s Conflict of Interest and Conflict of Commitment policy (and any other applicable policies), and no University-owned IP (or other third-party-owned intellectual property) is used or incorporated, connected to the consulting activity, the University generally does not assert ownership over intellectual property created solely through those consulting activities. 

For more information, visit the UA Consulting Agreement page, review the “Consulting Agreement Amendment” document found there, or talk to a TLA Licensing Manager about your particular circumstances.

Anytime a license is to be executed between the U of A/ABOR and an entity in which any employee holds substantial interest (such as a startup), the ‘Enabling Disclosure’ process must be followed. This process, which you'll work through with the help of your TLA licensing manager, is described in detail on the U of A Conflict of Interest website, specifically, at Principles for Managing Competing Interests Between UArizona and Startup Companies (latter link requires NetID). 

Under ABOR policy, income generated through the commercialization of ABOR-owned intellectual property (IP) is shared with all IP contributors. If there is more than one item of IP in a license, the income is split equally between those inventions unless specified in writing otherwise. In addition, all contributors on any IP are treated equally unless specified in writing otherwise.

In specific circumstances, a department may take the role of the contributors, garnering the contributor share, the contributor lab share, and the department’s share. This occurs when the intellectual property is determined to be a departmental work. (See “What is a Departmental Work.”)

Income is distributed as follows:
 

Occasionally, the University receives revenue under sponsored research projects related to “potential” IP. If such IP is created, then the standard distribution policy would apply. However, in some cases, no IP is created or disclosed to TLA, so there is no inventor, and at the conclusion of the sponsored project, the standard distribution does not apply.

Alternate Revenue Distribution of Net Income Under Sponsored Research Projects:
 

The U of A royalty distribution schedule is based on net income. Net income consists of the cumulative gross revenues generated through the transfer or other commercialization of ABOR-owned IP through Tech Launch Arizona, including royalties, up-front and license fees, milestone payments, settlement amounts, and any other compensation, less: (a) unreimbursed legal costs and direct costs, including any amounts required to be remitted to the State of Arizona or any other costs incurred by Tech Launch Arizona, associated with the ABOR-owned IP; and (b) amounts owed under any agreement related to the ABOR-owned IP, including those with a sponsor, federal or state agency, co-owner, or other university or nonprofit entity. No University personnel, overhead, or other costs not directly related to legal protection or other contractual obligations will be deducted as part of the net income calculation.

Revenue from license agreements is shared with all inventors regardless of their participation in the licensee. In addition, the University considers all revenue received under a license agreement, including any revenue garnered from equity positions in a startup, as revenue to be distributed.

Once a liquidation event occurs, the Foundation will sell the shares of stock within a short timeframe, typically days, after legally able to sell (often, especially in the case of an IPO, there is a “hold period” during which equity cannot be sold.).

On rare occasions TLA or the UA Foundation may have reasonable belief based on special circumstances that holding the equity for a short time would result in a higher return. In these cases, discussions with all potential recipients of these royalty distributions may take place to decide to hold the equity for a limited time prior to selling. Once sold, the revenue is distributed according to the Royalty Distribution Policy.

Software falls under the same rules as any intellectual property produced at the University. The creator of the software should disclose it. TLA will then evaluate it and the circumstances of its creation to determine ownership. If the software, including mobile applications, was created as a result or component of employment at the University, the University claims ownership. There are certain circumstances where the University would not claim ownership, such as when the software is completely outside the scope of one’s employment. If there is uncertainty related to ownership of software, contact TLA to discuss your unique situation. If appropriate, TLA will provide a letter stating the University does not claim ownership based on the circumstances. (See ABOR IP Policy Section A, Ownership.)

If the University owns the copyrighted material, contact TLA to discuss the best way to license or distribute the material. TLA will help you through the process, handling, for example, the licensing/sale/distribution of:

• Mobile apps
• Computer software intended to be revenue-generating
• Databases created through research and intended to be revenue-generating
• Product designs
• Other works of authorship
• Copyrighted works funded by internal or external sponsors

Tech Launch Arizona generally supports open-source licensing, but there are many factors to consider in a determination on whether to subject software to an open-source license, such as which open-source license applies. Your rights and obligations as a user and developer of open-source software varies widely among different open-source licenses, so it is important to understand these differences and evaluate them carefully. Therefore, it is in your best interest to discuss these options with the University prior to general release. TLA can help you understand the differences between open source licenses, and can provide custom “open-source,” “free use,” “source available,” and other such licenses if needed. In addition, TLA can host and distribute University-owned software directly online, either for free or for a fee.

Yes. The ABOR IP Policy (ABOR Policy 6-908 Intellectual Property) makes it clear that “Tangible Research Property” (including research property like tools, prototypes, records, cell lines, etc.) all fall under the IP policy and ABOR ownership. As such, the University is required to follow the procedures applicable to any transfer of ABOR IP. It is considered a misuse of University Assets to transfer materials without the proper agreements and without the proper signature authority.

An MTA is required when sending any research property, such as research tools, prototypes, cells, and records used or produced in the course of university research projects, and transferring all Intellectual Property rights to a third party. Examples include (1) hybridoma or clonal cell lines that produce monoclonal antibodies or recombinant proteins, (2) plants protected by the Plant Variety Protection Act, (3) prototype instrumentation or devices, (4) compounds, (5) research records and documentation, and (6) software. If the recipient is located outside the U.S., then export control will apply.

Only an authorized representative with signature authority from the university may sign MTAs. For outgoing MTAs, TLA has the sole authority to sign. For incoming MTAs, either the Office of Research and Contracts and Agreements has signing authority. Faculty and researchers do not have the authority to sign MTAs on behalf of the university.

The Office of Research Contracts and Agreements handles MTAs for inbound materials.

There are many reasons that an academic transfer is best handled through an MTA. Issues including but not limited to liability, export regulations, academic acknowledgment, publications, control of the material and its uses, intellectual property, access to proprietary information, and mitigating disputes are some examples that demonstrate the need for an MTA. It is critical that transfers to academic collaborators are as unrestricted as possible. TLA works with you to ensure that the transfer of the material meets both your and your colleagues' needs to continue advancing research.

In the majority of transfers, the MTA will not need to be revisited; it simply provides a mechanism for the proper transfer of materials. In some cases where a dispute may arise or the materials are particularly valuable, the MTA terms may be critical in mitigating the dispute.

While the vast majority of MTAs do not have any associated fees, it is sometimes appropriate to charge the recipient a nominal fee. The fee is meant to offset costs incurred by the provider for making, preparing and/or shipping and handling of the material.

Often a license is not required, however before committing to the transfer of a material to a foreign party, TLA works with the export control office to determine whether there may be an export licensing requirement or other sanctions or restrictions associated with the foreign recipient.

Many biological materials are controlled for export under the Export Administration Regulations (EAR) and materials that may be used in chemical or biological warfare and may be subject to control under the International Traffic in Arms Regulations (ITAR). Additionally, certain foreign entities (including academic or non-profit research institutions) may have specific prohibitions, and certain countries have sanctions that restrict all exports, regardless of their status listed on the Commerce Control List. Even if a transfer of material is unintentional, civil and criminal penalties for violations or improper sharing of materials may be incurred if they violate either the EAR or ITAR.

Specific laws and regulations control the possession, use, and transfer of certain biological agents and toxins that have the potential to pose a severe threat to public health and safety.

The Centers for Disease Control and Prevention (CDC) and the U.S. Department of Agriculture (USDA) regulate the possession, use, and transfer of certain biological agents and toxins. The rules are extensive and can sometimes require registrations, certificates, and background checks for investigators. The UA biosafety office is a good resource if there are concerns related to the transfer of such materials. TLA will work with you to provide guidance on any such transfers.

No. Any tangible property including prototypes, software, code, devices, and research tools may require an MTA.

Contact the Office of Research Contracts and Agreements for assistance.