Office of Technology Development

Report an Invention in Three Easy Steps

Patents

Patents are a primary mechanism to protect intellectual property, and often become important assets for commercialization. An issued patent confers a limited monopoly to the patent owner to exclude other parties from practicing the claimed intellectual property. The process typically takes several years, and there’s no guarantee that an issued patent will result. At the starting point, if OTD review of a new invention disclosure shows potential for patent protection, a provisional patent application will generally be filed. The provisional application serves as a one-year placeholder, during which time the inventor and OTD work together on the potential claims and supporting data that is necessary for the next phase of the patent application process. Provisional applications must be converted within one year from the date of filing. As patents are country-specific, OTD works with the inventors and, if available, industry partners, to identify countries in which to file (i.e., those countries deemed important for manufacturing and/or sales of products based on the invention). The efforts involved in IP protection require a major investment of resources on the part of the University, and OTD must periodically reassess the overall IP investment strategy, given limited resources.

Copyrights

Copyright is another mechanism to protect intellectual property. It is a way to protect a creative work that is fixed in a medium that allows it to be perceived, reproduced, and communicated. Examples of copyrightable works include computer programs, technical drawings, and maps. Copyright can be claimed upon creation of an original work. Official registration of the copyright may be sought in order to enforce its exclusive rights through litigation. OTD will work with the University creators of copyrightable works to identify useful applications and find licensing partners to commercialize the work.

Tangible Research Property

Tangible Research Property (TRP) refers to research products that may not be patentable but nonetheless have value as research tools (i.e., that are difficult and/or expensive to create). TRP includes biological materials, such as cell lines and transgenic animals and plasmids. OTD may be able to license these materials to commercial entities for use in research or to sell as research tools, with revenues to be shared with the University creators. Such licenses are typically non-exclusive, so the same TRP can be licensed to more than one company.

Licensing of UMBC Inventions

The Office of Technology Development (OTD) works closely with UMBC faculty and external partners in all aspects of Intellectual Property Protection and Commercialization, including: evaluating disclosed inventions for patentability and market potential; filing patent applications, copyright and trademark registrations; reviewing and negotiating material transfer agreements and non-disclosure agreements related to UMBC technologies; negotiating technology licenses; license monitoring and revenue distribution and assisting entrepreneurial faculty in new company formation.

To promote and market the research expertise and portfolio of technologies at UMBC,  OTD will connect with many types of potential industry partners. Our team will market specific technologies and seek feedback on the general market landscape. OTD marketing takes a variety of forms, for example: responding to inquiries, pitching the technology to business development industry contacts throughout the year and during annual professional conferences focused on tech transfer. When marketing efforts move to the stage where a company wishes to learn more details about a given technology, OTD will put a confidentiality agreement (“CDA”; also called non-disclosure agreement or “NDA”) in place before facilitating the dialogue between the inventor(s) and the company. A CDA/NDA will require a party to protect the unpublished, confidential information which is provided by the other party for a period of several years, unless that information becomes publicly available in the meantime.

TRPs and copyrighted materials are also marketed by OTD. We welcome referrals from inventors to commercial entities that may be interested in using or selling these.

Express License Agreement (EXLA)

A UMBC Express License Agreement (EXLA) makes starting a company based on technology licensed from UMBC easier than ever. An EXLA is a standard, non-negotiable license agreement specifically designed for startups founded by UMBC faculty, staff, and graduate students.

An EXLA offer standardized terms that are fair and reasonable for both startup companies and UMBC. This expedites the licensing process by eliminating the need to negotiate a license with OTD. Consequently, an EXLA must be signed without modifications, in other words “AS IS.”

Despite the many benefits of an EXLA, startups are not required to use one – if chosen otherwise, alternate licensing options may be negotiated.

The key advantages of a UMBC Express License include:

No cash required upfront and deferred reimbursement of patent expenses for up to two years

No Milestone fees

Favorable Royalty Fee

• One percent (1%) on Net Sales of Clinically-Approved Products
• Two percent (2%) on Net Sales of Other Products

To use a UMBC Express License Agreement, applicants must submit an application form, including a business plan synopsis, which must be approved by UMBC. Applicants must also submit a Conflict of Interest disclosure form. Maryland Innovation Initiative (MII) Phase III project recipients that meet the above criteria are automatically pre-qualified, pending Conflict of Interest Committee review and approval. However, all applicants must submit the application form to be considered for an EXLA.

For more information on Express License Agreements, please view the Key Terms Page, Introduction Page, and Application Form.

For initial contact or additional information, please contact Wendy Martin, Director of OTD, at wmartin@umbc.edu or 410-455-3658.

Our goal is to empower UMBC faculty and graduate students to transform their research into successful startups by providing resources and customized guidance through the rich entrepreneurship ecosystem at UMBC and the State of Maryland. Your first step is to disclose your technology.

Alex. Brown Center for Entrepreneurship – UMBC offers education and tools specifically for faculty and graduate students to teach business concepts and skills, startup resources and how to take advantage of them, legal issues surrounding startups and many other practical know-how. Visit the Alex Brown Startup tools kit and browse the startup tools. Training programs and business incubators.

The Commercialization Bootcamp is a four-workshop series designed to empower UMBC researchers with the information needed for successful commercialization. This includes MII, SBIR/STTR, and even NSF applications. The workshops prepare researchers to define the problem, understand customer discovery for iCORP, learn the ins and outs of what commercialization reviewers looks for, draft a competitive application, and how to craft a compelling pitch and choose the right person to deliver it.

The NSF Innovation Corps (I-Corps™) – This program prepares scientists and engineers to extend their focus beyond the laboratory and broadens the impact of select, NSF-funded, basic-research projects.

bwtech@UMBC  – bwtech@UMBC brings research, entrepreneurship, business leads, prospective clients and economic development in the Maryland region to one singular place. Focused on commercializing tech solutions from UMBC research and Maryland entrepreneurs, bwtech offers a variety of programs and resources designed to foster the transformation of innovative ideas into successful, sustainable businesses. Through state-of-the-art workspaces, tailored services, educational programs, expert mentorship, and connections to vital industry resources, we empower innovators driving both business success and regional economic development.

Funding sources are designed to advance innovations originating from UMBC research to more commercially viable technologies.

UMBC Internal Funding Sources

Technology Catalyst Fund – An internal funding opportunity which supports technology originating from UMBC research, such as proof-of-concept studies, extending data collection, and prototype development. Award Size: Up to $25,000.

Faculty Accelerator for Scientific Translation (FAST) is  flexible and designed to assist UMBC researchers in obtaining additional research translation and commercialization funding to support activities such as prototype development, market surveys, business plans, CEO support, mentoring assistance, and access to specialized facilities or equipment—whatever specific needs are necessary to advance the research toward the next stage of translation or commercialization funding. Award Size: up to $10,000.

Commercialization & ENTR Research (CENTRE) funding is an initiative of the Alex. Brown Center for Entrepreneurship at UMBC and provides funds up to $15,000 for research that leads to potential commercialization of a product service.

External Funding Sources

The Maryland Innovation Initiative (MII) – The MII program is designed to promote commercialization of research conducted in the partnership universities and leverage each institution’s strengths. TEDCO UMBC MII Site Miners identify groundbreaking technologies in the labs of university faculty members and help translate their ideas into viable businesses.

NIH Small Business Innovation Research (SBIR) & Small Business Technology Transfer (STTR) – The SBIR and STTR programs allow US-owned and operated small businesses to engage in federal research and development that has a strong potential for commercialization.

Maryland Industrial Partnership Program (MIPS) – MIPS provides funding, matched by participating companies, for university-based research projects that help companies develop new products.

TEDCO – Funding, resources, and connections that early-stage technology and life sciences companies need to thrive in Maryland.

Technology Transfer

• Association of University Technology Managers (AUTM)
• Licensing Executives Society (LES)

Government

• US Patent & Trademark Office (USPTO)
• US Copyright Office
• US Code of Federal Regulations (CFR)
• United States Code (USC)
• Bayh-Dole Regulations (37 CFR 401)

Mailing Address:
University of Maryland, Baltimore County
Office of Technology Development
1000 Hilltop Circle
Engineering Building, Room 329
Baltimore, Maryland  21250

Staff:
Wendy Martin
Director
410-455-3658
wmartin@umbc.edu

Enidia Santiago-Arce
Assistant Director
(443) 297-9324
esantia2@umbc.edu

Diane Markellos
Administrative Assistant II
410-455-1414
dianem@umbc.edu

Didn’t find what you needed? Contact the OTD staff at otd@umbc.edu or 410-455-3658.