The Office of Technology Transfer (OTT) is a resource and partner for the entire UM research community. We help university researchers, students, and faculty members, with patent filing, copyright procedures, and other forms of intellectual property protection. We also enable technology commercialization and secure partnerships with companies. In this section of our website, you will find information and resources to help you work with our office.

Commercializing Your Technology

There are many paths to commercial success. All eventually must engage with “the market.” We are experts at finding the best path to the market for you and your UM Technology. The typical options for a

License – The fastest path to the market, a license to an existing company will generate revenue the fastest. You and your department will benefit in the royalties received from these agreements.

Consulting – UM encourages faculty to engage “the market” through consulting, up to 20% of your time. It’s a great means to get a deeper understanding of market needs and potential applications for your UM Technology.

Sponsored Research Agreements – SRAs are managed exclusively by the Office of Research Administration link here. We believe this interface is another great avenue for engaging the market in your UM Technology. Licenses are often accompanied by these agreements as an added value to the companies licensing your technology.

Start a Company – Creating a startup can be a rewarding endeavor in many ways, but does bring a large time commitment and is the longest path to commercial success. Be sure to read the next section for additional information.

Starting a New Company

Platform technologies give rise to the emergence of various products without the expense of a new process/technology introduction. When a platform technology is discovered, UM Innovation will guide and support the formation of a startup company.
UM Innovation is constantly seeking investors and entrepreneurs who can provide resources and leadership necessary to help our technologies emerge from the University setting through the business setting.

Intellectual Property

Patents
• Patenting is a lengthy and expansive process, and requires close cooperation of the inventor, not the least of which include signing various forms promptly, reviewing and responding to the office actions as needed.
• A patent is a property right granted by the government in each country to an inventor to exclude others from making, using, offering for sale, or selling the invention in that country for a limited duration.
• In order to be patentable, an invention must be novel, non-obvious, useful and must be one of the one of the patentable subject matter: process, machine, manufacture, or composition of matter. The laws of nature, physical phenomena and abstract ideas are not patentable.
• An inventor is the individual who first conceives the invention. If someone merely provides funding or pays for the development of the idea, he/she is not an inventor. Conversely, if someone merely follows the instruction and acts as a “pair of hands”, he/she is not an inventor.
• Under the America Invents Act, patents are granted on a “first to file” basis now in the United States. Once an invention is made public, we lose the right to file for patent protection in most foreign countries.

Copyrights
• A copyright protects original works of authorship, such as writings, music, and works of art that have been tangibly expressed.
• Copyrights are automatic: books, music, software, artwork are all protected automatically by virtue of their creation.
• Registration of the work, is not necessary, but is recommended in the event there is infringement issue on the copyright or the ownership issue is raised.
• UM has very specific Policies on Copyright in the Faculty Manual LINK HERE.

Trademark
• A trademark protects a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that represents the source of the goods of one party.
• To file a trademark application, we must either have already used the mark in commerce, or “intend to use” the mark in the future.

Trade Secrets
• Trade secrets protect information, formula, compilation, program, technique which is not generally known or reasonably ascertainable by others.
• Unlike patents, trade secret protection can continue indefinitely unless there is a public disclosure which terminates the secrecy of the information.
• Trade Secrets Law Prohibits “Misappropriation” of Trade Secrets.

Confidential Disclosure Agreements

Until your technology is patented in its final form, speaking with a collaborator outside of the UM family could be extremely risky. In the worst case, you could lose a substantial portion of your intellectual property. In order to reduce this risk, you will need a Confidential Disclosure Agreement (CDA), also known as a Non-Disclosure Agreement (NDA). We are responsible for the execution of these agreements on your behalf.

A CDA is a contract between a party who is disclosing confidential information and another party who is receiving that information. The CDA specifies that the receiving party may use the information, but will also protect it from public disclosure.

CDA Requests

 
Please email us (um.ott.mta@med.miami.edu) with the following information:
1. Contact information of provider and recipient including name and email
2. Subject of the confidential information to be discussed / related technology
3. Point of contact for the agreement

Make a CDA, MTA, or DTA Request

Please fill in the following information to request a CDA, an MTA, or a DTA:
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Material Transfer Agreements (MTA) and Data Transfer Agreements (DTA)

Material/Data Transfer Agreements are required anytime UM personnel send any materials, data or devices to another collaborator or institution. These agreements help to ensure that faculty and employees receive the credit for the intellectual property shared.

MTAs specify the rights, obligations, and restrictions of both the providing and receiving parties addressing issues such as ownership, publication, intellectual property and permitted use and liability.

Data transfer agreements work similarly, but protect intangible data, such as measurements from a study.

MTA/DTA Requests

If you would like to send outbound materials to another institution, please fill out the questionnaire linked on this page, and someone from our office will begin the process of drafting an agreement to cover your transfer. Please note, that the average turnaround time for these agreements is around 2-4 weeks.

Email for Requests: um.ott.mta@med.miami.edu

MTA questionnaire is attached; somehow this should be linked too.

Funding

Wallace H. Coulter Center for Translational Research

Funding Opportunities:
The Wallace H. Coulter Center (“WHCC”) at the University of Miami will compete funds annually towards investigators with inventions that are within three years of commercialization. For additional details on funding opportunities, and/or to discuss your project, please reach out to Coulter Center staff.

Upcoming Deadlines:
FY 2016 Funding Cycle Timeline
•RFP Issued: November 10, 2014
•RFP Due Date: January 12, 2015
•Initial Review/Screening of Projects: February, 2015
•Oral Presentations/Funding Decision: March, 2015
•Funding Start Date: June 1, 2015

Apply for funding
Coming soon

Funded Projects 2014:
• Vibhor Agrawal, PhD – Motion Profiles For Enhancing Performance And Reducing Risk Of Injuries In Athletes
• Sanjoy K. Bhattacharya, PhD – New endogenous lipid entities to fulfill unmet needs for glaucoma treatment
• Kerry L. Burnstein, PhD – Repurposing safe and effective therapeutics in a novel approach to prostate cancer
• Sara J. Czaja, PhD & Phillip D. Harvey, PhD – The Development and Validation of Computer Based Cognitive Assessment and Functional Skills Training Package
• Robert W. Keane, PhD and Juan Pablo de Rivero, PhD, W. Dalton Dietrich, PhD – Humanization of Anti-ASC for Drug Development
• David I. Watkins, PhD, Ronald Desrosiers, PhD – Innovative persistent viral vector-based vaccine against DENV

Funded Projects 2013:
• Christopher A Fraker, Ph.D. – Stable and reproducible emulsions of volatile anesthetics for IV delivery
• Eli Gilboa, PhD – Development of human 4-1BB oligonucleotide aptamer conjugates
• Tan A Ince, MD, PhD – Development of human tumor cell culture technology for personalized oncology
• Andrew V Schally PhD, MDhc, DSchc – Development of potent agonistic analogs of Growth Hormone Releasing Hormone (GHRH) for Cardiac Repair

Oversight Committee
•John Bixby – Vice Provost for Research and Professor of Molecular & Cellular Pharmacology and Neurological Surgery, University of Miami
•Gerry Brunk – Managing Director, Lumira Capital
•Alessia Fornoni – Associate Professor of Medicine, Division of Nephrology and Hypertension and Diabetes Research Institute, Director and Chair, Peggy and Harold Katz Family Drug Discovery Center, University of Miami Miller School of Medicine
•Steven Girouard – President and CEO, Securus Medical Group
•Norma Kenyon – Martin Kleiman Professor of Surgery, Microbiology & Immunology and Biomedical Engineering, Diabetes Research Institute
Chief Innovation Officer, Leonard M. Miller School of Medicine
Vice Provost for Innovation, University of Miami
Executive Director, Wallace H. Coulter Center for Translational Research
•Evan Kharasch – The Russell D. and Mary B. Shelden Professor of Anesthesiology and Chief, Clinical Research Division in the Department of Anesthesiology
•Martin Lehr – Senior Associate, Osage Partners
•Andrew Levin, MD, PhD – Vice President, H.I.G. BioVentures
•Mara Neal – Director – Research Awards, Wallace H. Coulter Foundation
•John Newcomer – Executive Vice Dean and Professor of Clinical Biomedical Science, FAU Charles E. Schmidt College of Medicine and Interim Vice President for Research, FAU Division of Research
•James O’Connell – Director, Office of Technology Transfer, University of Miami
•Julia Owens – President and CEO, Atterocor
•Robert Raynor – Director, Corporate Business Development, Beckman Coulter
•Doug Reed – General Partner, Hatteras Venture Partners
•Alejandro Sanchez – Investment Advisor, Canepa
•Alison Tanner – Entrepreneur in Residence, Florida Institute Commercialization of Public Research
•Michael Wang – Professor Neurological Surgery, University of Miami
•Rhys Williams – President, New World Angels
•Rob Williamson – CEO, PharmAkea Therapeutics
•Peter Young –