Frequently Asked Questions
|Jump to ...|
|Inventing and Disclosing||Commercializing|
What is an invention?
An invention is a useful method, device, process, algorithm, tangible material, or an improvement to an existing product. There is a distinction between an invention and what is patentable as not all inventions may be patentable. Patentable inventions must be novel, non-obvious, and useful for a particular purpose.
How do I know if I have invented?
If you can answer "yes" to any of the following questions, please complete an Intellectual Property Questionnaire (IPQ) and send it to the Technology Analyst in the Office for Technology Development.
- Have I built or modified an instrument or device to fulfill a perceived need?
- Have I discovered or developed a new technique for research or patient care that is not described in the scientific literature?
- Have I discovered or developed a new chemical compound, drug, formulation, antibody, gene or protein sequence, or genetically engineered organism?
- Have I made an "early stage" scientific discovery that I think may be significant?
- Have I made an improvement on a product while testing it for a company?
- Have I made an improvement to a technology originally obtained from another third party via a material transfer agreement?
- Have I created a process or a method of using an existing product in a different way than what is already known?
- Have I developed software that outside parties may be interested in acquiring?
Must I inform the UT Southwestern Office for Technology Development of my invention?
As a condition of employment, UT System policy dictates that all UT Southwestern employees (including students, postdoctoral fellows, clinicians, and faculty members) disclose inventions and discoveries if they were created under at least one of following conditions: using UT Southwestern facilities, on UT Southwestern time, or relating to employment duties at UT Southwestern.
Does UT Southwestern own every invention I create?
The Board of Regents of the University of Texas System (Board), through UT Southwestern, owns rights to inventions created by employees where one of the following is true: the invention is related to UT employment duties, the invention was made using UT facilities, or the invention was created on UT time.
Note that employment duties extend to include your areas of research and clinical expertise, but if you believe you have invented something unrelated to your UT employment responsibilities, we recommend disclosure of any such invention to the UT Southwestern Office for Technology Development. If it is determined that the Board does not own the invention, documentation confirming this conclusion will be provided upon request.
The Board owns the rights to inventions created under federal grants issued to UT Southwestern. Additionally, the U.S. government also has certain rights to inventions created under federal grants.
The Board owns the rights to inventions created under non-federal grants issued to UT Southwestern unless the granting organization specifically retains ownership of inventions via the grant agreement.
Ownership of inventions created under a Sponsored Research Agreement, Lab Study Agreement, Clinical Study Agreement, or Material Transfer Agreement is dictated by the language in the Agreement. Therefore, it is critical to inform the UT Southwestern Office for Technology Development of these agreements when an invention is disclosed.
How are “employment duties” defined?
For the purpose of determining ownership of intellectual property, any invention made within the area of expertise for which you are hired by UT Southwestern would be subject to Board ownership.
What happens if I invented with NIH (or another agency's) funds?
The Board has the option to exercise its right to elect title to inventions created under federal grants issued to UT Southwestern. UT Southwestern must inform the NIH of your invention within two months of the invention's disclosure. Within two years of the invention's disclosure, UT Southwestern must inform the NIH if it will elect to retain title to the invention. The Office for Technology Development is responsible for fulfilling this obligation.
What if my co-inventors are employed by different entities?
UT Southwestern will work with the entities that employ co-inventors to formulate a Joint Ownership and Licensing Cooperation Agreement whereby the entities agree to share or delegate costs, revenues, and commercialization opportunities for that invention.
How can I demonstrate my inventive contribution?
To demonstrate your inventive role, follow these guidelines: (1) keep detailed and accurate laboratory notebooks to document the dates of the conception and development of the patentable idea, including descriptions, drawings, photographs, and any other documentation that may be applicable and (2) sign and date each entry and have at least one witness sign and date the entries. The witness should not have a participating role in the project and/or invention.
How do I notify the UT Southwestern Office for Technology Development of an invention I have created?
Sending a completed Intellectual Property Questionnaire to the UT Southwestern Office for Technology Development is the first step in disclosing the invention. The Technology Analyst will then analyze the invention and identify and review any information related to the invention.
You will likely be asked at some point during the disclosure process to provide feedback on any identified documents and information, or answer questions about your invention.
Your cooperation during this first evaluation process is critical to ensure that the UT Southwestern Office for Technology Development understands your invention completely, how it may be commercialized and what opportunities may exist to create additional protection for the invention.
How are inventions evaluated?
The questions that the UT Southwestern Office for Technology Development asks about new inventions follow.
- Does the Board own the invention?
- Are our rights in this invention governed or restricted by provisions of a Material Transfer Agreement or funding agreement (Sponsored Research Agreement, Clinical Study Agreement, etc.)?
- Does the invention meet the U.S. Patent and Trademark Office's criteria for a patentable invention?
- Is UT Southwestern willing and able to enforce its patent rights that cover the invention?
- Is the invention protectable by means other than patenting?
- Can we identify one or more commercial opportunities?
- Is the invention ready for commercialization, or will it require significant development?
- How big is the potential market?
- What competitive advantages would this new product(s) have in the marketplace?
- Are there significant limitations to the technology?
- What third party rights may have to be obtained to commercialize or practice the invention (freedom to operate)?
Depending upon the answers to these questions, the Office for Technology Development may elect to patent or otherwise protect and/or market the invention. Inventors will be notified of the Office for Technology Development's intentions as soon as possible, usually within 30 days of receiving the completed Intellectual Property Questionnaire.
How does UT Southwestern protect inventions?
There are four methods to protect intellectual property: trade secret, copyright, controlled access, and patent. Trade secrets are inconsistent with UT Southwestern's mission of education and are therefore never used by UT Southwestern. Copyrights are appropriate for protecting software, video, or other works.
Controlling access to proprietary materials (such as biomaterials: cell lines, antibodies, reagents, or genetically engineered animals), preserves the ability to license and provide such materials. Patents are available on a country-by-country basis and grant the owner the right to exclude others from making, using, or selling a particular invention in the national jurisdiction of issue.
How does notifying the Office for Technology Development of my invention affect my ability to publish?
The Office for Technology Development should be informed of your invention before you submit your manuscript that describes the invention. The Office for Technology Development does not interfere with inventors' publishing plans.
As an inventor, may I acquire rights to the invention I created?
Under some circumstances, the Board, through UT Southwestern, is willing to license an invention back to its inventor (or release its rights in an invention), depending on the terms of any pre-existing contract. Under any such arrangement, the inventor must agree to reimburse UT Southwestern for any documented expenses incurred (if any) and pay UT Southwestern 25 percent of any resulting proceeds.
Are all inventions patentable?
Patentable inventions are defined by United States Code Title 35. To be patentable, an invention must be useful, novel, and non-obvious. The invention must first be able to demonstrate utility. The invention must be previously unknown and novel. The invention must be non-obvious, which means it should be unanticipated by any prior art (which comparisons may be made in combination with other prior art) or surprising to a person having ordinary skill in the art at the time the invention was made.
Note that inventions comprised of known elements whose combination is non-obvious and new uses for already existing devices or compounds may be patentable.
How does UT Southwestern decide to patent inventions?
Filing a patent application is an expensive process. Thus, before UT Southwestern files any patent application on behalf of the Board, it considers the following with respect to the invention: commercial utility, obligations to the sponsors of the research, competitive superiority, necessity for extensive development work, and licensee availability.
How is inventorship determined?
Inventorship is determined in accordance with U.S. patent law. Inventorship is limited to those individuals who have made an intellectual contribution to the conception of the invention which is embodied by one or more claims described in the patent application. The Office for Technology Development does not determine who should be named as an inventor. This is the responsibility of outside counsel assigned to the file. Inventorship may be amended during the course of patent prosecution.
Sometimes, patent prosecution may require dividing the claims into separate applications, which may require amendment of the inventors on each case. In rare circumstances, an inventor may be named on the case in error or an inventor may have been omitted. Provided there was no intent to deceive the USPTO, these errors can be fixed. In fact, it is important to fix any such errors. If inventors are intentionally named incorrectly, any resulting patent may be invalidated.
Can software be patented?
Yes, software may be patented, but in most cases, copyrighting the software provides adequate protection much more efficiently. Under Board policy, software created by faculty, staff, and students is typically considered indistinguishable from other properties owned by the Board.
However, under some circumstances, the inventor may own the copyright with educational uses reserved for UT Southwestern. For this reason, disclosure of the software to the UT Southwestern Office for Technology Development is encouraged. A special Software Intellectual Property Questionnaire (MS Word / PDF) is available for this purpose. Any media intended to be protected should carry a notation on the title or cover page (e.g. "Copyright, The University of Texas Southwestern Medical Center at Dallas, [year]).
How can I preserve UT Southwestern's ability to claim patent rights?
To preserve U.S. patent rights, a patent application must be filed within one year of an enabling public disclosure of the invention. To preserve foreign patent rights, a patent application must be filed before enabling public disclosure of the invention. An inventor should complete an Intellectual Property Questionnaire describing an invention before disclosing it to the public.
An enabling public disclosure may occur when a poster, abstract, or manuscript appears in public. Posting anything on the internet and speaking to an audience that may include individuals not employed by UT Southwestern may also be an enabling public disclosure.
Must inventions be patented to be commercialized?
No, inventions may be commercialized without patent protection. Common examples of such inventions include biomaterials such as cell lines, antibodies, animal strains, and software.
How does UT Southwestern commercialize technology?
UT Southwestern may commercialize patented, patent-pending, and unpatented technology. Representatives of the Office for Technology Development work together to identify parties most likely interested in the invention. Often, inventors are best able to identify potentially interested parties.
Commercial parties potentially interested in the invention are contacted and provided a non-confidential description of the invention. If these parties request additional, confidential information, a Confidential Disclosure and Limited Use Agreement (CDA) may be provided to the company to enable the transfer of such information.
Representatives from the Office for Technology Development are the only representatives authorized to negotiate license and option agreements on behalf of the University. The Office for Technology Development is responsible for enforcing and administering all licenses and options and distributing monies paid by third parties to inventors.
How will I be compensated when my invention is commercialized?
If an invention is commercialized, any cash license revenues are first used to reimburse UT Southwestern’s expenses, including patent costs. In some cases, UT Southwestern may withhold either a portion or all of any remaining cash license revenues in anticipation of paying future patent expenses. The amount remaining is subject to the following sharing formula: 50 percent to the inventors as personal income, 25 percent to the labs of the inventors, and 25 percent to the Office of the President of UT Southwestern.
If an inventor leaves UT Southwestern, their continuing share of lab disbursements is distributed to the President, but their personal income disbursements are unaffected. Compensation in the form of equity is not subject to this distribution formula.
What should I do if a company wants me to share unpublished information related to my invention?
If you are willing to share unpublished information with a company, contact a Licensing Associate in the Office for Technology Development who will work with a representative of the company to draft a Confidential Disclosure and Limited Use Agreement. Once the agreement is executed you will be free to share the information with the company. However, you are under no obligation to share all available information with the company. The investigator must be able to judge what information may be shared and what information might be best not to share.
How can I send research reagents to my colleague at another university?
Research reagents sent outside UT Southwestern should only be shared after completion of an appropriate Material Transfer Agreement (MTA). The UT Southwestern Office for Technology Development’s Cooperative Research unit is responsible for negotiating such agreements. In some cases, it may be appropriate to seek reimbursement of the cost associated with production and delivery of such materials.
MTAs only provide for non-commercial research use of materials, so when companies request access to materials, a license agreement may be the more appropriate instrument to enable the transfer of materials to commercial entities.
If my invention is licensed to a start-up company formed through the Office for Technology Development at UT Southwestern, how can I expect to be compensated?
Compensation may be in the form of equity in the company or cash payments (license fees and royalties, for example).
If my invention is licensed to a UT Southwestern start-up company, can I perform sponsored research for the company?
Yes, you may perform sponsored research under a UT Southwestern approved sponsored research agreement. A conflict of interest management plan must also be established to be certain that the research follows University and System guidelines.
If my invention is licensed to a UT Southwestern start-up company, what role will I play in the company?
The Office for Technology Development recognizes that your involvement may be integral to the success of the start-up. However, such activities may not interfere with your basic research and primary employment obligation to UT Southwestern. You may enter into a consulting agreement with the company or participate on their Scientific Advisory Board, provided this is approved by UT Southwestern.
However, in instances where a company is founded (in whole or in part) based on your intellectual property, UT Southwestern policy does not allow you to hold a Board of Directors position or act as an officer in the company.
How are conflicts of interest managed by UT Southwestern?
Conflicts of interest are managed by the Conflict of Interest Office. In some cases, a conflict management plan must be finalized concurrently with completion of a license agreement. More information may be obtained at the Conflict of Interest Office website.
If my invention is licensed to a UT Southwestern start-up company, will I have to leave my position at UT Southwestern?
With department chair approval, faculty may spend up to a total of 20 percent of their time on all of their outside activities, consistent with UT Southwestern policies. The Office for Technology Development maintains a neutral position in instances where a faculty member might choose to change careers by joining a start-up company. Thus, this decision is yours and not determined by the Office for Technology Development.
The answer to my question isn't listed here. How can I find out more?
Contact the Office for Technology Development.