Disclosing Your Invention
The University Owns Inventions
The Board of Regents of the University of Texas System (Board) has an ownership interest in all inventions made by UT personnel (i.e., faculty, staff and students) that are conceived or first actually reduced to practice as a part of or as a result of University research, activities within the scope of the inventor's employment by the University, or with the use of University resources. In other words, the Board owns inventions made by University personnel or with University resources.
The Office for Technology Development implements the policies of the National Institutes of Health, The UT System, and UT Southwestern Medical Center. The following sections will describe the rights and responsibilities of University personnel with regard to inventions made with University resources.
Invention Must Be Disclosed
UT Southwestern personnel who, either alone or in association with others, make an invention in which the Board has or may have an interest, must disclose such inventions on an Intellectual Property Questionnaire Form provided for this purpose by the Office for Technology Development (OTD).
OTD will promptly acknowledge its receipt of completed disclosure forms and will work with the inventor(s) to manage the invention in the best interest of the University, the inventors, and the public.
If the inventor believes that the invention was made outside the general scope of his or her UT Southwestern duties and without benefit of University resources, and therefore may not be owned by the Board, the inventor should in the disclosure form describe the circumstances under which the invention was made and the inventor's official duties at the time of making the invention.
If OTD determines that the invention is, in fact, the property of the inventor, the inventor can then consider whether they wish to seek voluntary assignment of the invention to the Board (with prior approval of UT Southwestern) or to maintain personal ownership.
Discussing Your Invention with Others
It is important that you not discuss your invention with persons outside of the UT Southwestern community and certainly that you not publish or display it without first disclosing it to OTD.
The reason for exercising caution is that under patent law, if you make an enabling public disclosure of your invention to someone who is not obligated to treat the disclosure as confidential, the Board and UT Southwestern risk losing the ability to file patents.
Most inventions are considerably devalued or may be rendered worthless to companies if they cannot be patented. (Even if you are not sure if your invention is, in fact, patentable, you should not disclose it outside of UT Southwestern until it has been disclosed to OTD. OTD can help you determine whether your technology is patentable or otherwise protectable.)
Confidentiality Agreements Protect Rights
When you want to discuss your technology with colleagues at other universities or companies, OTD will prepare and execute a Confidential Disclosure and Limited Use Agreement (CDA) with that company or university. A CDA protects our right to file patents and makes it more difficult for unscrupulous persons to steal your ideas (although a patent is the best long term defense against such theft).
Only certain UT Southwestern administrators (including the Vice President for Technology Development) are authorized to sign CDAs. Neither Department Chairs nor faculty members are authorized to sign these agreements. If you receive such an agreement from a company or another university, forward it to OTD for review and processing.
Turn to OTD for Help with Inventions
The Office of Technology Development is the steward of intellectual properties developed at UT Southwestern. OTD will use its best efforts to benefit the public by making your invention commercially available. OTD strives to make the administrative aspects of commercializing your invention as simple as possible with the least possible intrusion on your time.
Further, OTD will try to the extent of our resources to meet your needs and expectations and your suggestions on how we can better fulfill our responsibilities.
Companies expressing interest in the technology will often seek confidential information to aid in the review and evaluation of the technology. At this point, a Confidential Disclosure and Limited Use Agreement will typically be executed to enable the transfer of confidential information.
If materials need to be evaluated by the company, a Material Transfer Agreement will be executed to enable the transfer of materials.