Disclose an Invention
The Office for Technology Development (OTD) welcomes all UT Southwestern faculty members, researchers, clinicians, and students to disclose inventions using the Sophia Invention Disclosure Portal.
What is an Invention?
An invention may be:
- A useful method
- A device
- A process
- An algorithm
- Tangible material
- An improvement to an existing product
Not all inventions are patentable. Patentable inventions must be novel, non-obvious, and useful for a practical purpose.
To protect intellectual property, an inventor must disclose his/her invention(s) to the Office for Technology Development (OTD) at UT Southwestern before public disclosure. A public disclosure can negatively impact the patentability of an invention, and includes conference posters and presentations, publications, and publishing of a manuscript on a preprint server such as bioRxiv. Therefore, it is important that any inventions developed by UTSW faculty and staff be properly disclosed to the OTD before any such events. If you are unsure whether you have an invention to disclose, please contact your OTD Department Liaison. They will be happy to help!
You should submit an Invention Disclosure as soon as you feel that you have discovered something unique and that fulfills a need, and especially before you plan to publicly disclose a technology (see “Why Disclose an Invention?” for more information). If you have any questions, please feel free to contact your OTD Department Liaison.
Properly timed disclosure is enormously important and yields many benefits, including:
- Putting colleagues and the general population in possession of scientific and medical advances
- Compliance with reporting obligations to UT Southwestern, private foundations, and the federal government
- Potential financial return for the institution and inventor(s) through licensing
- Potential sponsorship for additional laboratory research
- Potential research collaborations with industry
- Log Into the Sophia Website
Log into the Sophia Website Portal using your UT Southwestern username and password. Look to the right side of the page to find the disclosure form that best fits your invention.
- Complete and Submit Your Online Disclosure
You can start an invention disclosure, save it, then leave and come back later to finish it. Click “Next” on any of the invention disclosure pages to save the entered information; you can then safely close the window. To complete the form later, look under the “Your Submissions” section on the Inventor Homepage and click on the link under “Track Code” to resume editing the disclosure.
- Preliminary Prior Art Search
The Office for Technology Development will perform an initial search of the patent and scientific literature to try to identify potentially relevant publications that may impact the ability to protect or commercialize an invention (“prior art”).
- Commercialization Review Team Evaluates Invention
The Office for Technology Development Commercialization Review Team will discuss each invention, identified prior art, and other potential challenges to protection and commercialization. Based on this discussion, the OTD may follow up with the inventor(s) for more information.
- Develop Intellectual Property and Commercialization Strategy
If appropriate, the OTD Commercialization Review Team develops an initial intellectual property and commercialization strategy. This strategy may include filing a patent application. Many inventions, including mouse models, cell lines, and software packages, are effectively commercialized without patent protection.
If necessary, OTD will instruct patent counsel to prepare a draft patent application that supports the commercialization strategy. Patent counsel, OTD, and contributors review and edit patent application drafts, and patent counsel then files a patent application with the USPTO. View more information about the patent process.
If appropriate, OTD implements a commercialization strategy.
What is an Invention Disclosure?
An invention disclosure is a detailed written description of your invention or discovery that is submitted electronically via the Office for Technology Development website using the Sophia Invention Disclosure Portal.
The Disclosure should tell us:
- What the invention is
- How it is made
- What problem it solves
The Disclosure should list:
- All research contributors, co-inventors, or co-authors
- Draft manuscripts
- Publications and/or oral disclosures
- Financial resources (if any)
- External materials
Who is an Inventor?
An inventor can be anyone, regardless of the category of their employment at UT Southwestern. There are three applicable definitions depending upon the type of intellectual property:
- With respect to patentable subject matter, an inventor is any employee who has made an inventive contribution as defined under the Patent Act, meaning that an inventor must have contributed to the conception of the invention as it is claimed in a patent.
- With respect to software and other types of virtual creations, an inventor is an employee who has participated (a) materially in the conception of the idea of the operation or design thereof (e.g., the operation of software, but not merely writing the code) or (b) extensively in translating an idea into a fixed medium.
- With respect to unpatented biologic and chemical materials or laboratory animals, an inventor is an employee who has taken part (a) in the conception of the idea of the specific material that is to be made and/or (b) in making the material, but only where making the material was not a routine or well-known practice.
How do I Disclose an Invention?
Submit your invention electronically through the Sophia Invention Disclosure Portal of the Office for Technology Development website. Please contact OTD via email@example.com or call 214-648-1888 if you need assistance completing the form or have questions regarding your invention.
Facts to Know About Disclosing Inventions
How do I know if I have invented something?
If you can answer yes to any of the following questions, please complete an invention disclosure electronically through the Sophia Invention Disclosure Portal. Here are some questions to consider:
- Have I built or modified an instrument or device to fulfill a need I recognized?
- Have I discovered or developed a new technique for research or patient care that is not described in the clinical or scientific literature?
- Have I discovered or created 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 to 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?
Unsure? Please contact your OTD department liaison. They will be happy to help!
Am I required to inform the Office for Technology Development of my invention?
UT Southwestern policy requires all faculty, staff, students, fellows, and clinicians to disclose inventions or other creations prior to public disclosure. If the submitter is unsure whether their work is an invention or a non-patentable research result, they should proceed on the side of disclosure and the OTD will determine how to characterize the work.
How do I notify the Office for Technology Development of an invention I have created?
Submitting a completed invention disclosure through the Sophia Invention Disclosure Portal is the first step in disclosing your invention. A technology analyst will analyze the invention and identify and review any information related to the invention. The OTD will ask you 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 OTD understands your invention completely to obtain patent or other legal protection and commercialize the invention.
How are inventions evaluated?
Some of the questions that the Office for Technology Development commonly ask about new inventions include:
- What unmet patient need does the invention address?
- Does the Board of Regents of the University of Texas System (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 additional development?
- How big is the potential patient population?
- What competitive advantages would the 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 OTD may elect to patent or otherwise protect and/or market the invention. The OTD will notify inventors of their intentions as soon as possible, usually within 30 days of receiving the completed invention disclosure. Please let the Office know if a publication or presentation is imminent so that patent applications can be filed quickly.
It’s important to understand that even where an invention does not show particular commercial potential, if it could meet an unmet patient population or research need, the OTD will work to protect it and find suitable partners to develop it into a product to serve that patient population or research need.
Should I list visiting scientist(s) at other institutions or companies on my Invention Disclosure?
All contributors to the ideas leading to a discovery should be mentioned in your disclosure, even if they are not UT Southwestern employees. UT Southwestern patent counsel will determine the rights of such persons and institutions. It is prudent to discuss with OTD all working relationships, preferably before they begin, to understand the implications for any subsequent inventions.
What happens if I created the invention with someone from another institution or company?
The OTD will work with the other institution or company to find the best solution for managing the invention. If there is a sponsored research agreement or consulting agreement with a company that relates to your invention, your department liaison will review that agreement to determine ownership and other rights associated with the contract and determine the next steps.
Should the technology be jointly owned with another academic institution, your department liaison will usually enter into an inter-institutional agreement that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process and allocating any licensing revenues. If the technology is jointly owned with a company, your department liaison will work with the company to determine the appropriate patenting and licensing strategy.
How are Inventions Protected?
How does UT Southwestern protect inventions?
Intellectual property is protected by filing patent or copyright applications. Trade secret protection is inconsistent with UT Southwestern’s mission of education and therefore never used by UT Southwestern.
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 a given country. Copyrights are appropriate for protecting software, video, or other works of authorship or creation.
Does UT Southwestern own every invention I create?
The Board of Regents of the University of Texas System (Board), through UT Southwestern, owns all inventions created by employees where one of the following is true:
- The invention is related to UT Southwestern employment duties of patient care, biomedical research, or biomedical education.
- The invention was made using UT Southwestern facilities.
- The invention was created on UT Southwestern time.
Employment duties extend to include the areas of biomedical research, biomedical education, and patient care. But if you believe you have invented something unrelated to your UT Southwestern employment responsibilities, we recommend disclosure of any such invention to the Office for Technology Development for review and clearance. If the OTD determines that the Board does not own the invention, the Office will provide documentation confirming this conclusion.
The Board owns 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 inventions created under nonfederal 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, Collaborative Research Agreement, Data Use Agreement, Lab Study Agreement, Clinical Study Agreement, or Material Transfer Agreement is dictated by the language in the Agreement. Therefore, when you disclose an invention, it is critical to inform the Office for Technology Development if you have previously signed one of these agreements.
How are “employment duties” defined?
For the purpose of determining ownership of intellectual property, the Board owns any invention disclosed by a UT Southwestern employee within the areas of patient care, biomedical education, or biomedical research.
What happens if I invented with NIH (or another agency’s) funds?
The Board has an 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 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 the co-inventors to sign a Joint Ownership Agreement or similar 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 contribution, follow these guidelines:
- 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.
- 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 does a notice to the Office for Technology Development of my invention affect my ability to publish?
The Office for Technology Development does not block, delay, or otherwise interfere with inventors’ publishing plans; the OTD endeavors to secure property protections before a scheduled publication or presentation. However, to coordinate such steps, the Office should be informed of your invention before you submit a manuscript that describes the invention.
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 preexisting contract. Under any such arrangement, the inventor and UT Southwestern will negotiate the terms of such a license.