Commercialization
Commercialization Process
- How does UT Southwestern commercialize technology?
UT Southwestern may commercialize patented, patent-pending, and unpatented technology. Department Liaisons in the Office for Technology Development work together to identify parties most likely to be interested in the invention. Often, inventors are best able to identify potentially interested parties.
The OTD Department Liaison contacts commercial parties potentially interested in the invention and provides a nonconfidential description of the invention. If these parties request additional confidential information, a Confidential Disclosure and Limited Use Agreement (CDA) will be provided to the company to enable the transfer of such information.
By law, representatives from the Office for Technology Development are the only representatives authorized to negotiate license and option agreements on behalf of the University. The OTD is responsible for enforcing and administering all licenses and options, and distributing monies paid by third parties to inventors.
- What activities occur during commercialization?
The licensee should continue to develop the technology to satisfy market requirements for adoption by customers. This usually involves preclinical and clinical testing, prototyping for manufacturing, and further development. Benchmark tests are often required to demonstrate the product or service viability in the target market. Medical products will require extensive animal and clinical trials for regulatory approvals.
- 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
- Software
Compensation
- How will I be compensated when my invention is commercialized?
If the OTD commercializes an invention, any cash license revenues are first used to reimburse UT Southwestern’s expenses, including patent costs. The amount remaining is subject to the following sharing formula:
- 50% to the inventors as personal income
- 25% to the labs of the inventors
- 25% to the Office of the President of UT Southwestern
If an inventor leaves UT Southwestern, their continuing share of lab disbursements shifts to the President, but their personal income disbursements are unaffected. If there is no lab, then an account will be created to receive such lab shares.
Sharing Unpublished Information on an Invention
- What should I do if a company wants me to share unpublished information related to my invention?
If you plan to share unpublished information with a company, contact your Department Liaison in the Office for Technology Development, who will work with a representative of the company to draft a Confidential Disclosure and Limited Use Agreement (CDA). Once the agreement is signed, 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 at this stage. Investigators who enter into a license are expected to share all information with the company that is needed to practice the invention.
Sometimes there is no time to put an agreement in place, for example when engaging another colleague in a discussion at a conference. The best thing to do is to discuss what your invention can do, or discuss the research results, but not to discuss what the invention is and especially not disclose a chemical structural formula.
Sending Research Reagents Outside UTSW
- 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). Your department liaison 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 noncommercial research use of materials, so when companies request access to materials for commercial or for-profit activities, a license agreement is the more appropriate instrument to enable transferring materials to commercial entities.