SlideShare a Scribd company logo

STTM_IH

•
•
R
Richard Rodriguez
1 of 68
Download to read offline
The Inventor’s Handbook of Technology Transfer © 2009-2010, The University of Texas, South Texas Technology Management. All rights reserved. The Inventor’s Handbook of Technology Transfer is meant to be used by inventors, administrators, entrepreneurs, government officials, and others interested in technology transfer, development, and commercialization, as a guide to (1) the principles and practice of technology transfer and (2) the services provided by South Texas Technology Management. The Handbook makes use of, and provides examples for, the Rules and Regulations of the UT Board of Regents and the Handbook of Operating Procedures (HOP) of the served institutions. The information contained in this handbook is made available with the understanding that the Rules and Regulations and the HOP are the controlling documents of each institution and that these official documents should be consulted regularly in order to obtain the most current and accurate information regarding the policies of each institution. Content of this handbook was inspired by An Inventor’s Guide to Technology Transfer at the University of Michigan and portions used with permission by UM Tech Transfer. URL Ref.: www.techtransfer.umich.edu. An electronic version of this publication in Adobe™ Portable Document Format, .PDF, can be found online at www.utsttm.org. Editor / production: Richard Rodriguez Interior and cover design: Richard Rodriguez Photography Credits: Richard Rodriguez UTSA UT Brownsville Content Contributors: STTM Staff H.A.Meyer III For information or obtaining permission to reprint, please contact: South Texas Technology Management 3463 Magic Drive, Suite 350 San Antonio, Texas 78229 (210) 567-9208 utsttm.org Print Code: E3R1
i The Inventor’s Handbook of Technology Transfer STTM LIAISON REFERENCE – TABLE 1. vii SECTION A – INFORMATION FOR INVENTORS THE INVENTOR’S HANDBOOK OF TECHNOLOGY TRANSFER 1 STTM INTRODUCTION AND PURPOSE 1 OVERVIEW 2 What is technology transfer? How is technology transferred? What is the Bayh-Dole Act? What is South Texas Technology Management (STTM)? The Just-In-Time model Partnerships with outside counsel Why would a researcher want to participate in technology transfer? The Virtuous Research Cycle FUNDING AND RESOURCES FOR INVENTORS 6 Grants Help Inventions Become Market-Ready Proof of Concept, Short Proposal to Accelerate Research Commercialization (POCsparc) Texas Ignition Fund (TIF) Other Local Resources Policy & Guidelines
ii Table of Contents SECTION B – TECHNOLOGY TRANSFER PRACTICE THE TECH TRANSFER PROCESS 8 How do I work with STTM? What are the typical steps in the process? How long does the tech transfer process take? How can I help in this process? RESEARCH CONSIDERATIONS 11 Will I be able to publish the results of my research and still protect the commercial value of my intellectual property? May I use material or intellectual property from others in my research? Will I be able to share material, research tools, or intellectual property with others to further their research? My NIH Grant application includes a “Data Sharing Plan” requirement – how does this relate to UT’s IP policy? What rights does a private research sponsor have to any discoveries associated with my research? Can my research effort go beyond my academic institution? What about consulting? OWNERSHIP OF INTELLECTUAL PROPERTY 14 What is Intellectual Property (IP)? Who owns what I create? What is University of Texas’ policy on ownership of inventions? Who owns rights to discoveries made while on sabbatical? Who owns rights to discoveries made while I am consulting? Who owns rights to discoveries made using shared research materials?
iii The Inventor’s Handbook of Technology Transfer OWNERSHIP OF INTELLECTUAL PROPERTY (Cont.) Should I list visiting scientists or other collaborators on my Invention Disclosure? Can a student contribute to an invention? Who owns rights to discoveries made while interning at an outside company? Steps you can take to keep your internship work separate from your university work CONFLICT OF INTEREST 17 SECTION C – STTM METHODOLOGY INVENTION DISCLOSURES 18 What is an Invention Disclosure? Why should I submit an Invention Disclosure? How do I know if my discovery is an invention? Should I be submitting an Invention Disclosure? When should I complete an Invention Disclosure? Should I disclose research tools? How do I submit an Invention Disclosure? An Inventor’s Checklist ASSESSMENT OF AN INVENTION DISCLOSURE 21 How does STTM assess Invention Disclosures? If my personal conviction is that all IP should be licensed non-exclusively to all potential users for the public good, will the University honor my request? How do we decide whether to commercialize with a traditional or an “open source” license for software? Can I incorporate “open source” components in software for commercial distribution? Is ownership of an invention ever reassigned to an inventor?
iv Table of Contents PATENTS AND OTHER LEGAL PROTECTION 23 What is a patent? What is the United States Patent and Trademark Office (USPTO)? What type of subject matter can be patented? Can someone patent a naturally occurring substance? Can bio-markers be patented? What special considerations apply? What is the definition of an inventor on a patent and who determines the inventors for a patent application? Who is responsible for patenting? What is the patenting process? What is a provisional patent application and why does STTM file one first? When does STTM file a regular (utility) patent application? What’s different about foreign patent protection? Is there such a thing as an international patent? What is the timeline of the patenting process and resulting protection? Why does STTM protect some intellectual property through patenting? Who decides what gets protected? What does it cost to prepare, to file, and to obtain a patent? What if I created the invention with someone from another institution or company? Will STTM initiate or continue patenting activity without an identified licensee? What can the inventor do to help in the patent process? What is a copyright and how is it useful? How do I represent a proper University copyright notice? How can I learn more about University copyright policies? What is a trademark or service mark and how is it useful? What is trademark registration?
v The Inventor’s Handbook of Technology Transfer START UP COMPANIES 34 What is a start-up and why choose to create one? Who decides whether to form a start-up? What assistance and resources are available to the inventor? What role does an inventor usually play in a company? How much of my time and effort will it take? Does the university share equity in the company? What legal assistance is needed in creating a start-up? MARKETING TO FIND A LICENSEE 36 How does STTM market my inventions? Doesn’t marketing compromise the confidentiality of my invention? How are most licensees found? How long does it take to find a potential licensee? How can I assist in marketing my invention? Can there be more than one licensee? LICENSE AGREEMENTS 38 What is a license? What is a license agreement? How is a business chosen to be a licensee? Are all license agreements the same? What can I expect to gain if my IP is licensed? What is the relationship between an inventor and a licensee and how much of my time will it require? What other types of agreements and considerations apply to tech transfer?
vi Table of Contents THE LICENSING AGREEMENT AND STRATEGY 40 STTM Licensing Strategy Bedrock Principles COMMERCIALIZATION 42 What activities occur during commercialization? Does commercialization conflict with intellectual freedom or the academic mission? What is my role during commercialization? What revenues are generated if commercialization is successful? What will happen to my invention if the start-up company or licensee is unsuccessful? And, can the invention be licensed to another entity? REVENUE DISTRIBUTIONS 43 How are license revenues distributed? What if I receive equity from a company? What are the tax implications of any revenues I receive from the University? What happens to my share of the revenue if I waive rights to it? How are inventor revenues distributed if there are multiple inventors and/or multiple inventions in a license? How is equity from a license distributed? APPENDIX A — CASE MANAGER ANALYSIS DOCUMENTS 45 CONTACTS & NOTES 53
vii STTM LIAISON REFERENCE TABLE Institution Office / Contact(s) STTM Liaison UT Brownsville/Texas Southmost College Office of the Vice President of Research 80 Fort Brown Brownsville, Texas 78520 Luis V. Colom, M.D., Ph.D. Interim Vice President of Research Life Health Science Building, RM# 2.824 Office: (956) 882-7676 Fax: (956) 882-5043 Email: luis.colom@utb.edu STTM / UTB Liaison: Mr. Claude Longoria Office: (210) 567-2147 Fax: (210) 567-1337 Email: longoriacc@uthscsa.edu UT Pan American Office of Innovation and Intellectual Property Administration Bldg., Room 116 1201 W. University Drive Edingburg, Texas 78539 Ms. Jacquelyn Michel, Director of OIIP Office: (956) 381-2889 Email: jmichel@utpa.edu STTM / UTPA Liaison: Ms. Christine Burke, Ph.D. Office: (210) 567-0776 Fax: (210) 567-1337 Email: burkec@uthscsa.edu UT San Antonio Office of Sponsored Programs One UTSA Circle, MS 4.02.14 San Antonio, Texas 78249 Dr. Cory Hallam, Assistant Vice President for Commercial Alliances and Innovation Office: (210) 458-4340 Email: cory.hallam@utsa.edu STTM / UTSA Liaison: Mr. John Fritz Office: (210) 567-9232 Fax: (210) 567-1337 Email: fritzja@uthscsa.edu TABLE 1. Please refer to the STTM web site for updated liaison assignments — http://www.utsttm.org
viii STTM LIAISON REFERENCE TABLE (Cont.) Institution Office / Contact(s) STTM Liaison UT Health Science Center at San Antonio Office of Sponsored Programs Medical Bldg., Room 402L 7703 Floyd Curl Drive San Antonio, Texas 78229 Ms. Jane Youngers, Assistant VP for Research and Sponsored Programs Office: (210) 567-2340 Email: grants@uthscsa.edu STTM / UTHSCSA Liaison: Mr. Sean Thompson Office: (210) 567-1630 Fax: (210) 567-1337 Email: thompsons3@uthscsa.edu Southwest Research Institute (SwRI) Internal Research and Development (IR&D) 6220 Culebra Rd. San Antonio, Texas 78238 Joe McDonough, Ph.D. Microencapsulation and Nanomaterials Chemistry and Chemical Division Office: (210) 522-3670 Fax: (210) 522-4632 Email: jmcdonough@swri.org Stanton F. McHardy, Ph.D. Manager, Research and Development Synthesis and Process Chemistry Chemistry and Chemical Division Office: (210) 522-2669 Fax: (210) 522-4632 Email: stanton.mchardy@swri.org STTM / SwRI Liaison: STTM Staff Office: (210) 567-9208 Fax: (210) 567-1337 TABLE 1. (Cont.)
The Inventor’s Handbook of Technology Transfer utsttm.org 1 THE INVENTOR’S HANDBOOK OF TECHNOLOGY TRANSFER This handbook outlines the essential elements of technology transfer at the University of Texas (UT) and for institutions served by South Texas Technology Management (STTM; please note: “STTM” is used as one would use “GM” or “GE”). It is organized to answer the most common questions we typically field from our research community and is designed to provide a broad overview of the tech transfer process and services available for researchers. STTM INTRODUCTION AND PURPOSE STTM, which began operations in fiscal year (FY) 2008, manages intellectual property (IP) and technology transfer for UT San Antonio (UTSA), UT Brownsville (UTB), UT Pan American (UTPA), and University of Texas Health Science Center at San Antonio (UTHSCSA). STTM is organized and staffed to: Accelerate transfer of technologies to the marketplace; Capitalize on the financial potential of opportunities through an energetic, entrepreneurial spirit and high level of performance; Stimulate growth in the quality and size of the University of Texas intellectual property portfolio; and Manage the multiple demands of a full-service office. STTM engages in value creation activities such as marketing, licensing, new company start-up formation, financial valuation, business alliances, and internal and external investment in technology development, while negotiating highly specialized contracts that tie all of these activities together in legally binding agreements. As a point of entry for intellectual property-related matters of the served institutions, STTM assumes a fiduciary responsibility to the faculty, staff, and the community as the steward of a growing university IP portfolio. STTM strives to provide a comprehensive host of services for faculty, staff, and students in order to commercialize technologies developed through their Section A - Information for Inventors
South Texas Technology Management Relevant Sections 2 Section A - Information for Inventors Section B - Technology Transfer Practice 8 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 research. STTM is dedicated to the management of these technologies in the interest of advancing research and development, protecting the interests of the faculty and the university, and providing economic and humanitarian value to the local and state communities. By facilitating commercial development of faculty- conceived products, STTM provides an alternative outlet for new and cutting edge technologies beyond traditional publication and presentation through scientific media. For more information, visit http://www.utsttm.org or call STTM at (210) 567- 9208. OVERVIEW What is technology transfer? Technology transfer is the movement of knowledge and discoveries to the general public. It can occur through publications, educated students entering the workforce, exchanges at conferences, and relationships with industry. In academic technology transfer, inventions created at universities through federally funded research are licensed to private firms, which develop products and make them available to the public through commercial markets. Thus, goods produced by public investment are returned to, and for the benefit of, the public. For the purposes of this handbook, technology transfer refers to the formal licensing of inventions to firms, under the guidance of STTM staff. Technology transfer is a relatively old academic practice. Anecdotes can be cited from the 19th century, e.g., saccharin was discovered at Johns Hopkins University andsubsequentlypublishedin1879,patentedin1885,andproducedcommercially in 1886. The first tech transfer office was organized in 1925 at the University of Wisconsin in order to make available vitamin D fortified milk. Nevertheless, technology transfer was not practiced widely until enabling legislation was passed in 1980, i.e., — the Bayh-Dole Act, which allowed universities to take title to inventions created through federal grants, thereby enabling licensing on an exclusive basis.
The Inventor’s Handbook of Technology Transfer utsttm.org 3 How is technology transferred? Technology is typically transferred through a license agreement in which UT grants its rights to a third party in the defined technology for a period of years and sometimes for a particular field of use and/or region of the world. The licensee, i.e., the firm that licenses the technology, may be an established company or a new business start-up. Licenses include terms that require the licensee to meet certain performance requirements and to make financial payments to the University. These payments are shared with the inventors and also with the inventor’s institution to provide support for further research, education, and participation in the technology transfer process. What is the Bayh-Dole Act? The U.S. Bayh-Dole Act of 1980 allows universities and other non-profit institutions to take ownership rights to discoveries resulting from federally funded research, provided certain obligations are met. These obligations include making efforts to protect (when appropriate) and commercialize the discoveries, submitting progress reports to the funding agency, giving preference to small businesses that demonstrate sufficient capability, and sharing any resulting revenues with the inventors. The Bayh-Dole Act is credited with stimulating interest in technology transfer activities and generating increasing research, commercialization, educational opportunities and economic development. What is South Texas Technology Management (STTM)? STTMisauniversityserviceunitcomposedofspecialistsinhightechnologylicensing, business development, and legal matters, all of whom are widely experienced in transferring technologies from the physical sciences, life sciences and information technology. STTM is responsible for managing intellectual property from UT System component institutions including UTB, UTPA, UTSA, and UTHSCSA. Technology transfer, as practiced by STTM, involves the inventor directly in the commercialization process, and seeks consensus among STTM, the inventor, and industryrepresentativesfordecisions.Thus,facultyinventorshavetheopportunity to participate actively in the management of their inventions. Financial decisions are based on sound economic analysis. Successful marketing, patent prosecution,
South Texas Technology Management Relevant Sections 4 Section A - Information for Inventors Section B - Technology Transfer Practice 8 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 and licensing generate returns to the university, and inventors benefit directly through revenue sharing, as well as by gaining access to an industry partner, industry facilities, and industry personnel. The Just-In-Time model STTM practices Just-in-Time tech transfer (JIT). In regards to patent prosecution, JIT means that patents are filed when needed. The “trigger” for patenting is a break-even economic analysis. STTM has partnered with four Texas law firms (the “partnerfirms”),whofileprovisionalpatentapplicationsforaveryreasonablesum. Thus, if the expected value of an invention meets or exceeds such a sum, STTM will accept an invention for management. In other words, if STTM can manage an invention and avoid losing money, it makes a “GO” decision. The reason for such a low bar to accept an invention is that successful commercialization returns more than money to a university—see the Virtuous Research Cycle, Figure 1, below. In addition, working with an inventor through the commercialization process generates (1) an informed inventor who will be well prepared to participate in the management of his or her next invention, as well as (2) a resource who can offer an informed opinion to faculty peers concerning their inventions. JIT conserves funds and time for STTM—and effort for inventors—by avoiding unnecessarypatentprosecutionandtheassociatedwork.JITcoordinatestechnical, patent, and commercial progress, such that sufficient protection is provided as an invention matures, and valuable patent claims remain alive and coordinated with the product life cycle. JIT avoids impeding research by eliminating unnecessary patents, and thereby reduces patent clutter. Partnerships with outside counsel STTM has developed strong partnerships with several law firms in the South Texas region. Although STTM works with other law firms, our partnerships with a few firms allow each licensing associate to become familiar with a small group of attorneys and their individual areas of expertise. In turn, these same attorneys are well versed in STTM and institution policies, and work diligently with us to ensure expectations are being met, both legally and financially.
The Inventor’s Handbook of Technology Transfer utsttm.org 5 Why would a researcher want to participate in technology transfer? The reasons are unique to each researcher and may include: Making a positive impact on society; Feeling a sense of personal fulfillment; Achieving recognition and financial reward through revenue sharing; Generating additional lab/departmental funding; Meeting the obligations of a research contract; Attracting research sponsors; Creating educational opportunities for students and Linking students to future job opportunities. The Virtuous Research Cycle Academic technology transfer springs from an institution’s research enterprise. Infrastructure provided by universities—facilities and personnel—create knowledge and train knowledge workers. The acts of creating and training further build the research enterprise and increase the university’s ability to attract research funding and prestigious faculty, and are thereby sustained cyclically, i.e., the virtuous research cycle. With respect to intellectual property, research can generate inventions, which can create new products for existing companies, or form the basis for a new company. Analogous to creating knowledge and training workers by a thriving research enterprise, new products and companies generated by intellectual property further build and fuel the research infrastructure, and stimulate the virtuous research cycle. A larger image of the Virtuous Research Cycle poster can be found online at http://www.utsttm.org.
South Texas Technology Management Relevant Sections 6 Section A - Information for Inventors Section B - Technology Transfer Practice 8 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 FUNDING AND RESOURCES FOR INVENTORS Grants Help Inventions Become Market-Ready Inventions created from university research are seldom market-ready. In order to attract industry to such early stage technologies, additional work is required. POCsparc funds may be applied to: Advancement of Hypothesis Testing — Test an idea or prediction with in-vitro experiments, extend in-vitro results with in-vivo experiments, or demonstrate a CAD/CAM design with a bench prototype. Target Validation — Screen small molecule libraries, produce antibodies, or select target-binding peptides or aptamers. Pre-Commercial Research — Validate academic software code for commercial application, formulate a drug or vaccine for delivery, or develop alternative applications for technology or indications for therapeutic compounds. The following grant programs are available to help an inventor bridge the gap between the bench and the shelf, and to advance the invention towards commercialization. Proof of Concept, Short Proposal to Accelerate Research Commercialization (POCsparc) STTM supports the research enterprise of the served institutions by funding faculty research directly. STTM reserved $1 million for POCsparc, through which awards are made to faculty inventors for the purpose of advancing inventions to commercialization. Through 2008, STTM has awarded $500,000 in support of two dozen faculty inventions across the four served institutions. Texas Ignition Fund (TIF) The UT System Office of Research and Technology Transfer have a recurring request for proposals for the Texas Ignition Fund (TIF), which aims to speed the commercialization of inventions created by UT faculty. Proposals should be submitted to STTM; RFPs will recur bi-annually. Check the STTM website, www. utsttm.org, for deadline and other information.
The Inventor’s Handbook of Technology Transfer utsttm.org 7 Other Local Resources Bob McKinley – Associate Vice President for Economic Development, UTSA http://www.iedtexas.org/ Dr. Bill Flannery – Masters of Technology Program, UTSA http://programs.business.utsa.edu/mot/ Dr. Cory Hallam – Assistant Vice President for Commercial Alliances and Innovation Center for Innovation and Technology Entrepreneurship, UTSA http://programs.business.utsa.edu/entrepreneur Policy & Guidelines For detailed information on the UT policy and guidelines on intellectual property, please visit the following internet links. UT System IP Policy & Guidelines – Series 90000: Intellectual Property http://www.utsystem.edu/bor/rules.htm#A10 UTSA Handbook of Operating Procedures http://www.utsa.edu/hop/chapter2/2-27.cfm UTHSCSA Handbook of Operating Procedures http://www.uthscsa.edu/hop2000/12-toc.html UT Brownsville Handbook of Operating Procedures http://www.utb.edu/ba/hoop/Policy/10-10-1.pdf UT Pan American Handbook of Operating Procedures http://www.utpa.edu/newhop/files/pdf/Q7583456.pdf
South Texas Technology Management Relevant Sections 8 Section B - Technology Transfer Practice Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 THE TECH TRANSFER PROCESS How do I work with STTM? We encourage you to contact STTM during your discovery process to ensure you are aware of the options that will best leverage the commercial potential of your research. STTM staff members are trained to assist you with questions related to marketability, funding sources, commercial partners, patenting and other protection methods, new business start-up considerations, UT policies and procedures, and much more. Our team approach provides you with an assigned case manager supported by partner patent law firms, internal legal assistance, marketing resources, and a rapidly growing business development network. What are the typical steps in the process? The process of technology transfer is summarized in the steps and diagram that follow. Note that these steps can vary in sequence and often occur simultaneously. Research Observations made and experiments performed during research activities often lead to discoveries and inventions. An invention is any useful process, machine, composition of matter, or any new or useful improvement of the same. Often, multiple researchers may have contributed to an invention, and should be included in patents as inventors. Inventor status requires a conceptual contribution to an aspect of the invention. Guided technical work, no matter how extensive, does not rise to the level of invention. Likewise, authorship attribution for a journal publication does not confer inventor status. Pre-Disclosure Early informal contact with STTM personnel to discuss your invention and to provide guidance with respect to the disclosure, evaluation, and protection processes described below. Invention Disclosure The written notice of invention to STTM that begins the formal technology transfer process. An invention disclosure remains a confidential document and should fully explain your invention so the options for commercialization
The Inventor’s Handbook of Technology Transfer utsttm.org 9 can be evaluated and pursued. More information and an invention disclosure form can be found online at http://www.utsttm.org. Assessment Theperiodinwhichyouandyourcasemanagerreviewtheinventiondisclosure, conductpatentsearches(ifapplicable),andanalyzethemarketandcompetitive technologies to determine the invention’s commercialization potential. The evaluation process, which may lead to a broadening or refinement of the invention, will guide our strategy on whether to focus on licensing (1) to an existing company or (2) to a new start-up company. Forms used in assessment of your invention are shown in Appendix A — Case Manager Analysis Forms. Protection The process in which protection for an invention is pursued. Patent protection, a common legal protection method, begins with the filing of a provisional patent application with the U.S. Patent and Trademark Office (USPTO). Once a patent application has been filed, several years and thousands of dollars are required to obtain an issued patent. Other protection options, also known as intellectual property, include copyright, trademark and, though not usually appropriate in a university setting, trade secrets. An academic analogy to a trade secret is unpublishable data that is of commercial interest, which may be licensed as confidential information. Marketing With your active involvement, STTM staff will identify candidate licensee companies that have the expertise, resources, and business networks to bring disclosed inventions to market. This process may involve partnering with an existing company or forming a start-up. Your active involvement is critically important to marketing success. Paths to Commercialization License to an existing company: For most cases, an existing business can be identified to develop a commercial product from the university invention. STTM licensing specialists will identify mutual interests and goals, and work with the business to create a development plan to fully commercialize each invention. Or, Create a Start-Up: If creation of a new business start-up is determined to be
South Texas Technology Management Relevant Sections 10 Section B - Technology Transfer Practice Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 the optimal commercialization path, STTM staff will assist in planning, creating, and funding the start-up by facilitating existing relationships, resources, and participate with other programs. Licensing A license agreement is a contract between the UT Board of Regents, who own UT inventions, as a condition of employment (see Regents Rules and Regulations series 90000, http://www.utsystem.edu/bor/-rules.htm#A10), and a private company to which UT’s rights to a technology are conveyed (without relinquishing ownership) for financial and other benefits. An option agreement is sometimes used to enable a third party to evaluate technology for a limited time before licensing. Commercialization The licensee company continues the advancement of the technology, and makes other business investments to develop a product or service. This step may entail further development, regulatory approvals, sales and marketing, support, training, and other activities. Revenue Revenues received by STTM from licensees are distributed to inventors personally, and to the inventors’ institutions to fund additional research and education and to encourage further participation in the tech transfer process. Revenue distribution is subject to the Regent Rules and the Handbook of Operating Procedures (HOP) of the inventors’ institutions. How long does the tech transfer process take? The process of protecting the technology and finding the right licensing partner may take months—or even years—to complete. The amount of time will depend on the development stage of the technology, the market for the technology, competing technologies, the amount of work needed to bring a new concept to market-ready status, and the resources and capabilities of the licensees and the inventors. How can I help in this process? Call the STTM office at (210) 567-9208 or the appropriate licensing specialist (found at www.utsttm.org) when you believe you have a scientific or technical
The Inventor’s Handbook of Technology Transfer utsttm.org 11 observation with potential commercial or research value. Complete and submit the appropriate STTM Invention Disclosure Form, which can be found online at http://www.utsttm.org, before publicly disclosing your technology or submitting a manuscript. To avoid risking your patent rights and possibly hindering the opportunity to market your invention, contact STTM before holding any discussions with people outside of your institution. On the Invention Disclosure Form, include companies and contacts you believe maybeinterestedinyourIPorwhomayhavealreadycontactedyouaboutyour invention. Studies have shown that over 70% of all academic licenses originate from inventor contacts, thus, your contacts can be essential for success. Respond promptly to STTM and partner patent counsel requests. While some aspects of the patent and licensing process will require significant participation on your part, we will strive to make efficient use of your valuable time. Keep STTM informed of upcoming publications or interactions with companies related to your intellectual property. RESEARCH CONSIDERATIONS Will I be able to publish the results of my research and still protect the commercial value of my intellectual property? Yes, but since patent rights are affected by these activities, it is best to submit an Invention Disclosure (discussed in next section) well before any public communication or disclosure of the invention. There are significant differences between the U.S. and other countries as to how early publication affects a potential patent. Once publicly disclosed (published or presented in some form), an invention may have restricted or minimal potential for patent protection outside of the United States. U.S. patent law provides a 1 year grace period beyond the first public disclosure. Be sure to inform the STTM case manager of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation or master’s thesis, publication, discussions with academic or industrial collaborators, or other public presentation of the invention.
South Texas Technology Management Relevant Sections 12 Section B - Technology Transfer Practice Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 May I use material or intellectual property from others in my research? Yes, but it is important to document carefully the date and conditions of use so that wecandetermineifthisusemayinfluencetheownershiprightsofyoursubsequent research results. If you wish to obtain materials from outside collaborators, an incoming Materials Transfer Agreement (MTA) should be completed and signed by an authorized University representative (See Table 1, located above, for STTM liaison information to your academic institution). Contact STTM or your OSP for more information on incoming MTAs. Institution sponsored programs offices have primary responsibility for MTAs, with assistance from STTM for industry and IP- related issues. Will I be able to share material, research tools, or intellectual property with others to further their research? Yes. However, it is imperative to document items that are to be shared with others and the conditions of use. If you wish to send materials to an outside collaborator, an outgoing Materials Transfer Agreement (MTA) should be completed for this purpose. Researchers may be asked to sign an MTA as evidence that they have read the agreement and will comply with its terms. However, since an MTA is a binding contract, the official signature must come from the university or its delegatedrepresentative.ItalsomaybenecessarytohaveaConfidentialDisclosure Agreement (CDA) completed to protect your research results or intellectual property. Contact an STTM representative at www.utsttm.org or call (210) 567- 9208 for assistance in completing CDAs. My NIH Grant application includes a “Data Sharing Plan” requirement – how does this relate to UT’s IP policy? Under the National Institutes of Health (NIH) Data Sharing Policy, an investigator must share final, non-restricted research data in a timely manner, usually upon publication of the main findings from the final dataset. Where the investigator expects restricted research data, the restricted data should be explained (e.g., restricted under third-party agreement until publication) in the data sharing plan and how the data will be shared or why it cannot be shared. The investigator must:
The Inventor’s Handbook of Technology Transfer utsttm.org 13 Comply with university policy requiring the disclosure of inventions to STTM to• allow the university to comply with federal law by reporting inventions made through federally-funded research to the appropriate agencies; Comply with third-party research agreements and materials-transfer• agreements; and Comply with the need to protect patentable or otherwise proprietary• information. While the NIH desires that data and resources to be as widely and freely available as possible, investigators may seek funds from NIH for sharing, may charge for reasonable costs incurred while complying with a sharing request, and may seek restrictions on the use of data or resources such as “for academic or research purposes only.” Patenting and licensing are also allowable methods of sharing so long as the licensed product is reasonably available and accessible to the research community. For investigators seeking publication of their research, consult with the relevant journals, as many have data sharing requirements as a condition for authorship. If questions about intellectual property arise when preparing sharing plans, please contact STTM. What rights does a private research sponsor have to any discoveries associated with my research? All Sponsored Research Agreements specify the intellectual property rights of the sponsor. UT retains ownership of the patent rights and other intellectual property resulting from sponsored research. However, the sponsor may have rights to obtain a license to the defined and expected outcomes of the research. Often, sponsored research contracts allow the sponsor a limited time to negotiate a license for any patent or intellectual property rights developed as the result of the research. Even so, the sponsor generally will not have contractual rights to discoveries that are clearly outside of the scope of the research. Therefore, it is important to define carefully the scope of work within a research agreement. Sponsored research projects are managed by the Office of Sponsored Programs located on the institution where the research is to take place. See Table 1, located above, for STTM liaison information to your academic institution.
South Texas Technology Management Relevant Sections 14 Section B - Technology Transfer Practice Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 Questions about intellectual property and patent rights should be directed to the STTM office by phone at (210) 567-9208. Can my research effort go beyond my academic institution? Yes, one such situation exists in San Antonio where there are joint inventions between UTHSCSA and Southwest Research Institute (SwRI). The Internal Research and Development Program at SwRI exists to broaden the SwRI’s technology base and encourages staff professional growth. Internal funding of research enables the SwRI to advance knowledge, increase its technical capabilities, and expand its reputation as a leader in science and technology. The program also allows SwRI engineers and scientists to continually grow in their technical fields by providing freedom to explore innovative and unproven concepts. See Table 1, located above, for STTM liaison information to Southwest Research Institute. What about consulting? Consulting activities may not conflict with UT Intellectual Property policy. Before an employee engages in consulting activities, this IP policy should be made clear to those outside entities. Except with explicit authorization, consulting activity shall not diminish UT IP rights. Consulting work in the field directly related to the investigator’s university research requires disclosure to STTM of all discoveries. OWNERSHIP OF INTELLECTUAL PROPERTY What is Intellectual Property (IP)? Intellectual property refers to creations of the mind that can be protected under federal law, e.g., inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.
The Inventor’s Handbook of Technology Transfer utsttm.org 15 Who owns what I create? As a general rule, the UT Board of Regents owns inventions made by its employees while acting within the scope of their employment or using university resources. Narrow exceptions may apply for inventions made by employees working outside their field of study and without significant use of university facilities. In some cases, the terms of a Sponsored Research Agreement or Materials Transfer Agreement may impact ownership. What is UT’s policy on ownership of inventions? The policy is stated in Regents’ Rules Series 90000, found online at URL http:// www.utsystem.edu/bor/rules.htm#A10. This policy, which assumes UT ownership of inventions, applies to all types of intellectualproperty,including,butnotlimitedto,anyinvention,discovery,creation, know-how, trade secret, technology, scientific or technological development, research data, works of authorship, and computer software regardless of whether subject to protection under patent, trademark, copyright, or other laws. Scholarly Work The Board of Regents will not assert its interest in the copyright of scholarly or educational materials, artworks, musical compositions, and literary works related to the author’s academic or professional field. Who owns rights to discoveries made while on sabbatical? Generally, if you are on a sabbatical and paid by UT, UT maintains rights to any discoveries connected to your work. Who owns rights to discoveries made while I am consulting? Except with explicit authorization, consulting activity shall not diminish UT IP rights. Consulting work in the field directly related to the investigator’s university research, and upon which the investigator is evaluated as a university employee, requires disclosure to STTM of all discoveries.
South Texas Technology Management Relevant Sections 16 Section B - Technology Transfer Practice Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 Who owns rights to discoveries made using shared research materials? When several parties have contributed materials to a discovery, ownership of the discovery is determined by patent law. However, the owner of the original material may retain certain rights to new compositions, which rights are based upon the dependence of the new discovery on the original material. Should I list visiting scientists or other collaborators on my invention disclosure? All contributors to a discovery should be mentioned in your disclosure, even if they are not university employees. STTM, along with legal counsel, will determine the rights of such persons and institutions. Can a student contribute to an invention? Yes, a student can be an inventor or co-inventor. Who owns rights to discoveries made while interning at an outside company? The work you do at your outside internship is likely to result in new IP that is owned by the company where you work. If the work is related to an invention or a software program originally created at a UT institution, then the ownership of new intellectual property becomes confused. This confusion could prevent the invention from being commercialized and creates problems for the university, the company, and you. Your internship employer will generally ask you to sign an employment agreement. These agreements commonly include a provision stating that IP created during your internship automatically becomes the property of your employer. It is a good idea to request a copy of this document and keep it for your reference. Steps you can take to keep your internship work separate from your university work: Fill out an Invention Disclosure form prior to leaving for your internship. The disclosure form can be found online at http://www.utsttm.org. Disclosures
The Inventor’s Handbook of Technology Transfer utsttm.org 17 can be submitted even at the very early stages of an idea in order to create a document that verifies its creation at UT. You can also fill one out during your internship, if you realize later that there may be some question about where you were when you had the idea. Use caution with UT source code during your summer internship. Even if you are working on it after normal business hours, your employer may claim ownership over new intellectual property. Read the employment agreement to find out if you can work on the source code on your own computer, at home, after hours, and without employer restrictions. Do not use your university lab notebook during your summer internship. Be very cautious about continuing to work on an internship product or developing an idea you had at the internship after it has ended. If you choose to continue to work on an old internship project at home and after hours, you must realize that your sponsor employer may legally claim any new intellectual property. Contact your university advisor or STTM if you have any questions about these issues as they apply to your individual circumstances. CONFLICT OF INTEREST Regent Rule 30104 addresses conflict of interest. Each institution manages conflict of interest, as described in their respective HOP. STTM does not implement or manage conflict of interest policy or practice. Nevertheless, STTM reports to each institution situations that present opportunities for conflict, such as returned rights to faculty inventions, faculty start-up company formation, and continuing relationships with start-ups such as sponsored research, student involvement, and option rights for new inventions.
South Texas Technology Management Relevant Topics 18 South Texas Technology Management Relevant Sections 18 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 INVENTION DISCLOSURES What is an invention disclosure? An invention disclosure is a description of your invention or development that is provided to STTM. The disclosure lists all collaborating sources of support and includesinformationnecessarytobeginpursuingprotectionandcommercialization activities. STTM provides disclosure forms for inventions, software, and biological materials. To initiate the process, submit the appropriate disclosure form to STTM, which will hold the information in confidence. Using the disclosure, STTM can then generate a non-confidential description of your invention to assist in marketing the technology and creating confidentiality agreements with outsiders to allow more detailed exchanges of information with potential partners. Why should I submit an invention disclosure? When you disclose your invention to STTM, it starts a process that could lead to the commercialization of your technology. On the part of STTM, this process may involve beginning the legal protection/patent process and working to identify outside development partners. If Government funds were used for your research, certain invention reporting and utilization obligations are included under the Bayh-Dole Act. For all inventions, you are required to promptly file an invention disclosure, and STTM will assume responsibility for all other obligations to the granting agency. Similarly, for private and industry sponsored research, reporting and utilization requirements — including option rights to practice an invention — may have been included under the institution’s agreement for funding. How do I know if my discovery is an invention? Should I be submitting an invention disclosure? You are encouraged to submit an invention disclosure for all inventions and developments that you feel may solve a significant problem and/or have commercial value. If you are in doubt, contact STTM to discuss the invention. We can also advise on alternatives to licensing. Invention requires conception and reduction to practice. An invention disclosure can be filed upon conception of an invention, but STTM requires reduction to practice, i.e., preliminary experimental results, to file a patent application.
Relevant Topics utsttm.org 19 The Inventor’s Handbook of Technology Transfer utsttm.org 19 When should I complete an invention disclosure? Youshouldcompleteaninventiondisclosurewheneveryoufeelyouhavediscovered something unique with possible commercial value. Disclosure should precede presenting the discovery through publications, poster sessions, conferences, press releases, or other extra-institution communications. Once publicly disclosed, (i.e., published or presented in some form), an invention may have severely restricted or minimal potential for patent protection outside of the United States. Differences exist between the U.S. and other countries on the impact of early publication on a potential patent. Be sure to inform STTM of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal, dissertation or master’s thesis, publication, or other public presentation of the invention. Despite the loss of protection due to initial disclosure, significant value remains, including: Full US protection remains available for one year; Full protection is available in certain foreign countries, though restrictions apply; The US represents a significant market for high technology inventions; and Because of the nascent stage of development of academic inventions, foreign protection becomes available to improvements and modifications of the core invention as it is developed into a marketable product. Should I disclose research tools? Typically, research tools are materials such as antibodies, vectors, plasmids, cell lines, mice, and other materials used as “tools” in the research process. The National Institute of Health (NIH) mandates that research institutions share these materials, in a manner that promotes scholarly activity, through the Uniform Biological Materials Transfer Agreement (UBMTA). Nevertheless, some biological materials may have significant value, and many companies are willing to pay for the use of these materials. In these instances, the materials can be transferred under a limited use license agreement in exchange for a one-time cash payment, research support, or sometimes a royalty stream from products that utilize the materials. The role of STTM is to facilitate open access to tangible research materials for academic researchers, while protecting the commercial value of these materials.
South Texas Technology Management Relevant Topics 20 South Texas Technology Management Relevant Sections 20 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 If you have research tools that you believe to be valuable, or wish to provide to others (including research collaborators), STTM will work with you to develop the appropriate protection, licensing, and distribution strategy. STTM is developing a web-based system for distribution of biological materials, which includes a standard, simple to implement license agreement. Contact STTM for further information. How do I submit an invention disclosure? For each disclosure received, STTM will assign a case manager, who will be the primary point of contact for all tech transfer activities. If you have any questions, call STTM at (210) 567-9208 or email us at disclosures@uthscsa.edu. You can find a disclosure form online with instructions at http://www.utsttm.org. An Inventor’s Checklist Reprinted with permission from H.A. Meyer III Inventing is a risky, expensive and time-consuming endeavor. Unfortunately, more and more it is becoming a rich man’s game. Therefore, before jumping into a swimming pool headfirst, we suggest inventors check for adequate water by getting answers to these simple questions, which are more effectively answered in conjunction with a professional analysis of the invention. Some important considerations include: If the device does what is intended, is there a market, i.e., will anyone buy it?• Does it offer real BENEFITS?• It is really novel and non-obvious?• Does it solve a real problem? Or does it create attributes that would cause• people to buy it? Is it a revolutionary improvement (or) a significant enough evolutionary• improvement that it will have a market advantage over the existing technology? Has a patent and prior art search been conducted and is it patentable? Or• do you have the marketing muscle (e.g., money and distribution) to sell an unprotected product? Are functional alternatives to the device readily available?• Has it been prototyped and can it be demonstrated?•
Relevant Topics utsttm.org 21 The Inventor’s Handbook of Technology Transfer utsttm.org 21 Can others make claims against the title (e.g., former employers)?• Will customers pay a premium for the product?• Can it be manufactured at a reasonable cost?• Does it need regulatory approval and how long is this expected to take?• If you intend to make it yourself, can it be a ‘stand-alone’ product?• If you want to license it, can it be integrated into an existing product line?• Is the current overall market category significant in terms of absolute• money? What market share percentage can it hope to capture, and in what time• period? Is the market growing?• Are you willing to stick with it for years?• Are you willing to invest your own money or is there advance backing?• There is no fixed formula for inventing or business development. Instead, a well balanced mixture of careful preparation, competency, and determination will triumph. The more positive the answers become, the greater the likelihood of success. ASSESSMENT OF AN INVENTION DISCLOSURE How does STTM assess invention disclosures? Intellectual property is an asset to be developed, maintained, and protected, not unlike land, equipment, and facilities. By protecting it appropriately, it can return value and advantages to its owner(s). Licensing specialists at STTM examine each invention disclosure to assess, among other things, the novelty of the invention, competing technologies, the ability to protect and market potential products or services, relationship to related intellectual property, size and growth potential of the relevant market, amount of time and money required for further development, and pre-existing rights associated with the research that led to the discovery. This assessment may also include consideration of whether the discovery can be the basis for a new business start-up.
South Texas Technology Management Relevant Topics 22 South Texas Technology Management Relevant Sections 22 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 STTM requires each licensing associate to complete an Invention Analysis Form (IAF), which includes an analysis of the patent and licensing landscapes for each inventiondisclosed.AcompletedIAFwilldetailthemarketnicheforthetechnology, potential licensees in the industry, and an overview of the known prior art. IIPAC The Institutional Intellectual Property Advisory Committee (IIPAC) is composed of faculty members from STTM served institutions, and provides assistance to STTM staff during invention assessment. IIPAC members have experience in the business of technology commercialization and, and as such, offer both professional scientific and business advice to STTM. IIPAC evaluation often identifies deficiencies in early stage inventions that hinder commercialization. Presently, no resources are available to address such shortcomings. However, efforts are underway to create an IIPAC fund, through which inventors would be offered a small budget to correct deficiencies, and thereby advance the invention towards the market. If my personal conviction is that all IP should be licensed non-exclusively to all potential users for the public good, will the University honor my request? STTM will work with you to develop an appropriate commercialization strategy for each invention. Some technologies lend themselves to non-exclusive licensing (licensing to multiple third parties), while others can only reach the commercial marketplace, and therefore the public, via an exclusive license. Inventor’s preference will be accommodated to the extent possible, in consideration of the practical benefit for the general public, and consistent with federal granting agency policies and other obligations. How do we decide whether to commercialize with a traditional or an “open source” license for software? Generally, STTM supports university software developers who choose to release their programs through open source mechanisms. However, there are liability issues that you should be aware of before working with open source. STTM can help ensure that you do not expose UT to undue liability by releasing software under an open source license. Regardless of how you release the software, always
Relevant Topics utsttm.org 23 The Inventor’s Handbook of Technology Transfer utsttm.org 23 include a copyright notice, a disclaimer of liability and the source of funds and grant number that supported the research. For advice, call STTM at (210) 567- 9208. Can I incorporate “open source” components in software for commercial distribution? At the proof-of-concept stage, most university software includes open source components. It is important to keep track of which components are embedded in the source code, and what software licenses are associated with those components. You must replace certain open source code with your original code before commercial release of the software. Is ownership of an invention ever reassigned to an inventor? If STTM decides not to elect title, or abandons patents or patent applications directed, to an invention, the inventor’s institution may transfer invention rights to the inventor(s). Such rights are subject to research sponsor obligations, and require a continuing right for UT to practice the invention, recoup expenses, and share in any subsequent economic benefit. Upon transfer of rights, the inventor becomes responsible for payment of all further development, patenting, and marketing expenses. Additional university resources may not be used for further development, and conflict of interest issues must be disclosed and managed by the inventors. PATENTS AND OTHER LEGAL PROTECTION What is a patent? In the U.S., a patent gives the holder the right, for a period of 20 years from the application filingdate,toexcludeothersfrommaking,using,selling,offeringtosell, and importing any patented invention. Thus, a patent does not necessarily provide theholderanyaffirmativerighttopracticeatechnology.Instead,itprovidestheright to exclude others from practicing it. A patent application includes: (1) a narrative on the invention, i.e., the specification, comprising background information on the state-of-the-art, general and detailed descriptions of the invention, and illustrative experiments, i.e., examples, and (2) claims. Patent claims are the legal definition
South Texas Technology Management Relevant Topics 24 South Texas Technology Management Relevant Sections 24 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 of, and provide the limits for, an invention. For comprehensive information, visit the United States Patent and Trademark Organization (USPTO) online at http:// www.uspto.gov. What is the United States Patent and Trademark Office (USPTO)? The USPTO is the federal agency, organized under the Department of Commerce that administers patents on behalf of the government. The USPTO employs patent examiners skilled in all technical fields to examine patent applications. The USPTO also issues federal trademark registrations. What type of subject matter can be patented? Patentablesubjectmatterincludesnewandusefulprocess,machine,manufacture, or composition of matter, or any new and useful improvement thereof. Methods are patentable, including methods of making compositions, methods of making articles, and even methods of performing business. A patent cannot be obtained upon a mere idea or suggestion. For example, a patent can be granted for a new machine, but not for the idea or suggestion of the new machine. A complete description of the actual machine is required. Can someone patent a naturally occurring substance? No. A natural substance that has never before been isolated or known may be patentable in some instances, but only in its isolated form (since the isolated form had never been known before). A variation of a naturally occurring substance may be patentable if an inventor is able to demonstrate substantial advantages of using the variant. In general, a biological target or physiological pathway is not patentable, however, a modulator of a target or pathway (e.g., a substance, device, etc. that affects the behavior of a target or pathway) is patentable in terms of a new composition of matter or method of treatment. Can bio-markers be patented? What special considerations apply? Biomarkers — molecular indicators directly and highly predictive of a biological process—can be valuable intellectual property. Pharmaceutical companies are very interested in markers and assays useful for selecting and enrolling patients
Relevant Topics utsttm.org 25 The Inventor’s Handbook of Technology Transfer utsttm.org 25 who will respond favorably to a drug in clinical trials. However, the patenting of biomarkers and their uses is complex and the body of case law is relatively new. A patent on a biomarker or biomarker panel may not necessarily cover all uses of the markers. Each marker and its uses claimed in a patent application must be checked against prior literature and patents to confirm novelty. The commercial value of an assay patent can be compromised if it does not cover other equally predictive biomarkers. Consequently, well-designed studies, comprehensive evaluation of all potential markers, and consideration of commercial assay format can all enhance the probability of a sound proprietary position and successful commercial outcome. What is the definition of an inventor on a patent and who determines the inventors for a patent application? UnderU.S.law,aninventorisapersonwhotakespartintheconceptionoftheideas embodied by the claims of a patent. Thus, inventorship of a patent application may change as patent claims are added, deleted, or amended during prosecution. An employer or person who provides money to build or practice an invention is not an inventor. Inventorship bears a higher standard relative to authorship; thus a co-author of a related publication is not necessarily an inventor. Inventorship may require an intricate legal determination, which can be performed by the patent attorney prosecuting the application. Who is responsible for patenting? OnceSTTMdeterminesthatacertaintechnologyhascommercialpotentialsufficient to justify the initial cost to file a patent, STTM hires outside patent counsel to file a provisional patent application (described more fully below). Inventors work with counsel in drafting the patent applications, responses, and other communications to patent offices. STTM case managers and in-house attorneys will help with the management and oversight of the outside patent counsel. What is the patenting process? Patent applications are drafted by a patent attorney or a patent agent (a non- attorney with a science education licensed to practice by the USPTO). You will be expected to provide a technical description of the invention, which is analogous
South Texas Technology Management Relevant Topics 26 South Texas Technology Management Relevant Sections 26 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 to a journal article, and includes materials, methods, and results. Key references directedtotheheartoftheinventionshouldbeincluded,butextraneousreferences add to prosecution expense, and may distract the examiner. The patent attorney will ask you to review an application before it is filed and will also ask you questions about inventorship of the application claims. At the time an application is filed, the patent attorney will ask the inventor(s) to sign an Inventor’s Declaration and an Assignment, which evidences the inventor’s duty to assign the patent to UT. After some time, up to 3 years, the patent attorney will receive written notice from the USPTO as to whether the application and its claims have been accepted in the form as filed. More often than not, the USPTO rejects the application because certain formalities need to be clarified, sufficient evidence for a claim was not provided in the specification, or the claims are not patentable over the “prior art” (anything that workers in the field have made or publicly disclosed in the past, including scientific literature, books, newspapers, patents and published patent applications, and any other form of public information). This notice sent by the USPTO is referred to as an office action. If the application is rejected, the patent attorney must file a written response, usually within three to six months. Generally the attorney may amend the claims and/or point out why the USPTO’s position is incorrect, but new material may not be added to the specification. This procedure is referred to as patent prosecution. Often it will take two office actions and two responses by the patent attorney— and sometimes more—before the application is resolved. The resolution can take the form of a notice that the application is allowable; in other words, the USPTO agrees to issue a patent. During this process, input from the inventor(s) is often needed to confirm the patent attorney understands the technical aspects of the invention and/or the prior art cited against the application. Patent applications are held confidential until published, approximately 18 months after initial filing. What is a provisional patent application and why does STTM file one first? The provisional patent application has fewer requirements than a regular, or utility, patent application. It must contain a correct list of inventors and a fully enabling specification, that is, a description of the invention sufficient for others in the field
Relevant Topics utsttm.org 27 The Inventor’s Handbook of Technology Transfer utsttm.org 27 to make and use it. Provisional applications are offered by the USPTO, but afford protection of patent rights worldwide. Provisional applications are not examined, thus prosecution is delayed. By filing a provisional patent application, we receive the benefit of an early filing date, i.e., the priority date, and delay the patent prosecution process and its attendant costs by up to one year. Additionally, because the provisional patent application has fewer formal requirements than a utility patent application—for example, claims do not have to be filed with a provisional application—the filing fees and attorney fees are smaller. We, therefore, are provided with one year to market an invention without sacrificing patent rights and prior to progressively escalating patent prosecution costs. Upon filing the provisional, the inventor is free to publish without loss of patent rights. Even though the inventor has a green light to publish, it would be prudent for the inventor to discuss any publication with STTM case manager to ensure that the publication does not contain additional inventive information. When does STTM file a regular (utility) patent application? If STTM, working with the inventor, determines that the invention has sufficient commercial potential, the provisional is converted to a utility patent application before the one year anniversary of the priority date. At this stage, claims must be written that define the metes and bounds of the invention, and the information contained in the provisional application must be brought into compliance with the formal requirements of a utility application. Further, the inventors must sign a declaration by which they declare that they are the sole inventors of the invention described in the patent application, understand the contents of the patent application, including the claims, and have properly declared their residence, mailing address, and citizenship. By signing this formal declaration, the inventors also acknowledge their ongoing duty to disclose information that may be relevant to the patentability of the invention, such as published articles or issued patents. By the time the utility application has been filed, the inventors must have signed a formal assignment document that conveys their rights in the application to the university.
South Texas Technology Management Relevant Topics 28 South Texas Technology Management Relevant Sections 28 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 What’s different about foreign patent protection? Foreignpatentprotectionissubjecttothelawsofeachindividualcountry,although, in a general sense, the process works much the same as it does in the United States. However, in the U.S., patent rights are conferred to the first to invent, as evidenced by lab notebooks or other documentation; elsewhere, patent rights are conferred to the first to file. Is there such a thing as an international patent? No, an international patent does not exist. However, an international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for most industrialized nations. For U.S. applicants, a PCT application is generally filed one year after the corresponding U.S. application (either provisional or regular) has been submitted. The PCT application must later be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months from the earliest claimed filing date. PCT provides two advantages. First, it delays the need to file costly foreign applications until the 30-month date, often after an applicant has had the opportunity to further develop, evaluate and/or market the invention for licensing. Second, the PCT offers the opportunity for a preliminary examination, which may simplify patent prosecution by having a single examiner speak to the patentability of the claims. An important international treaty called the Paris Convention permits a patent application filed in a second country (or a PCT application) to claim the benefit of the filing date of an application filed in a first country. However, pursuant to this treaty, these so-called “convention applications” must be filed in foreign countries (or as a PCT) within one year of the first filing date of the U.S. application. What is the timeline of the patenting process and resulting protection? Currently, the average U.S. utility patent application is pending for about two years, though inventors in the biotech and computer fields should plan on a longer waiting period. From provisional patent application to the issuance of a patent, the inventor should anticipate about a four-year process. Once issued, a patent expires twenty years after the priority date (up to 21 years if the priority
Relevant Topics utsttm.org 29 The Inventor’s Handbook of Technology Transfer utsttm.org 29 date is taken from a provisional application). However, during the twenty-year period, maintenance fees must be paid three times at different intervals in order to maintain the patent. If a maintenance fee is not paid on time, the patent will be considered legally abandoned. The fee gets larger as the patent gets older. Why does STTM protect some intellectual property through patenting? Patent protection is often a requirement of a potential commercialization partner (licensee) because it can protect the commercial partner’s often sizable investment required to bring the technology to market and offers the licensee a monopoly market position for a limited period of time. Due to their expense, patent applications are not appropriate for all university intellectual property. STTM carefully reviews the commercial potential of an invention before investing in the patent process. However, because initiating a patent filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible. In general, if an invention can be predicted to generate revenue equal to or greater than the associated expenses, STTM will file an application or continue prosecution. Who decides what gets protected? STTM and the inventor(s) consider relevant factors in making recommendations about filing patent applications. STTM makes financial decisions based on sound economic analysis and proceeds with projects that can generate a positive net present value (NPV). Ultimately, the assistant vice president for technology transfer makes the final decision as to whether to file a patent application or seek another form of protection. What does it cost to prepare, to file, and to obtain a patent? Expect the cost of drafting and filing a provisional patent application to be in the low-thousands of dollars; a regular U.S. application can cost up to $10,000; and a PCT application may cost up to $15,000. To obtain an issued patent may require an additional $5,000 to $15,000 for patent prosecution. Filing and obtaining issued patents in other countries may cost $20,000 or more per country. Also, once a patent is issued in the U.S or in foreign countries, certain maintenance fees are required to keep the patent alive.
South Texas Technology Management Relevant Topics 30 South Texas Technology Management Relevant Sections 30 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 What if I created the invention with someone from another institution or company? If you created the invention under a contract with a company, the case manager will need to review that contract to determine ownership and other rights and to determine the appropriate next steps. If the invention was created with collaborators from another institution, the case manager will work to implement an “inter-institutional” agreement (“IIA”) 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. Co- owners of a patent share equal and undivided rights to the patent, thus, absent an IIA, either party may use or license the rights without regard to the other party. Terms for invention management associated with Veterans Administration (VA) contributions are subject to a prior agreement. Please call attention to any VA collaborators or other VA involvement, including work without compensation. Will STTM initiate or continue patenting activity without an identified licensee? Upon the determination that an invention has sufficient commercial potential, i.e., a positive NPV, STTM will accept the risk of filing a patent application before a licenseehasbeenidentified.Afteruniversityrightshavebeenlicensedtoalicensee, the licensee generally assumes the patenting expenses. At various decision points during patent prosecution, the commercial potential of each patent is reassessed and, if found wanting, patent prosecution may be abandoned. What can the inventor do to help in the patent process? Intellectual property developed by university faculty, staff, or students represents a significant opportunity for academic recognition and financial reward for the institution and for inventors. Properly organized and devised laboratory notebooks and invention disclosures provide a “trail of evidence” to support the invention and contribution to claims. Laboratory notebooks need not be kept in a particular format. However, the following standards present a reliable format to prevent claims of fraudulent insertion or deletion of entries.
Relevant Topics utsttm.org 31 The Inventor’s Handbook of Technology Transfer utsttm.org 31 Use bound notebooks with pre-numbered pages. Sign your full name and date• every page. Use ink when recording ideas and experiments. Use a single strike if anything• is crossed out and initial these “strike-outs.” Entries should always be made in the notebook without skipping pages or• leaving empty spaces. Draw a line through any unused portion and initial and date the marking. Initial across the edge of auxiliary material such as figures and computer• printouts that are pasted into the notebook. Do not place results printed on thermal paper in your notebook, as it fades• over time. Copy the data and then place it in the notebook. Digital records of results can be submitted as evidence of an invention, but• it is highly recommended that these records be supported with written documentation because courts do not favor digital records. Label ideas or proposals to differentiate them from work actually performed.• Have a witness who understands the content of the recent work sign the• notebook pages on a frequent (at least weekly) basis. The witness should not be a direct contributor to the work being reported. Try to preserve the “first samples” of new materials produced by a new• method. Retain records of purchase orders for components required for testing.• Submitting an invention disclosure to STTM provides support for determining the actual date of an invention. By disclosing the initial conception to our office we will have a signed and dated document that is an official record of the university. It is important to note you can contact our office immediately after the initial conception and before reduction to practice. The sooner we receive news of inventions, even if only a conception, the better we can understand your interests and prepare for the eventual marketing. What is a copyright and how is it useful? Copyright is a form of protection provided by the laws of the United States to the creators of “original works of authorship,” including, literary, dramatic, musical, artistic, and certain other intellectual works as well as computer software. This
South Texas Technology Management Relevant Topics 32 South Texas Technology Management Relevant Sections 32 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 protection is available to both published and unpublished works. The Copyright Act generally gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc. In some instances, STTM sometimes registers copyrights, but generally not until a commercial product faces market competition. How do I represent a proper University copyright notice? Althoughcopyrightableworksdonotrequireacopyrightnotice,wedorecommend that you use one. For works owned by the university, use the following template: Copyright 2009, The University of Texas at Institution (“U. T. Institution“). All rights reserved. By using this software the USER indicates that he or she has read, understood and will comply with the following: U. T. Institution hereby grants USER permission to use, copy, modify, and distribute thissoftwareanditsdocumentationforanypurposeandwithoutfee,providedthat a full copy of this notice is included with the software and its documentation. Titletocopyrighttothissoftwareanditsassociateddocumentationshallatalltimes remain with U. T. Institution. No right is granted to use in advertising, publicity or otherwise any trademark, service mark, or the name of U. T. Institution. This software and any associated documentation are provided “as is,” and U. T. INSTITUTION MAKES NO REPRESENTATIONS OR WARRANTIES, EXPRESSED OR IMPLIED, INCLUDING THOSE OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT USE OF THE SOFTWARE, MODIFICATIONS, OR ASSOCIATED DOCUMENTATION WILL NOT INFRINGE ANY PATENTS, COPYRIGHTS, TRADEMARKS OR OTHER INTELLECTUAL PROPERTY RIGHTS OF A THIRD PARTY. U. T. Institution, The University of Texas System, its Regents, officers, and employees shall not be liable under any circumstances for any direct, indirect, special, incidental, or consequential damages with respect to any claim by USER or any third party
Relevant Topics utsttm.org 33 The Inventor’s Handbook of Technology Transfer utsttm.org 33 on account of or arising from the use, or inability to use, this software or its associated documentation, even if U. T. Institution has been advised of the possibility of those damages. Submit commercialization requests to: STTM, ATTN: Technology Licensing Specialist, 3463 Magic Drive Ste 350, San Antonio, Texas, 78229. How can I learn more about University copyright policies? In general, UT’s copyright policy is that the presumption of ownership for scholarly or educational material lies with the author. Important exceptions to this policy concern copyrightable works pertaining to inventions http://www. utsystem.edu/BOR/rules/90000Series/90101.pdf. What is a trademark or service mark and how is it useful? A trademark includes any word, name, symbol, device, or combination, that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or combination that is used, or intended to be used, in commerce to identify and distinguish the services of one provider from those of others, and to indicate the source of the services. What is trademark registration? TrademarkregistrationisaprocedureinwhichtheUSPTOprovidesadetermination of rights based upon legitimate use of the mark. However, it is not necessary to register a trademark or service mark to prevent others from infringing upon the trademark. Trademarks generally become protected even before registration. A trademark exists as soon as it is adopted by an organization and used in commerce with the letters TM used consistently to signify that a particular mark (word, words or logo) is a trademark. With a federal trademark registration, the registrant is presumed to be entitled to use the trademark throughout the United States for the goods or services for which the trademark is registered. Each state also has a trademark registration process. Once a trademark is registered, the owner can begin to use the ® symbol after the mark.
South Texas Technology Management Relevant Topics 34 South Texas Technology Management Relevant Sections 34 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 START-UP COMPANIES What is a start-up and why choose to create one? A start-up is a new business entity formed to commercialize one or more related intellectual properties. Forming a start-up business is an alternative to licensing the IP to an established business. A few key factors when considering a start-up company are: Developmentrisk(oftenlargecompaniesinestablishedindustriesareunwilling• to take the risk of early stage technology development); Development costs versus investment return (can the investors obtain their• needed rates of return); Potential for multiple products or services from the same technology (few• companies survive on one product alone); Sufficiently large competitive advantage and target market; and• Potential revenues sufficient to sustain and grow a company.• STTM can help evaluate these and other factors. Who decides whether to form a start-up? The choice to establish a new company for commercializing IP is a joint decision made by STTM and the inventors. What assistance and resources are available to the inventor? STTM assistance to faculty inventors includes: Working with the inventor(s) to identify, develop, and maintain a protectable• patent portfolio. In certain cases, STTM will use internal resources to secure intellectual property rights, typically patents; Assistingwithstrategicplanningandthecreationofacommercialdevelopment• plan that serves as a tactical roadmap for the start-up and a document for acquiring start-up capital. In some cases, STTM is able to access additional human and financial resources for the start-up company to build prototypes, do market assessment, or augment interim management to get the business started and on a clear development path;
Relevant Topics utsttm.org 35 The Inventor’s Handbook of Technology Transfer utsttm.org 35 Providing referrals for corporate attorneys and accountants who specialize in• company formation; and Providing introductions to the private equity community, business incubators,• and other sources of technical and managerial assistance and capital. STTM case managers serve as advisors and resource locators to help fill the gap between the technology and the formation of a start-up. Their responsibilities may include helping inventors develop a protectable patent portfolio, making introductionstoprospectivemanagementpersonnel,theprivateequitycommunity and business incubators, reviewing business plans, and providing referrals to experts to work on strategic issues. What role does an inventor usually play in a company? Universityfacultytypicallyserveastechnologyconsultant,advisor,orinsomeother technical developmental capacity. Rarely do faculty choose to leave the university and join the start-up. In many cases, the faculty member’s role may be suggested by the start-up investors and management team, based on the inventor’s expertise and interests. As the company matures, and additional investment is required, the inventor’s role may change. Faculty entrepreneurs must obtain the necessary approvals according to university conflict-of-interest policy and procedures. Student inventors and post-docs may choose to join the start-up upon graduation, but rarely have the experience or business skills to serve as the company’s sole management. The participation of seasoned entrepreneurial management is one of STTM’s keys when assessing a technology for start-up possibilities. How much of my time and effort will it take? Starting a company requires a considerable amount of time and effort. Until the start-up team is identified and engaged, the faculty member will need to champion the formation effort. After the team is in place, effort is required for investor discussions, formal responsibilities in or with the company, and university processes such as conflict of interest reviews. Does the university share equity in the company? Yes, STTM will accept equity in lieu of cash as financial remuneration for a license.
South Texas Technology Management Relevant Topics 36 South Texas Technology Management Relevant Sections 36 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 Stock will be sold in an orderly fashion as soon as it is possible to sell it in the public market (i.e., once it is publicly traded and/or any lock-out period has expired). What legal assistance is needed in creating a start-up? Inadditiontocorporatecounsel,thestart-upmayhaveitsownintellectualproperty counsel to assist with corporate patent strategy, especially if the company will be involved in a patent-rich area. Also, it is wise for inventors to have agreements regarding their roles with the start-up reviewed by their own counsel to ensure that all personal ramifications—including taxation and liabilities—are clearly understood. MARKETING TO FIND A LICENSEE How does STTM market my inventions? Licensing and marketing associates use many sources and strategies to identify potential licensees and market inventions. Very often existing relationships of the inventors, STTM staff, and other researchers are useful in marketing an invention. Market research can also assist in identifying prospective licensees. In addition, we also examine other complementary technologies and agreements to assist our efforts. We use our website to post inventions, leverage conferences and industry events, and make direct contacts. Faculty publications and presentations are excellent marketing tools. Doesn’t marketing compromise the confidentiality of my invention? No. STTM will release a non-confidential abstract of your invention to potential licensees, as well as previous related papers and the background of the inventor(s). Results can be presented without compromising patent rights, i.e., explain what an invention does, but not how it does it. If a company demonstrates interest, STTM will obtain a confidential disclosure agreement (CDA) so that we can freely explain to the company how the invention works. How are most licensees found? Studies have shown that 70% of academic licenses originated from an inventor contact. Thus research and consulting relationships are often a valuable source
Relevant Topics utsttm.org 37 The Inventor’s Handbook of Technology Transfer utsttm.org 37 for licensees. Licensees are also identified through existing relationships of STTM staff. We attempt to broaden these relationships through contacts obtained from website posting inquiries, market research, industry events, and the cultivation of existing business and research relationships. How long does it take to find a potential licensee? It can take months and sometimes years to locate a potential licensee, depending on the attractiveness of the invention and the size and intensity of the market. Most university inventions are in an early stage of the development and thus require substantial commercialization investment, making it difficult to attract a licensee. How can I assist in marketing my invention? Your active involvement can dramatically improve the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies. Once interested companies have been identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful tech transfer results are obtained when the inventor and the case manager work together as a team to market and license the technology. Can there be more than one licensee? Yes, an invention can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies, each for a unique field-of- use (application) or geographic area. LICENSE AGREEMENTS What is a license? A license is a permission for access to intellectual property that the owner or controller grants to another party. Usually the licensed IP is one or more patents, but it can also be know-how, trademarks, or copyrighted materials.
South Texas Technology Management Relevant Topics 38 South Texas Technology Management Relevant Sections 38 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 What is a license agreement? License agreements describe the rights and responsibilities accepted by the licensor and licensee related to the access to, and utilization of, intellectual property. Financial consideration for the grant of IP rights typically includes fees due at license execution (up-front fees), payments made upon achieving certain mutually determined performance objectives (milestone payments), and royalties which are periodic payments based on a percentage of the product’s sales. Also, university license agreements stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good. If the licensee fails to meet important terms and conditions defined in the license, the agreement may be terminated by the university and the university would be free to license the invention to another company. Licensees may terminate at their discretion. How is a business chosen to be a licensee? A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established business with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a start-up company is a better option. Typically, a university does not have multiple potential licensees bidding on an invention. Are all license agreements the same? No. The breadth and application of inventions lend themselves to different risk and commercial pathways; licenses must reflect these conditions. For example, licenses may be exclusive (to one company) or non-exclusive (more than one company receives rights). Given company capabilities, the license could be broad or restricted to specific fields or territories. What can I expect to gain if my IP is licensed? Per Regent policy, a share of any financial return from a license is provided to the inventor(s). Most inventors enjoy the satisfaction of knowing their inventions are being deployed for the benefit of the general public. As well, new and enhanced relationships with businesses, which may include access to industry resources,
Relevant Topics utsttm.org 39 The Inventor’s Handbook of Technology Transfer utsttm.org 39 facilities, and expertise, are another outcome that can augment one’s teaching, research, and consulting. What is the relationship between an inventor and a licensee and how much of my time will it require? Most licensees require the assistance of the inventor to facilitate their commercialization efforts. This assistance can range from infrequent, informal contacts to a consulting relationship separate from the license agreement. Working with a new business start-up can require substantially more time, depending on your role in or with the company and your continuing role within the University. Your participation with a start-up is governed by conflict of interest policies and the approval of your supervisor. STTM structures licenses so as to restrict access of licensees to faculty to a reasonable degree. What other types of agreements and considerations apply to tech transfer? A• Confidential Disclosure Agreement (CDA) is a document that, when signed, will allow one or both parties to discuss their confidential information, including their work and ideas, with other interested parties. It legally binds those parties to keep the information confidential for a period of time and not to disclose it to third parties. A one-way confidentiality agreement allows one party to disclose to another. A two-way, or mutual, confidentiality agreement allows both parties to disclose confidential information to each other. STTM will assist in determining which document best suits your specific needs and prepare and execute the appropriate type of CDA. Only certain designated officers of each institution have the delegated authority to execute these agreements. A CDA is also referred to as a nondisclosure agreement (NDA). A• Materials Transfer Agreement (MTA) is used for incoming and outgoing materials at the university and administered by the institution sponsored programs office. These agreements describe the terms under which university researchers and outside researchers may share materials, typically for research or evaluation purposes. Intellectual property rights can be endangered if materials are used without a proper MTA. Researchers may be asked to sign an MTA as evidence that they have read the agreement and will comply with
South Texas Technology Management Relevant Topics 40 South Texas Technology Management Relevant Sections 40 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 its terms. However, since an MTA is a binding contract, the official signature must come from a delegated institution representative. An• Inter-Institutional Agreement(IIA) describes the terms under which two or more institutions (e.g., two universities) will collaborate to assess, protect, market, license, and share in the revenues received from licensing jointly owned intellectual property. An• Option Agreement or Option Clause within a research agreement describes the conditions under which the university preserves the opportunity for a third party to negotiate a license for intellectual property. Option clauses are often provided in a Sponsored Research Agreement to corporate research sponsors or are entered into with third parties wishing to evaluate the technology prior to entering into a license agreement. A• Sponsored Research Agreement describes the terms under which sponsors provide research support to the University. These agreements are negotiated by each institution’s Office of Sponsored Programs. THE LICENSING AGREEMENT AND STRATEGY STTM Licensing Strategy STTM seeks to patent and license technologies that have an industrial application. STTM and all university technology transfer offices have a mandate under the Bayh-Dole Act to manage the intellectual properties that result from federally funded research. STTM seeks to license these technologies to private companies willing and able to produce a product using the licensed intellectual property in exchange for royalties and other consideration. Although STTM has a duty to manage technologies from the four consortium universities, STTM does so at its discretion. That is, STTM will seek to invest time and resources managing an invention only if the invention has a reasonable chance for “success” (sometimes defined broadly). Bedrock Principles include: Support for and service to faculty.• STTM exists to serve and support the work of university faculty members. Our goal is to be a resource that university faculty can trust and rely on to protect their valuable IP so they can concentrate on teaching and training students,
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH
STTM_IH

Recommended

protecting innovation
protecting innovationprotecting innovation
protecting innovationRazwand
 
Patent Database Mining and Patent Information Management
Patent Database Mining and Patent Information Management Patent Database Mining and Patent Information Management
Patent Database Mining and Patent Information Management spkowalski
 
Social, Political and Legal Aspects of Text and Data Mining (TDM)
Social, Political and Legal Aspects of Text and Data Mining (TDM)Social, Political and Legal Aspects of Text and Data Mining (TDM)
Social, Political and Legal Aspects of Text and Data Mining (TDM)Richard Smith-Unna
 
Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research.
Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research. Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research.
Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research. Professor Jon Cavicchi, UNH School of Law
 
Demystifying Patents
Demystifying PatentsDemystifying Patents
Demystifying PatentsMacMillan, Sobanski and Todd, LLC.
 
Ppt3 181219044715
Ppt3 181219044715Ppt3 181219044715
Ppt3 181219044715erlambang00
 
RTO Innovation: Where are the enablers and who are the actors
RTO Innovation: Where are the enablers and who are the actorsRTO Innovation: Where are the enablers and who are the actors
RTO Innovation: Where are the enablers and who are the actorsDigital Capability
 
taste of the town flyer
taste of the town flyertaste of the town flyer
taste of the town flyerEmily Karlichek
 

Recommended

protecting innovation
protecting innovationprotecting innovation
protecting innovationRazwand
 
Patent Database Mining and Patent Information Management
Patent Database Mining and Patent Information Management Patent Database Mining and Patent Information Management
Patent Database Mining and Patent Information Management spkowalski
 
Social, Political and Legal Aspects of Text and Data Mining (TDM)
Social, Political and Legal Aspects of Text and Data Mining (TDM)Social, Political and Legal Aspects of Text and Data Mining (TDM)
Social, Political and Legal Aspects of Text and Data Mining (TDM)Richard Smith-Unna
 
Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research.
Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research. Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research.
Shift This!: A Paradigm for Integrating Law School & Law Firm Patent Research. Professor Jon Cavicchi, UNH School of Law
 
Demystifying Patents
Demystifying PatentsDemystifying Patents
Demystifying PatentsMacMillan, Sobanski and Todd, LLC.
 
Ppt3 181219044715
Ppt3 181219044715Ppt3 181219044715
Ppt3 181219044715erlambang00
 
RTO Innovation: Where are the enablers and who are the actors
RTO Innovation: Where are the enablers and who are the actorsRTO Innovation: Where are the enablers and who are the actors
RTO Innovation: Where are the enablers and who are the actorsDigital Capability
 
taste of the town flyer
taste of the town flyertaste of the town flyer
taste of the town flyerEmily Karlichek
 
BBF | Body Beauty Fitness / 2010
BBF | Body Beauty Fitness / 2010BBF | Body Beauty Fitness / 2010
BBF | Body Beauty Fitness / 2010Anna Perova
 
Fernando Lugo
Fernando LugoFernando Lugo
Fernando LugoGUILHERME FRANÇA
 
Les Couleurs
Les CouleursLes Couleurs
Les CouleursGeorge Martin
 
The Linkedin Factor 12-02-2015
The Linkedin Factor 12-02-2015The Linkedin Factor 12-02-2015
The Linkedin Factor 12-02-2015Franco Giacomozzi
 
تفسير حدائق الروح والريحان في روابي علوم القرآن - المجلد (9)
تفسير حدائق الروح والريحان في روابي علوم القرآن - المجلد (9)تفسير حدائق الروح والريحان في روابي علوم القرآن - المجلد (9)
تفسير حدائق الروح والريحان في روابي علوم القرآن - المجلد (9)قال تعالى: "كتاب أنزلناه إليك مبارك ليدبروا آياته وليتذكر أولو الألباب".
 
Plongée à nouméa !!!
Plongée à nouméa !!!Plongée à nouméa !!!
Plongée à nouméa !!!Denis Papy
 
2016 Resume
2016 Resume2016 Resume
2016 ResumeIan Bagwell
 
A caracteristicas del estilo barroco
A caracteristicas del estilo barrocoA caracteristicas del estilo barroco
A caracteristicas del estilo barrocomcjefre
 
Bai giang ms word [chuong 03]
Bai giang ms word [chuong 03]Bai giang ms word [chuong 03]
Bai giang ms word [chuong 03]Võ Tâm Long
 
Bai tap thuc hanh ms word 2007
Bai tap thuc hanh ms word 2007Bai tap thuc hanh ms word 2007
Bai tap thuc hanh ms word 2007Võ Tâm Long
 
Ot lstartupguide
Ot lstartupguideOt lstartupguide
Ot lstartupguidealiaalistartup
 
Inventors handbook presentation1
Inventors handbook presentation1Inventors handbook presentation1
Inventors handbook presentation1Kay Marlow
 
What to know if it is your first rodeo in patent monetization?
What to know if it is your first rodeo in patent monetization?What to know if it is your first rodeo in patent monetization?
What to know if it is your first rodeo in patent monetization?Dipanjan "DJ" Nag
 
Advancing Global Innovation: The Role of PCT Practice and Strategy
Advancing Global Innovation: The Role of PCT Practice and Strategy Advancing Global Innovation: The Role of PCT Practice and Strategy
Advancing Global Innovation: The Role of PCT Practice and Strategy spkowalski
 
Technology Transfer for Knowledge Translation Practitioners
Technology Transfer for Knowledge Translation PractitionersTechnology Transfer for Knowledge Translation Practitioners
Technology Transfer for Knowledge Translation PractitionersJennifer Flagg
 
Technology Asessment & Forecasting.pptx
Technology Asessment & Forecasting.pptxTechnology Asessment & Forecasting.pptx
Technology Asessment & Forecasting.pptxMarty Kaszubowski
 
Patent Licensing and Valuation Tips
Patent Licensing and Valuation TipsPatent Licensing and Valuation Tips
Patent Licensing and Valuation Tipscaparra
 
Research and Types
Research and TypesResearch and Types
Research and TypesAnwar Munjewar
 
Bashar H. Malkawi, Knowledge management research and practice
Bashar H. Malkawi, Knowledge management research and practiceBashar H. Malkawi, Knowledge management research and practice
Bashar H. Malkawi, Knowledge management research and practiceBashar H. Malkawi
 
Patentability Search- Importance and How to Do Patentability Search
Patentability Search- Importance and How to Do Patentability SearchPatentability Search- Importance and How to Do Patentability Search
Patentability Search- Importance and How to Do Patentability SearchTT Consultants
 
Online course Technology Transfer and Research Commercialization
Online course Technology Transfer and Research CommercializationOnline course Technology Transfer and Research Commercialization
Online course Technology Transfer and Research CommercializationThe Transfer Institute
 
Technology Transfer in an Emerging Economy
Technology Transfer in an Emerging EconomyTechnology Transfer in an Emerging Economy
Technology Transfer in an Emerging EconomyMarcel Mongeon
 

More Related Content

Viewers also liked

BBF | Body Beauty Fitness / 2010
BBF | Body Beauty Fitness / 2010BBF | Body Beauty Fitness / 2010
BBF | Body Beauty Fitness / 2010Anna Perova
 
The Linkedin Factor 12-02-2015
The Linkedin Factor 12-02-2015The Linkedin Factor 12-02-2015
The Linkedin Factor 12-02-2015Franco Giacomozzi
 
Plongée à nouméa !!!
Plongée à nouméa !!!Plongée à nouméa !!!
Plongée à nouméa !!!Denis Papy
 
A caracteristicas del estilo barroco
A caracteristicas del estilo barrocoA caracteristicas del estilo barroco
A caracteristicas del estilo barrocomcjefre
 
Bai giang ms word [chuong 03]
Bai giang ms word [chuong 03]Bai giang ms word [chuong 03]
Bai giang ms word [chuong 03]Võ Tâm Long
 
Bai tap thuc hanh ms word 2007
Bai tap thuc hanh ms word 2007Bai tap thuc hanh ms word 2007
Bai tap thuc hanh ms word 2007Võ Tâm Long
 

Viewers also liked (10)

BBF | Body Beauty Fitness / 2010
BBF | Body Beauty Fitness / 2010BBF | Body Beauty Fitness / 2010
BBF | Body Beauty Fitness / 2010
 
Fernando Lugo
Fernando LugoFernando Lugo
Fernando Lugo
 
Les Couleurs
Les CouleursLes Couleurs
Les Couleurs
 
The Linkedin Factor 12-02-2015
The Linkedin Factor 12-02-2015The Linkedin Factor 12-02-2015
The Linkedin Factor 12-02-2015
 
تفسير حدائق الروح والريحان في روابي علوم القرآن - المجلد (9)
تفسير حدائق الروح والريحان في روابي علوم القرآن - المجلد (9)تفسير حدائق الروح والريحان في روابي علوم القرآن - المجلد (9)
تفسير حدائق الروح والريحان في روابي علوم القرآن - المجلد (9)
 
Plongée à nouméa !!!
Plongée à nouméa !!!Plongée à nouméa !!!
Plongée à nouméa !!!
 
2016 Resume
2016 Resume2016 Resume
2016 Resume
 
A caracteristicas del estilo barroco
A caracteristicas del estilo barrocoA caracteristicas del estilo barroco
A caracteristicas del estilo barroco
 
Bai giang ms word [chuong 03]
Bai giang ms word [chuong 03]Bai giang ms word [chuong 03]
Bai giang ms word [chuong 03]
 
Bai tap thuc hanh ms word 2007
Bai tap thuc hanh ms word 2007Bai tap thuc hanh ms word 2007
Bai tap thuc hanh ms word 2007
 

Similar to STTM_IH

Inventors handbook presentation1
Inventors handbook presentation1Inventors handbook presentation1
Inventors handbook presentation1Kay Marlow
 
What to know if it is your first rodeo in patent monetization?
What to know if it is your first rodeo in patent monetization?What to know if it is your first rodeo in patent monetization?
What to know if it is your first rodeo in patent monetization?Dipanjan "DJ" Nag
 
Advancing Global Innovation: The Role of PCT Practice and Strategy
Advancing Global Innovation: The Role of PCT Practice and Strategy Advancing Global Innovation: The Role of PCT Practice and Strategy
Advancing Global Innovation: The Role of PCT Practice and Strategy spkowalski
 
Technology Transfer for Knowledge Translation Practitioners
Technology Transfer for Knowledge Translation PractitionersTechnology Transfer for Knowledge Translation Practitioners
Technology Transfer for Knowledge Translation PractitionersJennifer Flagg
 
Technology Asessment & Forecasting.pptx
Technology Asessment & Forecasting.pptxTechnology Asessment & Forecasting.pptx
Technology Asessment & Forecasting.pptxMarty Kaszubowski
 
Patent Licensing and Valuation Tips
Patent Licensing and Valuation TipsPatent Licensing and Valuation Tips
Patent Licensing and Valuation Tipscaparra
 
Bashar H. Malkawi, Knowledge management research and practice
Bashar H. Malkawi, Knowledge management research and practiceBashar H. Malkawi, Knowledge management research and practice
Bashar H. Malkawi, Knowledge management research and practiceBashar H. Malkawi
 
Patentability Search- Importance and How to Do Patentability Search
Patentability Search- Importance and How to Do Patentability SearchPatentability Search- Importance and How to Do Patentability Search
Patentability Search- Importance and How to Do Patentability SearchTT Consultants
 
Online course Technology Transfer and Research Commercialization
Online course Technology Transfer and Research CommercializationOnline course Technology Transfer and Research Commercialization
Online course Technology Transfer and Research CommercializationThe Transfer Institute
 
Technology Transfer in an Emerging Economy
Technology Transfer in an Emerging EconomyTechnology Transfer in an Emerging Economy
Technology Transfer in an Emerging EconomyMarcel Mongeon
 
Martin Tto Best Practices Ver3
Martin Tto Best Practices Ver3Martin Tto Best Practices Ver3
Martin Tto Best Practices Ver3QRCE
 
TechTransfer Things To Know Rondaxe Drug Development Services.pdf
TechTransfer Things To Know Rondaxe Drug Development Services.pdfTechTransfer Things To Know Rondaxe Drug Development Services.pdf
TechTransfer Things To Know Rondaxe Drug Development Services.pdfVolfyreAmdbysuo
 
Rondaxe Offers the TechTransfer Protocol and Process.pdf
Rondaxe Offers the TechTransfer Protocol and Process.pdfRondaxe Offers the TechTransfer Protocol and Process.pdf
Rondaxe Offers the TechTransfer Protocol and Process.pdfVolfyreAmdbysuo
 
Ppt 3 protecting innovation
Ppt 3 protecting innovationPpt 3 protecting innovation
Ppt 3 protecting innovationirwanHabibie
 

Similar to STTM_IH (20)

Ot lstartupguide
Ot lstartupguideOt lstartupguide
Ot lstartupguide
 
Inventors handbook presentation1
Inventors handbook presentation1Inventors handbook presentation1
Inventors handbook presentation1
 
What to know if it is your first rodeo in patent monetization?
What to know if it is your first rodeo in patent monetization?What to know if it is your first rodeo in patent monetization?
What to know if it is your first rodeo in patent monetization?
 
Advancing Global Innovation: The Role of PCT Practice and Strategy
Advancing Global Innovation: The Role of PCT Practice and Strategy Advancing Global Innovation: The Role of PCT Practice and Strategy
Advancing Global Innovation: The Role of PCT Practice and Strategy
 
Technology Transfer for Knowledge Translation Practitioners
Technology Transfer for Knowledge Translation PractitionersTechnology Transfer for Knowledge Translation Practitioners
Technology Transfer for Knowledge Translation Practitioners
 
Technology Asessment & Forecasting.pptx
Technology Asessment & Forecasting.pptxTechnology Asessment & Forecasting.pptx
Technology Asessment & Forecasting.pptx
 
Patent Licensing and Valuation Tips
Patent Licensing and Valuation TipsPatent Licensing and Valuation Tips
Patent Licensing and Valuation Tips
 
Research and Types
Research and TypesResearch and Types
Research and Types
 
Bashar H. Malkawi, Knowledge management research and practice
Bashar H. Malkawi, Knowledge management research and practiceBashar H. Malkawi, Knowledge management research and practice
Bashar H. Malkawi, Knowledge management research and practice
 
Patentability Search- Importance and How to Do Patentability Search
Patentability Search- Importance and How to Do Patentability SearchPatentability Search- Importance and How to Do Patentability Search
Patentability Search- Importance and How to Do Patentability Search
 
Online course Technology Transfer and Research Commercialization
Online course Technology Transfer and Research CommercializationOnline course Technology Transfer and Research Commercialization
Online course Technology Transfer and Research Commercialization
 
Technology Transfer in an Emerging Economy
Technology Transfer in an Emerging EconomyTechnology Transfer in an Emerging Economy
Technology Transfer in an Emerging Economy
 
Martin Tto Best Practices Ver3
Martin Tto Best Practices Ver3Martin Tto Best Practices Ver3
Martin Tto Best Practices Ver3
 
TechTransfer Things To Know Rondaxe Drug Development Services.pdf
TechTransfer Things To Know Rondaxe Drug Development Services.pdfTechTransfer Things To Know Rondaxe Drug Development Services.pdf
TechTransfer Things To Know Rondaxe Drug Development Services.pdf
 
Rondaxe Offers the TechTransfer Protocol and Process.pdf
Rondaxe Offers the TechTransfer Protocol and Process.pdfRondaxe Offers the TechTransfer Protocol and Process.pdf
Rondaxe Offers the TechTransfer Protocol and Process.pdf
 
Ppt 3 protecting innovation
Ppt 3 protecting innovationPpt 3 protecting innovation
Ppt 3 protecting innovation
 
Technology transfer
Technology transferTechnology transfer
Technology transfer
 
Ip policy
Ip policyIp policy
Ip policy
 
Research Integrity TU Delft, CESAER, Paris
Research Integrity TU Delft, CESAER, ParisResearch Integrity TU Delft, CESAER, Paris
Research Integrity TU Delft, CESAER, Paris
 
Ip policy
Ip policyIp policy
Ip policy
 

STTM_IH

  • 1.
  • 2.
  • 3.
  • 4. The Inventor’s Handbook of Technology Transfer © 2009-2010, The University of Texas, South Texas Technology Management. All rights reserved. The Inventor’s Handbook of Technology Transfer is meant to be used by inventors, administrators, entrepreneurs, government officials, and others interested in technology transfer, development, and commercialization, as a guide to (1) the principles and practice of technology transfer and (2) the services provided by South Texas Technology Management. The Handbook makes use of, and provides examples for, the Rules and Regulations of the UT Board of Regents and the Handbook of Operating Procedures (HOP) of the served institutions. The information contained in this handbook is made available with the understanding that the Rules and Regulations and the HOP are the controlling documents of each institution and that these official documents should be consulted regularly in order to obtain the most current and accurate information regarding the policies of each institution. Content of this handbook was inspired by An Inventor’s Guide to Technology Transfer at the University of Michigan and portions used with permission by UM Tech Transfer. URL Ref.: www.techtransfer.umich.edu. An electronic version of this publication in Adobe™ Portable Document Format, .PDF, can be found online at www.utsttm.org. Editor / production: Richard Rodriguez Interior and cover design: Richard Rodriguez Photography Credits: Richard Rodriguez UTSA UT Brownsville Content Contributors: STTM Staff H.A.Meyer III For information or obtaining permission to reprint, please contact: South Texas Technology Management 3463 Magic Drive, Suite 350 San Antonio, Texas 78229 (210) 567-9208 utsttm.org Print Code: E3R1
  • 5. i The Inventor’s Handbook of Technology Transfer STTM LIAISON REFERENCE – TABLE 1. vii SECTION A – INFORMATION FOR INVENTORS THE INVENTOR’S HANDBOOK OF TECHNOLOGY TRANSFER 1 STTM INTRODUCTION AND PURPOSE 1 OVERVIEW 2 What is technology transfer? How is technology transferred? What is the Bayh-Dole Act? What is South Texas Technology Management (STTM)? The Just-In-Time model Partnerships with outside counsel Why would a researcher want to participate in technology transfer? The Virtuous Research Cycle FUNDING AND RESOURCES FOR INVENTORS 6 Grants Help Inventions Become Market-Ready Proof of Concept, Short Proposal to Accelerate Research Commercialization (POCsparc) Texas Ignition Fund (TIF) Other Local Resources Policy & Guidelines
  • 6. ii Table of Contents SECTION B – TECHNOLOGY TRANSFER PRACTICE THE TECH TRANSFER PROCESS 8 How do I work with STTM? What are the typical steps in the process? How long does the tech transfer process take? How can I help in this process? RESEARCH CONSIDERATIONS 11 Will I be able to publish the results of my research and still protect the commercial value of my intellectual property? May I use material or intellectual property from others in my research? Will I be able to share material, research tools, or intellectual property with others to further their research? My NIH Grant application includes a “Data Sharing Plan” requirement – how does this relate to UT’s IP policy? What rights does a private research sponsor have to any discoveries associated with my research? Can my research effort go beyond my academic institution? What about consulting? OWNERSHIP OF INTELLECTUAL PROPERTY 14 What is Intellectual Property (IP)? Who owns what I create? What is University of Texas’ policy on ownership of inventions? Who owns rights to discoveries made while on sabbatical? Who owns rights to discoveries made while I am consulting? Who owns rights to discoveries made using shared research materials?
  • 7. iii The Inventor’s Handbook of Technology Transfer OWNERSHIP OF INTELLECTUAL PROPERTY (Cont.) Should I list visiting scientists or other collaborators on my Invention Disclosure? Can a student contribute to an invention? Who owns rights to discoveries made while interning at an outside company? Steps you can take to keep your internship work separate from your university work CONFLICT OF INTEREST 17 SECTION C – STTM METHODOLOGY INVENTION DISCLOSURES 18 What is an Invention Disclosure? Why should I submit an Invention Disclosure? How do I know if my discovery is an invention? Should I be submitting an Invention Disclosure? When should I complete an Invention Disclosure? Should I disclose research tools? How do I submit an Invention Disclosure? An Inventor’s Checklist ASSESSMENT OF AN INVENTION DISCLOSURE 21 How does STTM assess Invention Disclosures? If my personal conviction is that all IP should be licensed non-exclusively to all potential users for the public good, will the University honor my request? How do we decide whether to commercialize with a traditional or an “open source” license for software? Can I incorporate “open source” components in software for commercial distribution? Is ownership of an invention ever reassigned to an inventor?
  • 8. iv Table of Contents PATENTS AND OTHER LEGAL PROTECTION 23 What is a patent? What is the United States Patent and Trademark Office (USPTO)? What type of subject matter can be patented? Can someone patent a naturally occurring substance? Can bio-markers be patented? What special considerations apply? What is the definition of an inventor on a patent and who determines the inventors for a patent application? Who is responsible for patenting? What is the patenting process? What is a provisional patent application and why does STTM file one first? When does STTM file a regular (utility) patent application? What’s different about foreign patent protection? Is there such a thing as an international patent? What is the timeline of the patenting process and resulting protection? Why does STTM protect some intellectual property through patenting? Who decides what gets protected? What does it cost to prepare, to file, and to obtain a patent? What if I created the invention with someone from another institution or company? Will STTM initiate or continue patenting activity without an identified licensee? What can the inventor do to help in the patent process? What is a copyright and how is it useful? How do I represent a proper University copyright notice? How can I learn more about University copyright policies? What is a trademark or service mark and how is it useful? What is trademark registration?
  • 9. v The Inventor’s Handbook of Technology Transfer START UP COMPANIES 34 What is a start-up and why choose to create one? Who decides whether to form a start-up? What assistance and resources are available to the inventor? What role does an inventor usually play in a company? How much of my time and effort will it take? Does the university share equity in the company? What legal assistance is needed in creating a start-up? MARKETING TO FIND A LICENSEE 36 How does STTM market my inventions? Doesn’t marketing compromise the confidentiality of my invention? How are most licensees found? How long does it take to find a potential licensee? How can I assist in marketing my invention? Can there be more than one licensee? LICENSE AGREEMENTS 38 What is a license? What is a license agreement? How is a business chosen to be a licensee? Are all license agreements the same? What can I expect to gain if my IP is licensed? What is the relationship between an inventor and a licensee and how much of my time will it require? What other types of agreements and considerations apply to tech transfer?
  • 10. vi Table of Contents THE LICENSING AGREEMENT AND STRATEGY 40 STTM Licensing Strategy Bedrock Principles COMMERCIALIZATION 42 What activities occur during commercialization? Does commercialization conflict with intellectual freedom or the academic mission? What is my role during commercialization? What revenues are generated if commercialization is successful? What will happen to my invention if the start-up company or licensee is unsuccessful? And, can the invention be licensed to another entity? REVENUE DISTRIBUTIONS 43 How are license revenues distributed? What if I receive equity from a company? What are the tax implications of any revenues I receive from the University? What happens to my share of the revenue if I waive rights to it? How are inventor revenues distributed if there are multiple inventors and/or multiple inventions in a license? How is equity from a license distributed? APPENDIX A — CASE MANAGER ANALYSIS DOCUMENTS 45 CONTACTS & NOTES 53
  • 11. vii STTM LIAISON REFERENCE TABLE Institution Office / Contact(s) STTM Liaison UT Brownsville/Texas Southmost College Office of the Vice President of Research 80 Fort Brown Brownsville, Texas 78520 Luis V. Colom, M.D., Ph.D. Interim Vice President of Research Life Health Science Building, RM# 2.824 Office: (956) 882-7676 Fax: (956) 882-5043 Email: luis.colom@utb.edu STTM / UTB Liaison: Mr. Claude Longoria Office: (210) 567-2147 Fax: (210) 567-1337 Email: longoriacc@uthscsa.edu UT Pan American Office of Innovation and Intellectual Property Administration Bldg., Room 116 1201 W. University Drive Edingburg, Texas 78539 Ms. Jacquelyn Michel, Director of OIIP Office: (956) 381-2889 Email: jmichel@utpa.edu STTM / UTPA Liaison: Ms. Christine Burke, Ph.D. Office: (210) 567-0776 Fax: (210) 567-1337 Email: burkec@uthscsa.edu UT San Antonio Office of Sponsored Programs One UTSA Circle, MS 4.02.14 San Antonio, Texas 78249 Dr. Cory Hallam, Assistant Vice President for Commercial Alliances and Innovation Office: (210) 458-4340 Email: cory.hallam@utsa.edu STTM / UTSA Liaison: Mr. John Fritz Office: (210) 567-9232 Fax: (210) 567-1337 Email: fritzja@uthscsa.edu TABLE 1. Please refer to the STTM web site for updated liaison assignments — http://www.utsttm.org
  • 12. viii STTM LIAISON REFERENCE TABLE (Cont.) Institution Office / Contact(s) STTM Liaison UT Health Science Center at San Antonio Office of Sponsored Programs Medical Bldg., Room 402L 7703 Floyd Curl Drive San Antonio, Texas 78229 Ms. Jane Youngers, Assistant VP for Research and Sponsored Programs Office: (210) 567-2340 Email: grants@uthscsa.edu STTM / UTHSCSA Liaison: Mr. Sean Thompson Office: (210) 567-1630 Fax: (210) 567-1337 Email: thompsons3@uthscsa.edu Southwest Research Institute (SwRI) Internal Research and Development (IR&D) 6220 Culebra Rd. San Antonio, Texas 78238 Joe McDonough, Ph.D. Microencapsulation and Nanomaterials Chemistry and Chemical Division Office: (210) 522-3670 Fax: (210) 522-4632 Email: jmcdonough@swri.org Stanton F. McHardy, Ph.D. Manager, Research and Development Synthesis and Process Chemistry Chemistry and Chemical Division Office: (210) 522-2669 Fax: (210) 522-4632 Email: stanton.mchardy@swri.org STTM / SwRI Liaison: STTM Staff Office: (210) 567-9208 Fax: (210) 567-1337 TABLE 1. (Cont.)
  • 13. The Inventor’s Handbook of Technology Transfer utsttm.org 1 THE INVENTOR’S HANDBOOK OF TECHNOLOGY TRANSFER This handbook outlines the essential elements of technology transfer at the University of Texas (UT) and for institutions served by South Texas Technology Management (STTM; please note: “STTM” is used as one would use “GM” or “GE”). It is organized to answer the most common questions we typically field from our research community and is designed to provide a broad overview of the tech transfer process and services available for researchers. STTM INTRODUCTION AND PURPOSE STTM, which began operations in fiscal year (FY) 2008, manages intellectual property (IP) and technology transfer for UT San Antonio (UTSA), UT Brownsville (UTB), UT Pan American (UTPA), and University of Texas Health Science Center at San Antonio (UTHSCSA). STTM is organized and staffed to: Accelerate transfer of technologies to the marketplace; Capitalize on the financial potential of opportunities through an energetic, entrepreneurial spirit and high level of performance; Stimulate growth in the quality and size of the University of Texas intellectual property portfolio; and Manage the multiple demands of a full-service office. STTM engages in value creation activities such as marketing, licensing, new company start-up formation, financial valuation, business alliances, and internal and external investment in technology development, while negotiating highly specialized contracts that tie all of these activities together in legally binding agreements. As a point of entry for intellectual property-related matters of the served institutions, STTM assumes a fiduciary responsibility to the faculty, staff, and the community as the steward of a growing university IP portfolio. STTM strives to provide a comprehensive host of services for faculty, staff, and students in order to commercialize technologies developed through their Section A - Information for Inventors
  • 14. South Texas Technology Management Relevant Sections 2 Section A - Information for Inventors Section B - Technology Transfer Practice 8 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 research. STTM is dedicated to the management of these technologies in the interest of advancing research and development, protecting the interests of the faculty and the university, and providing economic and humanitarian value to the local and state communities. By facilitating commercial development of faculty- conceived products, STTM provides an alternative outlet for new and cutting edge technologies beyond traditional publication and presentation through scientific media. For more information, visit http://www.utsttm.org or call STTM at (210) 567- 9208. OVERVIEW What is technology transfer? Technology transfer is the movement of knowledge and discoveries to the general public. It can occur through publications, educated students entering the workforce, exchanges at conferences, and relationships with industry. In academic technology transfer, inventions created at universities through federally funded research are licensed to private firms, which develop products and make them available to the public through commercial markets. Thus, goods produced by public investment are returned to, and for the benefit of, the public. For the purposes of this handbook, technology transfer refers to the formal licensing of inventions to firms, under the guidance of STTM staff. Technology transfer is a relatively old academic practice. Anecdotes can be cited from the 19th century, e.g., saccharin was discovered at Johns Hopkins University andsubsequentlypublishedin1879,patentedin1885,andproducedcommercially in 1886. The first tech transfer office was organized in 1925 at the University of Wisconsin in order to make available vitamin D fortified milk. Nevertheless, technology transfer was not practiced widely until enabling legislation was passed in 1980, i.e., — the Bayh-Dole Act, which allowed universities to take title to inventions created through federal grants, thereby enabling licensing on an exclusive basis.
  • 15. The Inventor’s Handbook of Technology Transfer utsttm.org 3 How is technology transferred? Technology is typically transferred through a license agreement in which UT grants its rights to a third party in the defined technology for a period of years and sometimes for a particular field of use and/or region of the world. The licensee, i.e., the firm that licenses the technology, may be an established company or a new business start-up. Licenses include terms that require the licensee to meet certain performance requirements and to make financial payments to the University. These payments are shared with the inventors and also with the inventor’s institution to provide support for further research, education, and participation in the technology transfer process. What is the Bayh-Dole Act? The U.S. Bayh-Dole Act of 1980 allows universities and other non-profit institutions to take ownership rights to discoveries resulting from federally funded research, provided certain obligations are met. These obligations include making efforts to protect (when appropriate) and commercialize the discoveries, submitting progress reports to the funding agency, giving preference to small businesses that demonstrate sufficient capability, and sharing any resulting revenues with the inventors. The Bayh-Dole Act is credited with stimulating interest in technology transfer activities and generating increasing research, commercialization, educational opportunities and economic development. What is South Texas Technology Management (STTM)? STTMisauniversityserviceunitcomposedofspecialistsinhightechnologylicensing, business development, and legal matters, all of whom are widely experienced in transferring technologies from the physical sciences, life sciences and information technology. STTM is responsible for managing intellectual property from UT System component institutions including UTB, UTPA, UTSA, and UTHSCSA. Technology transfer, as practiced by STTM, involves the inventor directly in the commercialization process, and seeks consensus among STTM, the inventor, and industryrepresentativesfordecisions.Thus,facultyinventorshavetheopportunity to participate actively in the management of their inventions. Financial decisions are based on sound economic analysis. Successful marketing, patent prosecution,
  • 16. South Texas Technology Management Relevant Sections 4 Section A - Information for Inventors Section B - Technology Transfer Practice 8 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 and licensing generate returns to the university, and inventors benefit directly through revenue sharing, as well as by gaining access to an industry partner, industry facilities, and industry personnel. The Just-In-Time model STTM practices Just-in-Time tech transfer (JIT). In regards to patent prosecution, JIT means that patents are filed when needed. The “trigger” for patenting is a break-even economic analysis. STTM has partnered with four Texas law firms (the “partnerfirms”),whofileprovisionalpatentapplicationsforaveryreasonablesum. Thus, if the expected value of an invention meets or exceeds such a sum, STTM will accept an invention for management. In other words, if STTM can manage an invention and avoid losing money, it makes a “GO” decision. The reason for such a low bar to accept an invention is that successful commercialization returns more than money to a university—see the Virtuous Research Cycle, Figure 1, below. In addition, working with an inventor through the commercialization process generates (1) an informed inventor who will be well prepared to participate in the management of his or her next invention, as well as (2) a resource who can offer an informed opinion to faculty peers concerning their inventions. JIT conserves funds and time for STTM—and effort for inventors—by avoiding unnecessarypatentprosecutionandtheassociatedwork.JITcoordinatestechnical, patent, and commercial progress, such that sufficient protection is provided as an invention matures, and valuable patent claims remain alive and coordinated with the product life cycle. JIT avoids impeding research by eliminating unnecessary patents, and thereby reduces patent clutter. Partnerships with outside counsel STTM has developed strong partnerships with several law firms in the South Texas region. Although STTM works with other law firms, our partnerships with a few firms allow each licensing associate to become familiar with a small group of attorneys and their individual areas of expertise. In turn, these same attorneys are well versed in STTM and institution policies, and work diligently with us to ensure expectations are being met, both legally and financially.
  • 17. The Inventor’s Handbook of Technology Transfer utsttm.org 5 Why would a researcher want to participate in technology transfer? The reasons are unique to each researcher and may include: Making a positive impact on society; Feeling a sense of personal fulfillment; Achieving recognition and financial reward through revenue sharing; Generating additional lab/departmental funding; Meeting the obligations of a research contract; Attracting research sponsors; Creating educational opportunities for students and Linking students to future job opportunities. The Virtuous Research Cycle Academic technology transfer springs from an institution’s research enterprise. Infrastructure provided by universities—facilities and personnel—create knowledge and train knowledge workers. The acts of creating and training further build the research enterprise and increase the university’s ability to attract research funding and prestigious faculty, and are thereby sustained cyclically, i.e., the virtuous research cycle. With respect to intellectual property, research can generate inventions, which can create new products for existing companies, or form the basis for a new company. Analogous to creating knowledge and training workers by a thriving research enterprise, new products and companies generated by intellectual property further build and fuel the research infrastructure, and stimulate the virtuous research cycle. A larger image of the Virtuous Research Cycle poster can be found online at http://www.utsttm.org.
  • 18. South Texas Technology Management Relevant Sections 6 Section A - Information for Inventors Section B - Technology Transfer Practice 8 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 FUNDING AND RESOURCES FOR INVENTORS Grants Help Inventions Become Market-Ready Inventions created from university research are seldom market-ready. In order to attract industry to such early stage technologies, additional work is required. POCsparc funds may be applied to: Advancement of Hypothesis Testing — Test an idea or prediction with in-vitro experiments, extend in-vitro results with in-vivo experiments, or demonstrate a CAD/CAM design with a bench prototype. Target Validation — Screen small molecule libraries, produce antibodies, or select target-binding peptides or aptamers. Pre-Commercial Research — Validate academic software code for commercial application, formulate a drug or vaccine for delivery, or develop alternative applications for technology or indications for therapeutic compounds. The following grant programs are available to help an inventor bridge the gap between the bench and the shelf, and to advance the invention towards commercialization. Proof of Concept, Short Proposal to Accelerate Research Commercialization (POCsparc) STTM supports the research enterprise of the served institutions by funding faculty research directly. STTM reserved $1 million for POCsparc, through which awards are made to faculty inventors for the purpose of advancing inventions to commercialization. Through 2008, STTM has awarded $500,000 in support of two dozen faculty inventions across the four served institutions. Texas Ignition Fund (TIF) The UT System Office of Research and Technology Transfer have a recurring request for proposals for the Texas Ignition Fund (TIF), which aims to speed the commercialization of inventions created by UT faculty. Proposals should be submitted to STTM; RFPs will recur bi-annually. Check the STTM website, www. utsttm.org, for deadline and other information.
  • 19. The Inventor’s Handbook of Technology Transfer utsttm.org 7 Other Local Resources Bob McKinley – Associate Vice President for Economic Development, UTSA http://www.iedtexas.org/ Dr. Bill Flannery – Masters of Technology Program, UTSA http://programs.business.utsa.edu/mot/ Dr. Cory Hallam – Assistant Vice President for Commercial Alliances and Innovation Center for Innovation and Technology Entrepreneurship, UTSA http://programs.business.utsa.edu/entrepreneur Policy & Guidelines For detailed information on the UT policy and guidelines on intellectual property, please visit the following internet links. UT System IP Policy & Guidelines – Series 90000: Intellectual Property http://www.utsystem.edu/bor/rules.htm#A10 UTSA Handbook of Operating Procedures http://www.utsa.edu/hop/chapter2/2-27.cfm UTHSCSA Handbook of Operating Procedures http://www.uthscsa.edu/hop2000/12-toc.html UT Brownsville Handbook of Operating Procedures http://www.utb.edu/ba/hoop/Policy/10-10-1.pdf UT Pan American Handbook of Operating Procedures http://www.utpa.edu/newhop/files/pdf/Q7583456.pdf
  • 20. South Texas Technology Management Relevant Sections 8 Section B - Technology Transfer Practice Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 THE TECH TRANSFER PROCESS How do I work with STTM? We encourage you to contact STTM during your discovery process to ensure you are aware of the options that will best leverage the commercial potential of your research. STTM staff members are trained to assist you with questions related to marketability, funding sources, commercial partners, patenting and other protection methods, new business start-up considerations, UT policies and procedures, and much more. Our team approach provides you with an assigned case manager supported by partner patent law firms, internal legal assistance, marketing resources, and a rapidly growing business development network. What are the typical steps in the process? The process of technology transfer is summarized in the steps and diagram that follow. Note that these steps can vary in sequence and often occur simultaneously. Research Observations made and experiments performed during research activities often lead to discoveries and inventions. An invention is any useful process, machine, composition of matter, or any new or useful improvement of the same. Often, multiple researchers may have contributed to an invention, and should be included in patents as inventors. Inventor status requires a conceptual contribution to an aspect of the invention. Guided technical work, no matter how extensive, does not rise to the level of invention. Likewise, authorship attribution for a journal publication does not confer inventor status. Pre-Disclosure Early informal contact with STTM personnel to discuss your invention and to provide guidance with respect to the disclosure, evaluation, and protection processes described below. Invention Disclosure The written notice of invention to STTM that begins the formal technology transfer process. An invention disclosure remains a confidential document and should fully explain your invention so the options for commercialization
  • 21. The Inventor’s Handbook of Technology Transfer utsttm.org 9 can be evaluated and pursued. More information and an invention disclosure form can be found online at http://www.utsttm.org. Assessment Theperiodinwhichyouandyourcasemanagerreviewtheinventiondisclosure, conductpatentsearches(ifapplicable),andanalyzethemarketandcompetitive technologies to determine the invention’s commercialization potential. The evaluation process, which may lead to a broadening or refinement of the invention, will guide our strategy on whether to focus on licensing (1) to an existing company or (2) to a new start-up company. Forms used in assessment of your invention are shown in Appendix A — Case Manager Analysis Forms. Protection The process in which protection for an invention is pursued. Patent protection, a common legal protection method, begins with the filing of a provisional patent application with the U.S. Patent and Trademark Office (USPTO). Once a patent application has been filed, several years and thousands of dollars are required to obtain an issued patent. Other protection options, also known as intellectual property, include copyright, trademark and, though not usually appropriate in a university setting, trade secrets. An academic analogy to a trade secret is unpublishable data that is of commercial interest, which may be licensed as confidential information. Marketing With your active involvement, STTM staff will identify candidate licensee companies that have the expertise, resources, and business networks to bring disclosed inventions to market. This process may involve partnering with an existing company or forming a start-up. Your active involvement is critically important to marketing success. Paths to Commercialization License to an existing company: For most cases, an existing business can be identified to develop a commercial product from the university invention. STTM licensing specialists will identify mutual interests and goals, and work with the business to create a development plan to fully commercialize each invention. Or, Create a Start-Up: If creation of a new business start-up is determined to be
  • 22. South Texas Technology Management Relevant Sections 10 Section B - Technology Transfer Practice Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 the optimal commercialization path, STTM staff will assist in planning, creating, and funding the start-up by facilitating existing relationships, resources, and participate with other programs. Licensing A license agreement is a contract between the UT Board of Regents, who own UT inventions, as a condition of employment (see Regents Rules and Regulations series 90000, http://www.utsystem.edu/bor/-rules.htm#A10), and a private company to which UT’s rights to a technology are conveyed (without relinquishing ownership) for financial and other benefits. An option agreement is sometimes used to enable a third party to evaluate technology for a limited time before licensing. Commercialization The licensee company continues the advancement of the technology, and makes other business investments to develop a product or service. This step may entail further development, regulatory approvals, sales and marketing, support, training, and other activities. Revenue Revenues received by STTM from licensees are distributed to inventors personally, and to the inventors’ institutions to fund additional research and education and to encourage further participation in the tech transfer process. Revenue distribution is subject to the Regent Rules and the Handbook of Operating Procedures (HOP) of the inventors’ institutions. How long does the tech transfer process take? The process of protecting the technology and finding the right licensing partner may take months—or even years—to complete. The amount of time will depend on the development stage of the technology, the market for the technology, competing technologies, the amount of work needed to bring a new concept to market-ready status, and the resources and capabilities of the licensees and the inventors. How can I help in this process? Call the STTM office at (210) 567-9208 or the appropriate licensing specialist (found at www.utsttm.org) when you believe you have a scientific or technical
  • 23. The Inventor’s Handbook of Technology Transfer utsttm.org 11 observation with potential commercial or research value. Complete and submit the appropriate STTM Invention Disclosure Form, which can be found online at http://www.utsttm.org, before publicly disclosing your technology or submitting a manuscript. To avoid risking your patent rights and possibly hindering the opportunity to market your invention, contact STTM before holding any discussions with people outside of your institution. On the Invention Disclosure Form, include companies and contacts you believe maybeinterestedinyourIPorwhomayhavealreadycontactedyouaboutyour invention. Studies have shown that over 70% of all academic licenses originate from inventor contacts, thus, your contacts can be essential for success. Respond promptly to STTM and partner patent counsel requests. While some aspects of the patent and licensing process will require significant participation on your part, we will strive to make efficient use of your valuable time. Keep STTM informed of upcoming publications or interactions with companies related to your intellectual property. RESEARCH CONSIDERATIONS Will I be able to publish the results of my research and still protect the commercial value of my intellectual property? Yes, but since patent rights are affected by these activities, it is best to submit an Invention Disclosure (discussed in next section) well before any public communication or disclosure of the invention. There are significant differences between the U.S. and other countries as to how early publication affects a potential patent. Once publicly disclosed (published or presented in some form), an invention may have restricted or minimal potential for patent protection outside of the United States. U.S. patent law provides a 1 year grace period beyond the first public disclosure. Be sure to inform the STTM case manager of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation or master’s thesis, publication, discussions with academic or industrial collaborators, or other public presentation of the invention.
  • 24. South Texas Technology Management Relevant Sections 12 Section B - Technology Transfer Practice Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 May I use material or intellectual property from others in my research? Yes, but it is important to document carefully the date and conditions of use so that wecandetermineifthisusemayinfluencetheownershiprightsofyoursubsequent research results. If you wish to obtain materials from outside collaborators, an incoming Materials Transfer Agreement (MTA) should be completed and signed by an authorized University representative (See Table 1, located above, for STTM liaison information to your academic institution). Contact STTM or your OSP for more information on incoming MTAs. Institution sponsored programs offices have primary responsibility for MTAs, with assistance from STTM for industry and IP- related issues. Will I be able to share material, research tools, or intellectual property with others to further their research? Yes. However, it is imperative to document items that are to be shared with others and the conditions of use. If you wish to send materials to an outside collaborator, an outgoing Materials Transfer Agreement (MTA) should be completed for this purpose. Researchers may be asked to sign an MTA as evidence that they have read the agreement and will comply with its terms. However, since an MTA is a binding contract, the official signature must come from the university or its delegatedrepresentative.ItalsomaybenecessarytohaveaConfidentialDisclosure Agreement (CDA) completed to protect your research results or intellectual property. Contact an STTM representative at www.utsttm.org or call (210) 567- 9208 for assistance in completing CDAs. My NIH Grant application includes a “Data Sharing Plan” requirement – how does this relate to UT’s IP policy? Under the National Institutes of Health (NIH) Data Sharing Policy, an investigator must share final, non-restricted research data in a timely manner, usually upon publication of the main findings from the final dataset. Where the investigator expects restricted research data, the restricted data should be explained (e.g., restricted under third-party agreement until publication) in the data sharing plan and how the data will be shared or why it cannot be shared. The investigator must:
  • 25. The Inventor’s Handbook of Technology Transfer utsttm.org 13 Comply with university policy requiring the disclosure of inventions to STTM to• allow the university to comply with federal law by reporting inventions made through federally-funded research to the appropriate agencies; Comply with third-party research agreements and materials-transfer• agreements; and Comply with the need to protect patentable or otherwise proprietary• information. While the NIH desires that data and resources to be as widely and freely available as possible, investigators may seek funds from NIH for sharing, may charge for reasonable costs incurred while complying with a sharing request, and may seek restrictions on the use of data or resources such as “for academic or research purposes only.” Patenting and licensing are also allowable methods of sharing so long as the licensed product is reasonably available and accessible to the research community. For investigators seeking publication of their research, consult with the relevant journals, as many have data sharing requirements as a condition for authorship. If questions about intellectual property arise when preparing sharing plans, please contact STTM. What rights does a private research sponsor have to any discoveries associated with my research? All Sponsored Research Agreements specify the intellectual property rights of the sponsor. UT retains ownership of the patent rights and other intellectual property resulting from sponsored research. However, the sponsor may have rights to obtain a license to the defined and expected outcomes of the research. Often, sponsored research contracts allow the sponsor a limited time to negotiate a license for any patent or intellectual property rights developed as the result of the research. Even so, the sponsor generally will not have contractual rights to discoveries that are clearly outside of the scope of the research. Therefore, it is important to define carefully the scope of work within a research agreement. Sponsored research projects are managed by the Office of Sponsored Programs located on the institution where the research is to take place. See Table 1, located above, for STTM liaison information to your academic institution.
  • 26. South Texas Technology Management Relevant Sections 14 Section B - Technology Transfer Practice Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 Questions about intellectual property and patent rights should be directed to the STTM office by phone at (210) 567-9208. Can my research effort go beyond my academic institution? Yes, one such situation exists in San Antonio where there are joint inventions between UTHSCSA and Southwest Research Institute (SwRI). The Internal Research and Development Program at SwRI exists to broaden the SwRI’s technology base and encourages staff professional growth. Internal funding of research enables the SwRI to advance knowledge, increase its technical capabilities, and expand its reputation as a leader in science and technology. The program also allows SwRI engineers and scientists to continually grow in their technical fields by providing freedom to explore innovative and unproven concepts. See Table 1, located above, for STTM liaison information to Southwest Research Institute. What about consulting? Consulting activities may not conflict with UT Intellectual Property policy. Before an employee engages in consulting activities, this IP policy should be made clear to those outside entities. Except with explicit authorization, consulting activity shall not diminish UT IP rights. Consulting work in the field directly related to the investigator’s university research requires disclosure to STTM of all discoveries. OWNERSHIP OF INTELLECTUAL PROPERTY What is Intellectual Property (IP)? Intellectual property refers to creations of the mind that can be protected under federal law, e.g., inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.
  • 27. The Inventor’s Handbook of Technology Transfer utsttm.org 15 Who owns what I create? As a general rule, the UT Board of Regents owns inventions made by its employees while acting within the scope of their employment or using university resources. Narrow exceptions may apply for inventions made by employees working outside their field of study and without significant use of university facilities. In some cases, the terms of a Sponsored Research Agreement or Materials Transfer Agreement may impact ownership. What is UT’s policy on ownership of inventions? The policy is stated in Regents’ Rules Series 90000, found online at URL http:// www.utsystem.edu/bor/rules.htm#A10. This policy, which assumes UT ownership of inventions, applies to all types of intellectualproperty,including,butnotlimitedto,anyinvention,discovery,creation, know-how, trade secret, technology, scientific or technological development, research data, works of authorship, and computer software regardless of whether subject to protection under patent, trademark, copyright, or other laws. Scholarly Work The Board of Regents will not assert its interest in the copyright of scholarly or educational materials, artworks, musical compositions, and literary works related to the author’s academic or professional field. Who owns rights to discoveries made while on sabbatical? Generally, if you are on a sabbatical and paid by UT, UT maintains rights to any discoveries connected to your work. Who owns rights to discoveries made while I am consulting? Except with explicit authorization, consulting activity shall not diminish UT IP rights. Consulting work in the field directly related to the investigator’s university research, and upon which the investigator is evaluated as a university employee, requires disclosure to STTM of all discoveries.
  • 28. South Texas Technology Management Relevant Sections 16 Section B - Technology Transfer Practice Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section C - STTM Methodology 18 Contacts & Notes 52 Who owns rights to discoveries made using shared research materials? When several parties have contributed materials to a discovery, ownership of the discovery is determined by patent law. However, the owner of the original material may retain certain rights to new compositions, which rights are based upon the dependence of the new discovery on the original material. Should I list visiting scientists or other collaborators on my invention disclosure? All contributors to a discovery should be mentioned in your disclosure, even if they are not university employees. STTM, along with legal counsel, will determine the rights of such persons and institutions. Can a student contribute to an invention? Yes, a student can be an inventor or co-inventor. Who owns rights to discoveries made while interning at an outside company? The work you do at your outside internship is likely to result in new IP that is owned by the company where you work. If the work is related to an invention or a software program originally created at a UT institution, then the ownership of new intellectual property becomes confused. This confusion could prevent the invention from being commercialized and creates problems for the university, the company, and you. Your internship employer will generally ask you to sign an employment agreement. These agreements commonly include a provision stating that IP created during your internship automatically becomes the property of your employer. It is a good idea to request a copy of this document and keep it for your reference. Steps you can take to keep your internship work separate from your university work: Fill out an Invention Disclosure form prior to leaving for your internship. The disclosure form can be found online at http://www.utsttm.org. Disclosures
  • 29. The Inventor’s Handbook of Technology Transfer utsttm.org 17 can be submitted even at the very early stages of an idea in order to create a document that verifies its creation at UT. You can also fill one out during your internship, if you realize later that there may be some question about where you were when you had the idea. Use caution with UT source code during your summer internship. Even if you are working on it after normal business hours, your employer may claim ownership over new intellectual property. Read the employment agreement to find out if you can work on the source code on your own computer, at home, after hours, and without employer restrictions. Do not use your university lab notebook during your summer internship. Be very cautious about continuing to work on an internship product or developing an idea you had at the internship after it has ended. If you choose to continue to work on an old internship project at home and after hours, you must realize that your sponsor employer may legally claim any new intellectual property. Contact your university advisor or STTM if you have any questions about these issues as they apply to your individual circumstances. CONFLICT OF INTEREST Regent Rule 30104 addresses conflict of interest. Each institution manages conflict of interest, as described in their respective HOP. STTM does not implement or manage conflict of interest policy or practice. Nevertheless, STTM reports to each institution situations that present opportunities for conflict, such as returned rights to faculty inventions, faculty start-up company formation, and continuing relationships with start-ups such as sponsored research, student involvement, and option rights for new inventions.
  • 30. South Texas Technology Management Relevant Topics 18 South Texas Technology Management Relevant Sections 18 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 INVENTION DISCLOSURES What is an invention disclosure? An invention disclosure is a description of your invention or development that is provided to STTM. The disclosure lists all collaborating sources of support and includesinformationnecessarytobeginpursuingprotectionandcommercialization activities. STTM provides disclosure forms for inventions, software, and biological materials. To initiate the process, submit the appropriate disclosure form to STTM, which will hold the information in confidence. Using the disclosure, STTM can then generate a non-confidential description of your invention to assist in marketing the technology and creating confidentiality agreements with outsiders to allow more detailed exchanges of information with potential partners. Why should I submit an invention disclosure? When you disclose your invention to STTM, it starts a process that could lead to the commercialization of your technology. On the part of STTM, this process may involve beginning the legal protection/patent process and working to identify outside development partners. If Government funds were used for your research, certain invention reporting and utilization obligations are included under the Bayh-Dole Act. For all inventions, you are required to promptly file an invention disclosure, and STTM will assume responsibility for all other obligations to the granting agency. Similarly, for private and industry sponsored research, reporting and utilization requirements — including option rights to practice an invention — may have been included under the institution’s agreement for funding. How do I know if my discovery is an invention? Should I be submitting an invention disclosure? You are encouraged to submit an invention disclosure for all inventions and developments that you feel may solve a significant problem and/or have commercial value. If you are in doubt, contact STTM to discuss the invention. We can also advise on alternatives to licensing. Invention requires conception and reduction to practice. An invention disclosure can be filed upon conception of an invention, but STTM requires reduction to practice, i.e., preliminary experimental results, to file a patent application.
  • 31. Relevant Topics utsttm.org 19 The Inventor’s Handbook of Technology Transfer utsttm.org 19 When should I complete an invention disclosure? Youshouldcompleteaninventiondisclosurewheneveryoufeelyouhavediscovered something unique with possible commercial value. Disclosure should precede presenting the discovery through publications, poster sessions, conferences, press releases, or other extra-institution communications. Once publicly disclosed, (i.e., published or presented in some form), an invention may have severely restricted or minimal potential for patent protection outside of the United States. Differences exist between the U.S. and other countries on the impact of early publication on a potential patent. Be sure to inform STTM of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal, dissertation or master’s thesis, publication, or other public presentation of the invention. Despite the loss of protection due to initial disclosure, significant value remains, including: Full US protection remains available for one year; Full protection is available in certain foreign countries, though restrictions apply; The US represents a significant market for high technology inventions; and Because of the nascent stage of development of academic inventions, foreign protection becomes available to improvements and modifications of the core invention as it is developed into a marketable product. Should I disclose research tools? Typically, research tools are materials such as antibodies, vectors, plasmids, cell lines, mice, and other materials used as “tools” in the research process. The National Institute of Health (NIH) mandates that research institutions share these materials, in a manner that promotes scholarly activity, through the Uniform Biological Materials Transfer Agreement (UBMTA). Nevertheless, some biological materials may have significant value, and many companies are willing to pay for the use of these materials. In these instances, the materials can be transferred under a limited use license agreement in exchange for a one-time cash payment, research support, or sometimes a royalty stream from products that utilize the materials. The role of STTM is to facilitate open access to tangible research materials for academic researchers, while protecting the commercial value of these materials.
  • 32. South Texas Technology Management Relevant Topics 20 South Texas Technology Management Relevant Sections 20 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 If you have research tools that you believe to be valuable, or wish to provide to others (including research collaborators), STTM will work with you to develop the appropriate protection, licensing, and distribution strategy. STTM is developing a web-based system for distribution of biological materials, which includes a standard, simple to implement license agreement. Contact STTM for further information. How do I submit an invention disclosure? For each disclosure received, STTM will assign a case manager, who will be the primary point of contact for all tech transfer activities. If you have any questions, call STTM at (210) 567-9208 or email us at disclosures@uthscsa.edu. You can find a disclosure form online with instructions at http://www.utsttm.org. An Inventor’s Checklist Reprinted with permission from H.A. Meyer III Inventing is a risky, expensive and time-consuming endeavor. Unfortunately, more and more it is becoming a rich man’s game. Therefore, before jumping into a swimming pool headfirst, we suggest inventors check for adequate water by getting answers to these simple questions, which are more effectively answered in conjunction with a professional analysis of the invention. Some important considerations include: If the device does what is intended, is there a market, i.e., will anyone buy it?• Does it offer real BENEFITS?• It is really novel and non-obvious?• Does it solve a real problem? Or does it create attributes that would cause• people to buy it? Is it a revolutionary improvement (or) a significant enough evolutionary• improvement that it will have a market advantage over the existing technology? Has a patent and prior art search been conducted and is it patentable? Or• do you have the marketing muscle (e.g., money and distribution) to sell an unprotected product? Are functional alternatives to the device readily available?• Has it been prototyped and can it be demonstrated?•
  • 33. Relevant Topics utsttm.org 21 The Inventor’s Handbook of Technology Transfer utsttm.org 21 Can others make claims against the title (e.g., former employers)?• Will customers pay a premium for the product?• Can it be manufactured at a reasonable cost?• Does it need regulatory approval and how long is this expected to take?• If you intend to make it yourself, can it be a ‘stand-alone’ product?• If you want to license it, can it be integrated into an existing product line?• Is the current overall market category significant in terms of absolute• money? What market share percentage can it hope to capture, and in what time• period? Is the market growing?• Are you willing to stick with it for years?• Are you willing to invest your own money or is there advance backing?• There is no fixed formula for inventing or business development. Instead, a well balanced mixture of careful preparation, competency, and determination will triumph. The more positive the answers become, the greater the likelihood of success. ASSESSMENT OF AN INVENTION DISCLOSURE How does STTM assess invention disclosures? Intellectual property is an asset to be developed, maintained, and protected, not unlike land, equipment, and facilities. By protecting it appropriately, it can return value and advantages to its owner(s). Licensing specialists at STTM examine each invention disclosure to assess, among other things, the novelty of the invention, competing technologies, the ability to protect and market potential products or services, relationship to related intellectual property, size and growth potential of the relevant market, amount of time and money required for further development, and pre-existing rights associated with the research that led to the discovery. This assessment may also include consideration of whether the discovery can be the basis for a new business start-up.
  • 34. South Texas Technology Management Relevant Topics 22 South Texas Technology Management Relevant Sections 22 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 STTM requires each licensing associate to complete an Invention Analysis Form (IAF), which includes an analysis of the patent and licensing landscapes for each inventiondisclosed.AcompletedIAFwilldetailthemarketnicheforthetechnology, potential licensees in the industry, and an overview of the known prior art. IIPAC The Institutional Intellectual Property Advisory Committee (IIPAC) is composed of faculty members from STTM served institutions, and provides assistance to STTM staff during invention assessment. IIPAC members have experience in the business of technology commercialization and, and as such, offer both professional scientific and business advice to STTM. IIPAC evaluation often identifies deficiencies in early stage inventions that hinder commercialization. Presently, no resources are available to address such shortcomings. However, efforts are underway to create an IIPAC fund, through which inventors would be offered a small budget to correct deficiencies, and thereby advance the invention towards the market. If my personal conviction is that all IP should be licensed non-exclusively to all potential users for the public good, will the University honor my request? STTM will work with you to develop an appropriate commercialization strategy for each invention. Some technologies lend themselves to non-exclusive licensing (licensing to multiple third parties), while others can only reach the commercial marketplace, and therefore the public, via an exclusive license. Inventor’s preference will be accommodated to the extent possible, in consideration of the practical benefit for the general public, and consistent with federal granting agency policies and other obligations. How do we decide whether to commercialize with a traditional or an “open source” license for software? Generally, STTM supports university software developers who choose to release their programs through open source mechanisms. However, there are liability issues that you should be aware of before working with open source. STTM can help ensure that you do not expose UT to undue liability by releasing software under an open source license. Regardless of how you release the software, always
  • 35. Relevant Topics utsttm.org 23 The Inventor’s Handbook of Technology Transfer utsttm.org 23 include a copyright notice, a disclaimer of liability and the source of funds and grant number that supported the research. For advice, call STTM at (210) 567- 9208. Can I incorporate “open source” components in software for commercial distribution? At the proof-of-concept stage, most university software includes open source components. It is important to keep track of which components are embedded in the source code, and what software licenses are associated with those components. You must replace certain open source code with your original code before commercial release of the software. Is ownership of an invention ever reassigned to an inventor? If STTM decides not to elect title, or abandons patents or patent applications directed, to an invention, the inventor’s institution may transfer invention rights to the inventor(s). Such rights are subject to research sponsor obligations, and require a continuing right for UT to practice the invention, recoup expenses, and share in any subsequent economic benefit. Upon transfer of rights, the inventor becomes responsible for payment of all further development, patenting, and marketing expenses. Additional university resources may not be used for further development, and conflict of interest issues must be disclosed and managed by the inventors. PATENTS AND OTHER LEGAL PROTECTION What is a patent? In the U.S., a patent gives the holder the right, for a period of 20 years from the application filingdate,toexcludeothersfrommaking,using,selling,offeringtosell, and importing any patented invention. Thus, a patent does not necessarily provide theholderanyaffirmativerighttopracticeatechnology.Instead,itprovidestheright to exclude others from practicing it. A patent application includes: (1) a narrative on the invention, i.e., the specification, comprising background information on the state-of-the-art, general and detailed descriptions of the invention, and illustrative experiments, i.e., examples, and (2) claims. Patent claims are the legal definition
  • 36. South Texas Technology Management Relevant Topics 24 South Texas Technology Management Relevant Sections 24 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 of, and provide the limits for, an invention. For comprehensive information, visit the United States Patent and Trademark Organization (USPTO) online at http:// www.uspto.gov. What is the United States Patent and Trademark Office (USPTO)? The USPTO is the federal agency, organized under the Department of Commerce that administers patents on behalf of the government. The USPTO employs patent examiners skilled in all technical fields to examine patent applications. The USPTO also issues federal trademark registrations. What type of subject matter can be patented? Patentablesubjectmatterincludesnewandusefulprocess,machine,manufacture, or composition of matter, or any new and useful improvement thereof. Methods are patentable, including methods of making compositions, methods of making articles, and even methods of performing business. A patent cannot be obtained upon a mere idea or suggestion. For example, a patent can be granted for a new machine, but not for the idea or suggestion of the new machine. A complete description of the actual machine is required. Can someone patent a naturally occurring substance? No. A natural substance that has never before been isolated or known may be patentable in some instances, but only in its isolated form (since the isolated form had never been known before). A variation of a naturally occurring substance may be patentable if an inventor is able to demonstrate substantial advantages of using the variant. In general, a biological target or physiological pathway is not patentable, however, a modulator of a target or pathway (e.g., a substance, device, etc. that affects the behavior of a target or pathway) is patentable in terms of a new composition of matter or method of treatment. Can bio-markers be patented? What special considerations apply? Biomarkers — molecular indicators directly and highly predictive of a biological process—can be valuable intellectual property. Pharmaceutical companies are very interested in markers and assays useful for selecting and enrolling patients
  • 37. Relevant Topics utsttm.org 25 The Inventor’s Handbook of Technology Transfer utsttm.org 25 who will respond favorably to a drug in clinical trials. However, the patenting of biomarkers and their uses is complex and the body of case law is relatively new. A patent on a biomarker or biomarker panel may not necessarily cover all uses of the markers. Each marker and its uses claimed in a patent application must be checked against prior literature and patents to confirm novelty. The commercial value of an assay patent can be compromised if it does not cover other equally predictive biomarkers. Consequently, well-designed studies, comprehensive evaluation of all potential markers, and consideration of commercial assay format can all enhance the probability of a sound proprietary position and successful commercial outcome. What is the definition of an inventor on a patent and who determines the inventors for a patent application? UnderU.S.law,aninventorisapersonwhotakespartintheconceptionoftheideas embodied by the claims of a patent. Thus, inventorship of a patent application may change as patent claims are added, deleted, or amended during prosecution. An employer or person who provides money to build or practice an invention is not an inventor. Inventorship bears a higher standard relative to authorship; thus a co-author of a related publication is not necessarily an inventor. Inventorship may require an intricate legal determination, which can be performed by the patent attorney prosecuting the application. Who is responsible for patenting? OnceSTTMdeterminesthatacertaintechnologyhascommercialpotentialsufficient to justify the initial cost to file a patent, STTM hires outside patent counsel to file a provisional patent application (described more fully below). Inventors work with counsel in drafting the patent applications, responses, and other communications to patent offices. STTM case managers and in-house attorneys will help with the management and oversight of the outside patent counsel. What is the patenting process? Patent applications are drafted by a patent attorney or a patent agent (a non- attorney with a science education licensed to practice by the USPTO). You will be expected to provide a technical description of the invention, which is analogous
  • 38. South Texas Technology Management Relevant Topics 26 South Texas Technology Management Relevant Sections 26 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 to a journal article, and includes materials, methods, and results. Key references directedtotheheartoftheinventionshouldbeincluded,butextraneousreferences add to prosecution expense, and may distract the examiner. The patent attorney will ask you to review an application before it is filed and will also ask you questions about inventorship of the application claims. At the time an application is filed, the patent attorney will ask the inventor(s) to sign an Inventor’s Declaration and an Assignment, which evidences the inventor’s duty to assign the patent to UT. After some time, up to 3 years, the patent attorney will receive written notice from the USPTO as to whether the application and its claims have been accepted in the form as filed. More often than not, the USPTO rejects the application because certain formalities need to be clarified, sufficient evidence for a claim was not provided in the specification, or the claims are not patentable over the “prior art” (anything that workers in the field have made or publicly disclosed in the past, including scientific literature, books, newspapers, patents and published patent applications, and any other form of public information). This notice sent by the USPTO is referred to as an office action. If the application is rejected, the patent attorney must file a written response, usually within three to six months. Generally the attorney may amend the claims and/or point out why the USPTO’s position is incorrect, but new material may not be added to the specification. This procedure is referred to as patent prosecution. Often it will take two office actions and two responses by the patent attorney— and sometimes more—before the application is resolved. The resolution can take the form of a notice that the application is allowable; in other words, the USPTO agrees to issue a patent. During this process, input from the inventor(s) is often needed to confirm the patent attorney understands the technical aspects of the invention and/or the prior art cited against the application. Patent applications are held confidential until published, approximately 18 months after initial filing. What is a provisional patent application and why does STTM file one first? The provisional patent application has fewer requirements than a regular, or utility, patent application. It must contain a correct list of inventors and a fully enabling specification, that is, a description of the invention sufficient for others in the field
  • 39. Relevant Topics utsttm.org 27 The Inventor’s Handbook of Technology Transfer utsttm.org 27 to make and use it. Provisional applications are offered by the USPTO, but afford protection of patent rights worldwide. Provisional applications are not examined, thus prosecution is delayed. By filing a provisional patent application, we receive the benefit of an early filing date, i.e., the priority date, and delay the patent prosecution process and its attendant costs by up to one year. Additionally, because the provisional patent application has fewer formal requirements than a utility patent application—for example, claims do not have to be filed with a provisional application—the filing fees and attorney fees are smaller. We, therefore, are provided with one year to market an invention without sacrificing patent rights and prior to progressively escalating patent prosecution costs. Upon filing the provisional, the inventor is free to publish without loss of patent rights. Even though the inventor has a green light to publish, it would be prudent for the inventor to discuss any publication with STTM case manager to ensure that the publication does not contain additional inventive information. When does STTM file a regular (utility) patent application? If STTM, working with the inventor, determines that the invention has sufficient commercial potential, the provisional is converted to a utility patent application before the one year anniversary of the priority date. At this stage, claims must be written that define the metes and bounds of the invention, and the information contained in the provisional application must be brought into compliance with the formal requirements of a utility application. Further, the inventors must sign a declaration by which they declare that they are the sole inventors of the invention described in the patent application, understand the contents of the patent application, including the claims, and have properly declared their residence, mailing address, and citizenship. By signing this formal declaration, the inventors also acknowledge their ongoing duty to disclose information that may be relevant to the patentability of the invention, such as published articles or issued patents. By the time the utility application has been filed, the inventors must have signed a formal assignment document that conveys their rights in the application to the university.
  • 40. South Texas Technology Management Relevant Topics 28 South Texas Technology Management Relevant Sections 28 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 What’s different about foreign patent protection? Foreignpatentprotectionissubjecttothelawsofeachindividualcountry,although, in a general sense, the process works much the same as it does in the United States. However, in the U.S., patent rights are conferred to the first to invent, as evidenced by lab notebooks or other documentation; elsewhere, patent rights are conferred to the first to file. Is there such a thing as an international patent? No, an international patent does not exist. However, an international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for most industrialized nations. For U.S. applicants, a PCT application is generally filed one year after the corresponding U.S. application (either provisional or regular) has been submitted. The PCT application must later be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months from the earliest claimed filing date. PCT provides two advantages. First, it delays the need to file costly foreign applications until the 30-month date, often after an applicant has had the opportunity to further develop, evaluate and/or market the invention for licensing. Second, the PCT offers the opportunity for a preliminary examination, which may simplify patent prosecution by having a single examiner speak to the patentability of the claims. An important international treaty called the Paris Convention permits a patent application filed in a second country (or a PCT application) to claim the benefit of the filing date of an application filed in a first country. However, pursuant to this treaty, these so-called “convention applications” must be filed in foreign countries (or as a PCT) within one year of the first filing date of the U.S. application. What is the timeline of the patenting process and resulting protection? Currently, the average U.S. utility patent application is pending for about two years, though inventors in the biotech and computer fields should plan on a longer waiting period. From provisional patent application to the issuance of a patent, the inventor should anticipate about a four-year process. Once issued, a patent expires twenty years after the priority date (up to 21 years if the priority
  • 41. Relevant Topics utsttm.org 29 The Inventor’s Handbook of Technology Transfer utsttm.org 29 date is taken from a provisional application). However, during the twenty-year period, maintenance fees must be paid three times at different intervals in order to maintain the patent. If a maintenance fee is not paid on time, the patent will be considered legally abandoned. The fee gets larger as the patent gets older. Why does STTM protect some intellectual property through patenting? Patent protection is often a requirement of a potential commercialization partner (licensee) because it can protect the commercial partner’s often sizable investment required to bring the technology to market and offers the licensee a monopoly market position for a limited period of time. Due to their expense, patent applications are not appropriate for all university intellectual property. STTM carefully reviews the commercial potential of an invention before investing in the patent process. However, because initiating a patent filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible. In general, if an invention can be predicted to generate revenue equal to or greater than the associated expenses, STTM will file an application or continue prosecution. Who decides what gets protected? STTM and the inventor(s) consider relevant factors in making recommendations about filing patent applications. STTM makes financial decisions based on sound economic analysis and proceeds with projects that can generate a positive net present value (NPV). Ultimately, the assistant vice president for technology transfer makes the final decision as to whether to file a patent application or seek another form of protection. What does it cost to prepare, to file, and to obtain a patent? Expect the cost of drafting and filing a provisional patent application to be in the low-thousands of dollars; a regular U.S. application can cost up to $10,000; and a PCT application may cost up to $15,000. To obtain an issued patent may require an additional $5,000 to $15,000 for patent prosecution. Filing and obtaining issued patents in other countries may cost $20,000 or more per country. Also, once a patent is issued in the U.S or in foreign countries, certain maintenance fees are required to keep the patent alive.
  • 42. South Texas Technology Management Relevant Topics 30 South Texas Technology Management Relevant Sections 30 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 What if I created the invention with someone from another institution or company? If you created the invention under a contract with a company, the case manager will need to review that contract to determine ownership and other rights and to determine the appropriate next steps. If the invention was created with collaborators from another institution, the case manager will work to implement an “inter-institutional” agreement (“IIA”) 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. Co- owners of a patent share equal and undivided rights to the patent, thus, absent an IIA, either party may use or license the rights without regard to the other party. Terms for invention management associated with Veterans Administration (VA) contributions are subject to a prior agreement. Please call attention to any VA collaborators or other VA involvement, including work without compensation. Will STTM initiate or continue patenting activity without an identified licensee? Upon the determination that an invention has sufficient commercial potential, i.e., a positive NPV, STTM will accept the risk of filing a patent application before a licenseehasbeenidentified.Afteruniversityrightshavebeenlicensedtoalicensee, the licensee generally assumes the patenting expenses. At various decision points during patent prosecution, the commercial potential of each patent is reassessed and, if found wanting, patent prosecution may be abandoned. What can the inventor do to help in the patent process? Intellectual property developed by university faculty, staff, or students represents a significant opportunity for academic recognition and financial reward for the institution and for inventors. Properly organized and devised laboratory notebooks and invention disclosures provide a “trail of evidence” to support the invention and contribution to claims. Laboratory notebooks need not be kept in a particular format. However, the following standards present a reliable format to prevent claims of fraudulent insertion or deletion of entries.
  • 43. Relevant Topics utsttm.org 31 The Inventor’s Handbook of Technology Transfer utsttm.org 31 Use bound notebooks with pre-numbered pages. Sign your full name and date• every page. Use ink when recording ideas and experiments. Use a single strike if anything• is crossed out and initial these “strike-outs.” Entries should always be made in the notebook without skipping pages or• leaving empty spaces. Draw a line through any unused portion and initial and date the marking. Initial across the edge of auxiliary material such as figures and computer• printouts that are pasted into the notebook. Do not place results printed on thermal paper in your notebook, as it fades• over time. Copy the data and then place it in the notebook. Digital records of results can be submitted as evidence of an invention, but• it is highly recommended that these records be supported with written documentation because courts do not favor digital records. Label ideas or proposals to differentiate them from work actually performed.• Have a witness who understands the content of the recent work sign the• notebook pages on a frequent (at least weekly) basis. The witness should not be a direct contributor to the work being reported. Try to preserve the “first samples” of new materials produced by a new• method. Retain records of purchase orders for components required for testing.• Submitting an invention disclosure to STTM provides support for determining the actual date of an invention. By disclosing the initial conception to our office we will have a signed and dated document that is an official record of the university. It is important to note you can contact our office immediately after the initial conception and before reduction to practice. The sooner we receive news of inventions, even if only a conception, the better we can understand your interests and prepare for the eventual marketing. What is a copyright and how is it useful? Copyright is a form of protection provided by the laws of the United States to the creators of “original works of authorship,” including, literary, dramatic, musical, artistic, and certain other intellectual works as well as computer software. This
  • 44. South Texas Technology Management Relevant Topics 32 South Texas Technology Management Relevant Sections 32 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 protection is available to both published and unpublished works. The Copyright Act generally gives the owner of copyright the exclusive right to conduct and authorize various acts, including reproduction, public performance and making derivative works. Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, etc. In some instances, STTM sometimes registers copyrights, but generally not until a commercial product faces market competition. How do I represent a proper University copyright notice? Althoughcopyrightableworksdonotrequireacopyrightnotice,wedorecommend that you use one. For works owned by the university, use the following template: Copyright 2009, The University of Texas at Institution (“U. T. Institution“). All rights reserved. By using this software the USER indicates that he or she has read, understood and will comply with the following: U. T. Institution hereby grants USER permission to use, copy, modify, and distribute thissoftwareanditsdocumentationforanypurposeandwithoutfee,providedthat a full copy of this notice is included with the software and its documentation. Titletocopyrighttothissoftwareanditsassociateddocumentationshallatalltimes remain with U. T. Institution. No right is granted to use in advertising, publicity or otherwise any trademark, service mark, or the name of U. T. Institution. This software and any associated documentation are provided “as is,” and U. T. INSTITUTION MAKES NO REPRESENTATIONS OR WARRANTIES, EXPRESSED OR IMPLIED, INCLUDING THOSE OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT USE OF THE SOFTWARE, MODIFICATIONS, OR ASSOCIATED DOCUMENTATION WILL NOT INFRINGE ANY PATENTS, COPYRIGHTS, TRADEMARKS OR OTHER INTELLECTUAL PROPERTY RIGHTS OF A THIRD PARTY. U. T. Institution, The University of Texas System, its Regents, officers, and employees shall not be liable under any circumstances for any direct, indirect, special, incidental, or consequential damages with respect to any claim by USER or any third party
  • 45. Relevant Topics utsttm.org 33 The Inventor’s Handbook of Technology Transfer utsttm.org 33 on account of or arising from the use, or inability to use, this software or its associated documentation, even if U. T. Institution has been advised of the possibility of those damages. Submit commercialization requests to: STTM, ATTN: Technology Licensing Specialist, 3463 Magic Drive Ste 350, San Antonio, Texas, 78229. How can I learn more about University copyright policies? In general, UT’s copyright policy is that the presumption of ownership for scholarly or educational material lies with the author. Important exceptions to this policy concern copyrightable works pertaining to inventions http://www. utsystem.edu/BOR/rules/90000Series/90101.pdf. What is a trademark or service mark and how is it useful? A trademark includes any word, name, symbol, device, or combination, that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or combination that is used, or intended to be used, in commerce to identify and distinguish the services of one provider from those of others, and to indicate the source of the services. What is trademark registration? TrademarkregistrationisaprocedureinwhichtheUSPTOprovidesadetermination of rights based upon legitimate use of the mark. However, it is not necessary to register a trademark or service mark to prevent others from infringing upon the trademark. Trademarks generally become protected even before registration. A trademark exists as soon as it is adopted by an organization and used in commerce with the letters TM used consistently to signify that a particular mark (word, words or logo) is a trademark. With a federal trademark registration, the registrant is presumed to be entitled to use the trademark throughout the United States for the goods or services for which the trademark is registered. Each state also has a trademark registration process. Once a trademark is registered, the owner can begin to use the ® symbol after the mark.
  • 46. South Texas Technology Management Relevant Topics 34 South Texas Technology Management Relevant Sections 34 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 START-UP COMPANIES What is a start-up and why choose to create one? A start-up is a new business entity formed to commercialize one or more related intellectual properties. Forming a start-up business is an alternative to licensing the IP to an established business. A few key factors when considering a start-up company are: Developmentrisk(oftenlargecompaniesinestablishedindustriesareunwilling• to take the risk of early stage technology development); Development costs versus investment return (can the investors obtain their• needed rates of return); Potential for multiple products or services from the same technology (few• companies survive on one product alone); Sufficiently large competitive advantage and target market; and• Potential revenues sufficient to sustain and grow a company.• STTM can help evaluate these and other factors. Who decides whether to form a start-up? The choice to establish a new company for commercializing IP is a joint decision made by STTM and the inventors. What assistance and resources are available to the inventor? STTM assistance to faculty inventors includes: Working with the inventor(s) to identify, develop, and maintain a protectable• patent portfolio. In certain cases, STTM will use internal resources to secure intellectual property rights, typically patents; Assistingwithstrategicplanningandthecreationofacommercialdevelopment• plan that serves as a tactical roadmap for the start-up and a document for acquiring start-up capital. In some cases, STTM is able to access additional human and financial resources for the start-up company to build prototypes, do market assessment, or augment interim management to get the business started and on a clear development path;
  • 47. Relevant Topics utsttm.org 35 The Inventor’s Handbook of Technology Transfer utsttm.org 35 Providing referrals for corporate attorneys and accountants who specialize in• company formation; and Providing introductions to the private equity community, business incubators,• and other sources of technical and managerial assistance and capital. STTM case managers serve as advisors and resource locators to help fill the gap between the technology and the formation of a start-up. Their responsibilities may include helping inventors develop a protectable patent portfolio, making introductionstoprospectivemanagementpersonnel,theprivateequitycommunity and business incubators, reviewing business plans, and providing referrals to experts to work on strategic issues. What role does an inventor usually play in a company? Universityfacultytypicallyserveastechnologyconsultant,advisor,orinsomeother technical developmental capacity. Rarely do faculty choose to leave the university and join the start-up. In many cases, the faculty member’s role may be suggested by the start-up investors and management team, based on the inventor’s expertise and interests. As the company matures, and additional investment is required, the inventor’s role may change. Faculty entrepreneurs must obtain the necessary approvals according to university conflict-of-interest policy and procedures. Student inventors and post-docs may choose to join the start-up upon graduation, but rarely have the experience or business skills to serve as the company’s sole management. The participation of seasoned entrepreneurial management is one of STTM’s keys when assessing a technology for start-up possibilities. How much of my time and effort will it take? Starting a company requires a considerable amount of time and effort. Until the start-up team is identified and engaged, the faculty member will need to champion the formation effort. After the team is in place, effort is required for investor discussions, formal responsibilities in or with the company, and university processes such as conflict of interest reviews. Does the university share equity in the company? Yes, STTM will accept equity in lieu of cash as financial remuneration for a license.
  • 48. South Texas Technology Management Relevant Topics 36 South Texas Technology Management Relevant Sections 36 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 Stock will be sold in an orderly fashion as soon as it is possible to sell it in the public market (i.e., once it is publicly traded and/or any lock-out period has expired). What legal assistance is needed in creating a start-up? Inadditiontocorporatecounsel,thestart-upmayhaveitsownintellectualproperty counsel to assist with corporate patent strategy, especially if the company will be involved in a patent-rich area. Also, it is wise for inventors to have agreements regarding their roles with the start-up reviewed by their own counsel to ensure that all personal ramifications—including taxation and liabilities—are clearly understood. MARKETING TO FIND A LICENSEE How does STTM market my inventions? Licensing and marketing associates use many sources and strategies to identify potential licensees and market inventions. Very often existing relationships of the inventors, STTM staff, and other researchers are useful in marketing an invention. Market research can also assist in identifying prospective licensees. In addition, we also examine other complementary technologies and agreements to assist our efforts. We use our website to post inventions, leverage conferences and industry events, and make direct contacts. Faculty publications and presentations are excellent marketing tools. Doesn’t marketing compromise the confidentiality of my invention? No. STTM will release a non-confidential abstract of your invention to potential licensees, as well as previous related papers and the background of the inventor(s). Results can be presented without compromising patent rights, i.e., explain what an invention does, but not how it does it. If a company demonstrates interest, STTM will obtain a confidential disclosure agreement (CDA) so that we can freely explain to the company how the invention works. How are most licensees found? Studies have shown that 70% of academic licenses originated from an inventor contact. Thus research and consulting relationships are often a valuable source
  • 49. Relevant Topics utsttm.org 37 The Inventor’s Handbook of Technology Transfer utsttm.org 37 for licensees. Licensees are also identified through existing relationships of STTM staff. We attempt to broaden these relationships through contacts obtained from website posting inquiries, market research, industry events, and the cultivation of existing business and research relationships. How long does it take to find a potential licensee? It can take months and sometimes years to locate a potential licensee, depending on the attractiveness of the invention and the size and intensity of the market. Most university inventions are in an early stage of the development and thus require substantial commercialization investment, making it difficult to attract a licensee. How can I assist in marketing my invention? Your active involvement can dramatically improve the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies. Once interested companies have been identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful tech transfer results are obtained when the inventor and the case manager work together as a team to market and license the technology. Can there be more than one licensee? Yes, an invention can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies, each for a unique field-of- use (application) or geographic area. LICENSE AGREEMENTS What is a license? A license is a permission for access to intellectual property that the owner or controller grants to another party. Usually the licensed IP is one or more patents, but it can also be know-how, trademarks, or copyrighted materials.
  • 50. South Texas Technology Management Relevant Topics 38 South Texas Technology Management Relevant Sections 38 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 What is a license agreement? License agreements describe the rights and responsibilities accepted by the licensor and licensee related to the access to, and utilization of, intellectual property. Financial consideration for the grant of IP rights typically includes fees due at license execution (up-front fees), payments made upon achieving certain mutually determined performance objectives (milestone payments), and royalties which are periodic payments based on a percentage of the product’s sales. Also, university license agreements stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good. If the licensee fails to meet important terms and conditions defined in the license, the agreement may be terminated by the university and the university would be free to license the invention to another company. Licensees may terminate at their discretion. How is a business chosen to be a licensee? A licensee is chosen based on its ability to commercialize the technology for the benefit of the general public. Sometimes an established business with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a start-up company is a better option. Typically, a university does not have multiple potential licensees bidding on an invention. Are all license agreements the same? No. The breadth and application of inventions lend themselves to different risk and commercial pathways; licenses must reflect these conditions. For example, licenses may be exclusive (to one company) or non-exclusive (more than one company receives rights). Given company capabilities, the license could be broad or restricted to specific fields or territories. What can I expect to gain if my IP is licensed? Per Regent policy, a share of any financial return from a license is provided to the inventor(s). Most inventors enjoy the satisfaction of knowing their inventions are being deployed for the benefit of the general public. As well, new and enhanced relationships with businesses, which may include access to industry resources,
  • 51. Relevant Topics utsttm.org 39 The Inventor’s Handbook of Technology Transfer utsttm.org 39 facilities, and expertise, are another outcome that can augment one’s teaching, research, and consulting. What is the relationship between an inventor and a licensee and how much of my time will it require? Most licensees require the assistance of the inventor to facilitate their commercialization efforts. This assistance can range from infrequent, informal contacts to a consulting relationship separate from the license agreement. Working with a new business start-up can require substantially more time, depending on your role in or with the company and your continuing role within the University. Your participation with a start-up is governed by conflict of interest policies and the approval of your supervisor. STTM structures licenses so as to restrict access of licensees to faculty to a reasonable degree. What other types of agreements and considerations apply to tech transfer? A• Confidential Disclosure Agreement (CDA) is a document that, when signed, will allow one or both parties to discuss their confidential information, including their work and ideas, with other interested parties. It legally binds those parties to keep the information confidential for a period of time and not to disclose it to third parties. A one-way confidentiality agreement allows one party to disclose to another. A two-way, or mutual, confidentiality agreement allows both parties to disclose confidential information to each other. STTM will assist in determining which document best suits your specific needs and prepare and execute the appropriate type of CDA. Only certain designated officers of each institution have the delegated authority to execute these agreements. A CDA is also referred to as a nondisclosure agreement (NDA). A• Materials Transfer Agreement (MTA) is used for incoming and outgoing materials at the university and administered by the institution sponsored programs office. These agreements describe the terms under which university researchers and outside researchers may share materials, typically for research or evaluation purposes. Intellectual property rights can be endangered if materials are used without a proper MTA. Researchers may be asked to sign an MTA as evidence that they have read the agreement and will comply with
  • 52. South Texas Technology Management Relevant Topics 40 South Texas Technology Management Relevant Sections 40 Section C - STTM Methodology Section A - Information for Inventors 1 STTM Liaison Reference Table vii Section B - Technology Transfer Practice 8 Contacts & Notes 52 its terms. However, since an MTA is a binding contract, the official signature must come from a delegated institution representative. An• Inter-Institutional Agreement(IIA) describes the terms under which two or more institutions (e.g., two universities) will collaborate to assess, protect, market, license, and share in the revenues received from licensing jointly owned intellectual property. An• Option Agreement or Option Clause within a research agreement describes the conditions under which the university preserves the opportunity for a third party to negotiate a license for intellectual property. Option clauses are often provided in a Sponsored Research Agreement to corporate research sponsors or are entered into with third parties wishing to evaluate the technology prior to entering into a license agreement. A• Sponsored Research Agreement describes the terms under which sponsors provide research support to the University. These agreements are negotiated by each institution’s Office of Sponsored Programs. THE LICENSING AGREEMENT AND STRATEGY STTM Licensing Strategy STTM seeks to patent and license technologies that have an industrial application. STTM and all university technology transfer offices have a mandate under the Bayh-Dole Act to manage the intellectual properties that result from federally funded research. STTM seeks to license these technologies to private companies willing and able to produce a product using the licensed intellectual property in exchange for royalties and other consideration. Although STTM has a duty to manage technologies from the four consortium universities, STTM does so at its discretion. That is, STTM will seek to invest time and resources managing an invention only if the invention has a reasonable chance for “success” (sometimes defined broadly). Bedrock Principles include: Support for and service to faculty.• STTM exists to serve and support the work of university faculty members. Our goal is to be a resource that university faculty can trust and rely on to protect their valuable IP so they can concentrate on teaching and training students,