WHY DOES UT SOUTHWESTERN MEDICAL CENTER PARTICIPATE IN TECHNOLOGY TRANSFER?

In 1980, the Bayh-Dole Act standardized patent policies in federal agencies that fund research to require small businesses and non-profit organizations to retain title to inventions created with federal funds. By 1999, technology transfer at U.S. universities had added $40 billion to the U.S. economy and 260,000 jobs. Recently, technology development was added to a mission of the University of Texas System.

INVENTING AND DISCLOSING

What is an invention?
An invention is a new, non-obvious, and useful process or method, machine, article of manufacture, composition of matter, or related improvement. Inventions are created in two steps: conception, the mental formulation of how a desired result is achieved, and reduction to practice, the demonstration that the invention achieves the desired result.

How do I know if I have invented?
If you can answer "yes" to any of the following questions, please complete an Intellectual Property Questionnaire (IPQ) and send it to the Technology Analyst in the Office for Technology Development.

1. Have I built or modified an instrument or device to fulfill a perceived need?
2. Have I discovered or developed a new technique for research or patient care that is not described in the scientific literature?
3. Have I discovered or developed a new chemical compound, drug, formulation, antibody, gene or protein sequence, or genetically engineered organism?
4. Have I made an "early stage" scientific discovery that I think may be significant?
5. Have I made an improvement on a product while testing it for a company?
6. Have I created a process or a method of using an existing product in a different way that what is already known? 

Must I inform the UT Southwestern Office for Technology Development of my invention?
As a condition of employment, UT System policy dictates that all UT Southwestern employees (including students, postdoctoral fellows, clinicians, and faculty members) disclose inventions and discoveries if they were created under at least one of following conditions: utilizing UT Southwestern facilities, on UT Southwestern time, or relating to employment duties at UT Southwestern.

Does UT Southwestern own every invention I create?
The Board of Regents of the University of Texas System, through UT Southwestern, owns rights to inventions created by employees where one of the following is true: the invention is related to UT Southwestern employment duties, the invention was made utilizing UT Southwestern facilities, or the invention was created on UT Southwestern time. If you invent something unrelated to your UT Southwestern employment on your free time and using your facilities, then UT Southwestern will not claim ownership to that invention.

UT Southwestern owns the rights to inventions created under federal grants issued to UT Southwestern. Additionally, the United States government also has certain rights to inventions created under federal grants.
UT Southwestern owns the rights to inventions created under non-federal grants issued to UT Southwestern unless the granting organization specifically retains ownership of inventions via the grant agreement.
Ownership of inventions created under a Sponsored Research Agreement, Lab Study Agreement, Clinical Study Agreement, or Material Transfer Agreement is dictated by the language in the Agreement. Therefore, it is critical to inform the UT Southwestern Office for Technology Development of these Agreements when an invention is disclosed.

What happens if I invented with NIH (or another agency's) funds?
UT Southwestern owns the rights to inventions created under federal grants issued to UT Southwestern. UT Southwestern must inform the NIH of your invention within two months of the invention's disclosure. Within one year of the invention's disclosure, UT Southwestern must inform the NIH if it elects to retain title to the invention.

What if my co-inventors are employed by different entities?
UT Southwestern will work with the entities that employ co-inventors to formulate a Joint Ownership Agreement whereby the entities agree to share or delegate costs, revenues, and commercialization opportunities for that invention.

How can I demonstrate my inventive contribution?
To demonstrate your inventive role, follow these guidelines: (1) keep detailed and accurate laboratory notebooks to document the dates of the conception and development of the patentable idea, including descriptions, drawings, photographs, and any other documentation that may be applicable and (2) sign and date each entry and have at least one witness sign and date the entries. The witness should not have a participating role in the project and/or invention.

How do I notify the UT Southwestern Office for Technology Development of an invention I have created?
Sending a completed Intellectual Property Questionnaire to the UT Southwestern Office for Technology Development is the first step in disclosing the invention. The Technology Analyst will then analyze the invention and connect prior art (printed matter) related to the invention. You will likely be asked at some point during the disclosure process to provide feedback on such prior art, or answer questions about your invention. Your cooperation during this first evaluation process is critical to ensure that the UT Southwestern Office for Technology Development understands your invention completely.

How are inventions evaluated?
The questions that the UT Southwestern Office for Technology Development asks about new inventions follow.

1. Does UT Southwestern own the technology?
2. Do provisions of a Material Transfer Agreement or funding agreement (Sponsored Research Agreement, Clinical Study Agreement, etc.) govern or restrict our rights in this invention?
3. Does the invention meet the United States Patent and Trademark Office's criteria for a patentable invention?
4. Is UT Southwestern willing and able to enforce its patent rights that cover the invention?
5. Can we identify one or more commercial products?
6. Is the invention well-developed, or will it require significant development?
7. How big is the potential market?
8. What competitive advantages would this new product(s) have in the marketplace?
9. Are there significant limitations to the technology?

Depending upon the answers to these questions, the Office for Technology Development may elect to patent and/or market the invention. Inventors will be notified of the Office for Technology Development's intentions as soon as possible, usually within 10 days of receiving the completed Intellectual Property Questionnaire.

How does UT Southwestern protect inventions?
There are three devices to protect intellectual property: trade secret, copyright, and patent. Trade secrets are inconsistent with UT Southwestern's mission of education and are therefore never utilized by UT Southwestern. Copyrights are appropriate for protecting software, videos, and other works. U.S. patents are federal grants to exclude others from making, using, or selling a particular invention in the United States in exchange for fully disclosing the invention in an issued patent.

How does notifying the Office for Technology Development of my invention affect my ability to publish?
The Office for Technology Development should be informed of your invention before you submit your manuscript that describes the invention.  The Office for Technology Development does not interfere with inventors' publishing plans.

As an inventor, may I acquire rights to the invention I created?
Under some circumstances, UT Southwestern is willing to license an invention back to its inventor when the inventor agrees to reimburse UT Southwestern for its patenting costs (if any) and pay UT Southwestern 25% of any resulting proceeds.

PATENTING

Are all inventions patentable?
Patentable inventions are defined by United States Code Title 35. To be patentable, an invention must be useful, novel, and non-obvious. A useful invention has a recognizable purpose to a person having ordinary skill in the art. A novel invention was previously unknown. A non-obvious invention is unexpected or surprising to a person having ordinary skill in the art at the time the invention was made. Note that inventions comprised of known elements whose combination is non-obvious and new uses for already existing devices or compounds are patentable.

How does UT Southwestern decide to patent inventions?
Filing a patent application is an expensive process. Thus, before UT Southwestern files any patent application, it considers the following with respect to the invention: obligations to the sponsors of the research, commercial utility, competitive superiority, necessity for extensive development work, and licensee availability.

How is inventorship determined?
U.S. Patent law defines an inventor as an individual who contributes to at least one patent claim. Therefore, it is common for named inventors to change during the patent's prosecution. If inventors are named to a patent erroneously or are omitted, the patent can be invalidated. Only those persons who made an inventive contribution to the claimed invention may be listed as inventors.

Can software be patented?
Software code may constitute an invention and may be patented in some cases; however, software is more commonly and economically copyrighted. Depending on the circumstances surrounding the creation of the work, UT Southwestern may own the copyright or the inventor may own the copyright with educational uses reserved for UT Southwestern. Any media intended to be protected should carry a notation on the title or cover page (e.g. "Copyright, The University of Texas Southwestern Medical Center at Dallas, [year]).

How can I preserve UT Southwestern's ability to claim patent rights?
To preserve foreign patent rights, a patent application must be filed before an invention is publicly disclosed. To preserve U.S. patent rights, a patent application must be filed within one year of an invention's public disclosure. An inventor should complete an Intellectual Property Questionnaire describing an invention before disclosing it to the public. Public exposure includes presenting a poster, publishing an abstract or manuscript, posting on the internet, and speaking to an audience that may include individuals not employed by UT Southwestern.

COMMERCIALIZING

Must inventions be patented to be commercialized?
Inventions may be commercialized without patent protection. There are many kinds of inventions that are easily commercialized without patenting, including research reagents and software.

How does UT Southwestern commercialize technology?
UT Southwestern can commercialize patented, patent-pending, and unpatented technology. Representatives of the Office for Technology Development work together to identify parties most likely interested in the invention. Oftentimes, inventors are best able to identify potentially interested parties. Commercial parties potentially interested in the invention are contacted and informed of non-confidential aspects of the invention. If these parties request additional, confidential information, a Confidential Disclosure Agreement or a Non-Disclosure Agreement can be drafted. Representatives from the Office for Technology Development will solely negotiate licenses and options, although inventors can be indispensable to the process. The Office for Technology Development is responsible for enforcing and administering all licenses and options and distributing monies paid by third parties to inventors.

How will I be compensated when my invention is commercialized?
If an invention is commercialized through ordinary licensing activities to an existing entity, monies received are first used to reimburse UT Southwestern for expenses, including patent costs. The amount remaining is subject to the following sharing formula: 50% to the inventors as personal income, 25% to the lab of the inventors, and 25% to the Office of the President of UT Southwestern. If an inventor leaves UT Southwestern, he or she forfeits lab disbursements but not personal income disbursements. Compensation in the form of equity is not subject to this distribution formula.

What should I do if a company wants me to share unpublished information related to my invention?
If you are willing to share unpublished information with a company, contact a Licensing Associate in the Office for Technology Development who will work with a representative of the company to draft a Confidential Disclosure Agreement (or the equivalent Non-Disclosure Agreement). Once the agreement is executed you will be free to share the information with the company.

How can I send research reagents to my colleague at another university?
Accompanying research reagents with a Material Transfer Agreement is the best way to make them available for non-commercial research. Office of Contracts Management administers Material Transfer Agreements. Commercial entities expect to pay a nominal amount of money for non-exclusive access to research reagents.

START-UPS

If my invention is licensed to a UT Southwestern - sponsored start-up company, how can I expect to be compensated?

Compensation can occur as equity in the company; a share in up-front licensing payments or downstream royalty revenues; research funds in the form of a Sponsored Research Agreement; or personal income as a consultant for the company; or as a member of the company scientific advisory board (SAB).

If my invention is licensed to a UT Southwestern - sponsored start-up company, what role will I play in the company?

The Office for Technology Development recognizes that your involvement is integral to the success of the start-up but it should not interfere with your basic research. We would hope that you would be interested in continuing to perform basic research in the area of focus for the company, perhaps under a Sponsored Research Agreement; consulting with the Board of Directors and other executives to determine the scientific aims of the company; and perhaps sitting on the Scientific Advisory Board.

If my invention is licensed to a UT Southwestern - sponsored start-up company, will I have to leave my position at UT Southwestern?

Up to 20% of your time can be spent in company activities that are consistent with UT Southwestern policies. The Office for Technology Development maintains a neutral position in instances where a faculty member might choose to change careers by joining a start-up company. Thus, this decision is yours and not determined by The Office for Technology Development.

What kinds of inventions does UT Southwestern use in a UT Southwestern - sponsored start-up company?

If an invention (or family of related inventions) provides a broad technology platform or a particularly promising single product, it may form the basis of a start-up company.

The answer to my question isn't listed here. How can I find out more?
Contact the Office for Technology Development.