Disclosing Your Invention

The University Owns Inventions
The UT Southwestern Medical Center at Dallas (University) has an ownership interest in all inventions of University personnel (i.e., faculty, staff and students) that are conceived or first actually reduced to practice as a part of or as a result of University research, activities within the scope of the inventor's employment by the University, or with the use of University resources. In other words, the University owns inventions made by University personnel or with University resources. The Office for Technology Development implements the policies of the National Institutes of Health, The UT System, and the UT Southwestern Medical Center. The linked pages will describe in greater detail the rights and responsibilities of University personnel with regard to inventions made with University resources.

Invention Must Be Disclosed
University personnel who, either alone or in association with others, make an invention in which the University has or may have an interest, must disclose such inventions on an Intellectural Property Questionnaire Form provided for this purpose by the Office for Technology Development. OTD will promptly acknowledge its receipt of completed disclosure forms and will work with the inventor(s) to manage the invention in the best interest of the University, the inventors, and the public. Forms and help in their preparation are available from OTD. If the inventor believes that the invention was made outside the general scope of his or her University duties and without benefit of University resources, and therefore is not properly owned by the University, the inventor should in the disclosure form describe the circumstances under which the invention was made and the inventor's official duties at the time of making the invention. If OTD determines that the invention is, in fact, the property of the inventor, the inventor can then consider whether to voluntarily assign rights in the invention to the University, or to maintain personal ownership.

Discussing Your Invention with Others
It is important that you not discuss your invention with persons outside of the UT Southwestern community and certainly that you not publish or display it without first disclosing it to OTD. The reason for exercising caution is that under patent law, if you disclose your invention to someone who is not obligated to treat the disclosure as confidential, you and UT System risk losing the ability to file patents. Most inventions are considerably devalued or are worthless to companies if they cannot be patented. (Even if you are not sure if your invention is, in fact, patentable, you should not disclose it outside of UT Southwestern Medical Center until it has been disclosed to our office. OTD can help you make the determination of whether your technology is patentable or otherwise protectable.)

Confidentiality Agreements Protect Rights
When you want to discuss your technology with colleagues at other universities or companies, OTD will prepare and execute a Confidential Disclosure Agreement (CDA) with that company or university. A confidentiality agreement protects our right to file patents and makes it more difficult for unscrupulous persons to steal your ideas (although a patent is the best defense against such theft). Only certain UT Southwestern administrators (including the Vice President for Technology Development) are authorized to sign CDAs. Neither Department Chairpersons or faculty members are authorized to sign these agreements. If you receive such an agreement from a company or another university, forward it to OTD for processing.

Turn to OTD for Help with Inventions
The Office of Technology Development takes seriously its role as steward of the technology resources held by the University. We will use our best efforts to benefit the public by making your invention commercially available. Additionally, we strive to make the administrative aspects of commercializing your invention as simple as possible with the least possible intrusion on your time. Further, we try to the extent of our resources to meet your needs and expectations. We welcome your suggestions on how we can better fulfill our obligations to you.

There is a good deal of information on the OTD homepage about the commercialization of University inventions and what role you, as inventors, play in that process. We hope you will take a few minutes to familiarize yourself with the available material and then, if you have questions or comments, feel free to call OTD at 214-648-1888, or send email to The Office for Technology Development.

Description of Agreement

Confidential Disclosure Agreements
Contact: Steven Lin
For sharing or receiving confidential nonpublished/nonpublic information with/from outside organizations.

Patents
Contact: Ray Wheatley
For protecting intellectual property rights of UT Southestern Medical Center inventions in the United States and abroad. Note: public disclosure (through oral presentations, abstracts, or written papers) before filing a patent application will prevent UT Southwestern from filing for patents in most foreign countries.

License Agreements
Contact: The Office for Technology Development
For granting a company the right to make, use, or sell an invention developed at UT Southwestern Medical Center.

Options
Contact: The Office for Technology Development
For granting a company an option, to be redeemed by a defined date in the future at the company's discretion, to a license (see above) to a UT Southwestern invention.

Start-ups/Equity Deals
Contact: Lawrence E. (Joe) Allred
For evaluation of a technology or family of technologies which may be able to sustain a start-up enterprise and the negotiation with venture capitalists, strategic investors, and other sources of business development capital.

Corporate Sponsored Research
Contact: Kathy Schutt
For receiving research funding from a company; company usually receives right to access or negotiate for any intellectual property developed with the research funding.

Material Transfer Agreement: Incoming and Outgoing
Contact: Kathy Schutt
For sending UT Southwestern materials to outside scientists in academia, government, or industry or for obtaining materials from outside organizations, select appropriate Form under Contracts Management via your iAim  account.

Consulting Agreements
Contact: Karen Adams, Office of Legal Affairs
For hiring faculty to provide advice on specific projects. Note that consulting agreements are personal to the faculty member but Karen Adams will review the agreement to ensure that it does not contradict any University policies. See the UT Southwestern Medical Center policy on External Professional Activities for Pay.

Marketing Inventions

Purpose
Marketing technologies to companies potentially interested in them will give these technologies the greatest chance of being licensed. Technology developed at the University and not previously committed to a commercial sponsor will be marketed to as many companies as appropriate.

Procedures
Contacts are established with potential licensees by three primary routes:

• approaches by the University to potentially interested parties;
• approaches to the University by interested parties who have read a paper describing the work or heard a talk about it;
• personal contacts to whom the inventor describes the work.

Non-Confidential Disclosure
If the University is to take the lead in identifying potential licensees, a non-confidential disclosure is prepared. This is a marketing document that has no restrictions on the use to which it will be put, and is intended to spark interest in the technology. The elements of a nonconfidential disclosure are:

• a summary of the technology developed, stressing the results achieved, not how they were achieved;
• the current state of competing products in the market place and their limitations; and
• an indication of why this technology is superior and will offer the licensee a competitive advantage.

As part of this process, all of the specific applications of the technology should be identified. These may constitute discrete fields of use (i.e., markets) that can be licensed separately.

It is helpful if the inventor is actively involved in the preparation of a nonconfidential disclosure; however, OTD will develop one as necessary using information supplied during the invention disclosure process.

The non-confidential disclosure will be provided to companies known or believed to be interested in the fields of use of the invention.

Next Steps
Companies that express interest normally will be asked to sign a confidentiality agreement. Subsequently, the OTD will send confidential information, such as a patent application or research data, to them. Companies will also generally want to talk with the inventor at this stage.

Finally, all interested companies will be asked to submit proposed license terms, covering both the financial aspects and the developmental commitment they are prepared to make. These proposals will be compared and the most appropriate one(s) selected for license negotiation.