Question: What is an invention?
Answer: 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.
Question: How do I know if I have invented?
Answer: If you can answer "yes" to any of the following questions, please complete an Invention Disclosure Form and send it to the Office of Tech Tranfer:
- Have I built or modified an instrument or device to fulfill a perceived need?
- Have I discovered or developed a new technique for research or patient care that is not described in the scientific literature?
- Have I discovered or developed a new chemical compound, drug, formulation, antibody, gene or protein sequence, or genetically engineered organism?
- Have I made an "early stage" scientific discovery that I think may be significant?
- Have I made an improvement on a product while testing it for a company?
- Have I created a process or a method of using an existing product in a different way that what is already known?
Question: Must I inform the UTPA Office of Tech Transfer of my invention?
Answer: As a condition of employment, UT System policy Series 9000 dictates that all UTPA 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 UTPA facilities, on UTPA time, or relating to employment duties at UTPA. Also, please see UTPA Handbook of Operating Procedures Policy 4.10.2 Intellectual Property.
Question: Does UTPA own every invention I create?
Answer: The Board of Regents of the University of Texas System, through UTPA, owns rights to inventions created by employees where one of the following is true: the invention is related to UTPA employment duties, the invention was made utilizing UTPA facilities, or the invention was created on UTPA time. If you invent something unrelated to your UTPA employment on your free time and using your facilities, then UTPA will not claim ownership to that invention.
UTPA owns the rights to inventions created under federal grants issued to UTPA. Additionally, the United States government also has certain rights to inventions created under federal grants. UTPA owns the rights to inventions created under non-federal grants issued to UTPA 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 Office of Tech Transfer of these agreements when an invention is disclosed.
Question: What happens if I invented with NIH (or another agency's) funds?
Answer: UTPA owns the rights to inventions created under federal grants issued to UTPA. UTPA must inform the NIH (NSF, DoD, DoE) of your invention within two months of the invention's disclosure. Within one year of the invention's disclosure, UTPA must inform the agency if it elects to retain title to the invention.
Question: What if my co-inventors are employed by different entities?
Answer: UTPA 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.
Question: How can I demonstrate my inventive contribution?
Answer: To demonstrate your inventive role, follow these guidelines:
- Keep detailed and accurate laboratory notebooks to document the dates of the conception and development of the patentable idea, including descriptions, drawings, photographs, and any other documentation that may be applicable.
- Sign and date each entry and have at least one witness sign and date the entries. The witness should not have a participating role in the project and/or invention.
Question: How do I notify the UTPA Office of Tech Transfer of an invention I have created?
Answer: Sending a completed Intellectual Property Questionnaire to the UTPA Office of Tech Transfer is the first step in disclosing the invention. TT 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 UTPA Office of Tech Transfer understands your invention completely.
Question: How are inventions evaluated?
Answer: The questions that the UTPA Office of Tech Transfer asks about new inventions are as follows:
- Does UTPA own the technology?
- 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?
- Does the invention meet the United States Patent and Trademark Office's criteria for a patentable invention?
- Is UTPA willing and able to enforce its patent rights that cover the invention?
- Can we identify one or more commercial products?
- Is the invention well-developed, or will it require significant development?
- How big is the potential market?
- What competitive advantages would this new product(s) have in the marketplace?
- Are there significant limitations to the technology?
Depending upon the answers to these questions, the OTT may elect to patent and/or market the invention. Inventors will be notified of the OTT intentions as soon as possible, usually within 30 days of receiving the completed Intellectual Property Questionnaire.
Question: How does UTPA protect inventions?
Answer: There are three devices to protect intellectual property: trade secret, copyright, and patent. Trade secrets are inconsistent with UTPA's mission of education and are therefore never utilized by UTPA. 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.
Question: How does notifying the Office of Tech Transfer of my invention affect my ability to publish?
Answer: The OTT should be informed of your invention before you submit your manuscript that describes the invention. The OTT does not interfere with inventors' publishing plans.
Question: As an inventor, may I acquire rights to the invention I created?
Answer: Under some circumstances, UTPA is willing to license an invention back to its inventor when the inventor agrees to reimburse UTPA for its patenting costs (if any) and pay a graduated royalty to UTPA of any resulting proceeds are expected.
Question: What portion of the royalties will I receive from my invention?
Answer: Successful commercialization of an invention is generally manifested as periodic royalties from the sales generated by use of the invention from a corporation. Disbursement of periodic royalty payments will be based upon the following: 50% - Inventor; 50% - Office of Research.