Inventor Handbook

An Overview of Technology Transfer for Faculty, Staff, and Students of the UT Southwestern Medical Center

Disclosing Your Invention

The University Owns Inventions

The Board of Regents of the University of Texas System (Board) has an ownership interest in all inventions made by UT 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 Board 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 UT Southwestern Medical Center. The following 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

UT Southwestern personnel who, either alone or in association with others, make an invention in which the Board has or may have an interest, must disclose such inventions on an Intellectual Property Questionnaire Form provided for this purpose by the Office for Technology Development (OTD). 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. If the inventor believes that the invention was made outside the general scope of his or her UT Southwestern duties and without benefit of University resources, and therefore may not be owned by the Board, 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 they wish to seek voluntary assignment of the invention to the Board (with prior approval of UT Southwestern) 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 make an enabling public disclosure your invention to someone who is not obligated to treat the disclosure as confidential, the Board and UT Southwestern risk losing the ability to file patents. Most inventions are considerably devalued or may be rendered 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 until it has been disclosed to OTD. 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 and Limited Use Agreement (CDA) with that company or university. A CDA protects our right to file patents and makes it more difficult for unscrupulous persons to steal your ideas (although a patent is the best long term defense against such theft). Only certain UT Southwestern administrators (including the Vice President for Technology Development) are authorized to sign CDAs. Neither Department Chairpersons nor 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 review and processing.

Turn to OTD for Help with Inventions

The Office of Technology Development is the steward of intellectual properties developed at UT Southwestern. OTD will use its best efforts to benefit the public by making your invention commercially available. Additionally, OTD strives to make the administrative aspects of commercializing your invention as simple as possible with the least possible intrusion on your time. Further, OTD will try to the extent of our resources to meet your needs and expectations and your suggestions on how we can better fulfill our responsibilities.

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 an email to This e-mail address is being protected from spambots. You need JavaScript enabled to view it .

Description of Agreement

Confidential Disclosure Agreements
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For sharing or receiving confidential unpublished/nonpublic information with/from outside organizations.

Patents
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For protecting intellectual property rights in inventions developed at UT Southwestern in the United States and abroad.

License Agreements
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For granting a company the right to make, use, or sell an invention developed at UT Southwestern Medical Center.

Options
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For granting a company an option, to be exercised in the future at the company's discretion, to a license (see above) to a UT Southwestern invention.

Start-ups/Equity Deals
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For evaluation of a technology or family of technologies for the potential to sustain a start-up enterprise and the negotiation with venture capitalists, strategic investors, and other resources for business development.

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

Material Transfer Agreement: Incoming and Outgoing
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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
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For consulting relationships between UT Southwestern faculty and commercial entities, outside employment must be reviewed and approved. Please note that responsibilities necessary to carry out obligations under consulting agreements may not use UT time, facilities or resources. Consulting agreements are personal agreements between faculty and companies and must therefore be approved as outside employment. Karen Adams in the Office for Legal Affairs will assist you in ensuring the consulting agreement complies with UT Southwestern policies. See the UT Southwestern Medical Center policy on External Professional Activities for Pay.

Marketing Inventions

Purpose
Marketing technologies to interested companies maximizes licensing potential. Technology developed at UT Southwestern and not previously committed to a commercial sponsor will be marketed as appropriate to potentially interested commercial entities.

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 UT Southwestern is to take the lead in identifying potential licensees and the technology is ready for commercialization, a non-confidential description of the technology is prepared. This description is intended to spark interest in the technology. The elements of a nonconfidential description are:

• a summary of the technology developed, stressing the commercial potential of the technology;
• the current state of competing products in the market place and their limitations; and
• an indication of why this technology is superior to existing technologies and why it presents potential licensees with a competitive advantage.

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

OTD is responsible for developing marketing materials, but it is helpful if the inventor is actively involved in its development.

Next Steps
Companies expressing interest in the technology will often seek confidential information to aid in the review and evaluation of the technology. At this point, a Confidential Disclosure and Limited Use Agreement will typically be executed to enable the transfer of confidential information. If materials need to be evaluated by the company, a Material Transfer Agreement will be executed to enable the transfer of materials.