In accordance with U.T. Arlington and U.T. system policy, all faculty, staff, and students are required to disclose any inventions that are created during the normal course of their employment or studies. Detailed information on who must disclose patentable inventions can be found in the Inventor’s Handbook here.
Disclosure of potentially patentable material should be made when the inventor believes they have a discovery, creation, or invention. This includes software.
Inventions should also be disclosed and evaluated for patenting prior to submission to an academic journal or any other public disclosure. Publishing papers, presenting at conferences, or thesis defense may endanger the patentability of the invention by establishing it as public domain.
As a rule of thumb, it is better to disclose earlier rather than later. While every effort will be made to protect intellectual property prior to publishing, no guarantees will be made. Disclosures that are time sensitive should be clearly marked and the time constraints should be clearly listed in both the disclosure and a separate email to otm@uta.edu
The disclosure process is divided into 4 stages, disclosing, evaluation, committee review, and patenting.
- Disclosing
- The disclosing process begins with the completion of the Intellectual Property Disclosure form by all inventors. Inventors must submit an originally signed document to the Office of Technology Management in addition to an electronic copy mailed to otm@uta.edu
- Upon submission, OTM staff will send an acknowledgement email to all inventors and assign the disclosure a reference number. Please include this reference number in all correspondence.
- Inventors must complete an assignment form that assigns their rights to U.T. System. This assignment is required under U.T. System policy and no further steps may be taken until the assignment is complete. The assignment form must be notarized. OTM staff offer free notarization for assignments.
- The disclosure is checked for statutory bars and referred to the evaluation stage.
- Evaluating
- Upon receipt of a new disclosure, the Venture Lab begins to assess the marketability, patentability, and scientific merit of the invention.
- With the assistance of an experienced business coach, the invention is evaluated for start-up or licensing potential.
- A final recommendation is forwarded to the IP Scientific Committee for review.
- Committee Review
- Comprised of invited members of the U.T. Arlington community with expertise in the subject field and OTM staff, the Scientific Committee will invite the inventors to give a 15 minute presentation to address the scientific and business merits of their invention. A 15 minute question and answer session will follow the presentation.
- At the conclusion of their meeting the committee will recommend to the Executive Committee to file for patent protection, release of invention to inventors, or request a hold until further research is submitted.
- The executive committee will then review the recommendation and take into account financial, commercial, and scientific factors in making a final determination. The Executive Committee’s decision is final.
- Patenting Process
- If a patent is recommended, inventors will be notified and the patent process will begin
- All publications, disclosures, and related research is forwarded to a law firm for construction of a patent application.
- The law firm will often request a conference with inventors to gain a better understanding of the invention and clarify any questions. Additional contact may be made via email. Inventors are requested to only contact or speak with legal counsel with specifically authorized to by The Office of Technology Management. Under no circumstances should inventors authorize or request legal services directly from a law firm
- Protection of Research:
Disclosing an invention will assist in protecting potentially valuable research by beginning the patent process early. This will allow researchers to clearly establish the priority of their invention over other researchers in the same field. - Increased Collaboration:
Many inventors are unaware of potential collaborators within the U.T. Arlington community. There are often multiple research projects being conducted that can benefit each other. By disclosing your invention, The Office of Technology Management can provide referrals to other researchers with similar interests. Our office maintains close relations with every U.T. Arlington department, all major universities, and large corporations in the North Texas region. If you are seeking help on establishing research collaboration, please feel free to contact our office for potential references. - Financial:
In accordance with policy, the University of Texas at Arlington divides all net royalty income in a 50/50 split with inventors. For a detailed description of how royalty income is calculated, consult the Inventor’s Handbook found here.
- Complete and sign a disclosure form.
- Send the form to the Office of Technology Management at 202 E. Border St, Suite 214, Box 19161, Arlington, TX, 76019.
- Send an electronic copy of the disclosure to otm@uta.edu
- Complete an Assignment of Rights document and obtain a notarization for all inventors and submit to OTM.
- Submit any subsequent discoveries relating to the disclosure to otm@uta.edu. These discoveries will assist in evaluation the disclosure for patenting.
- Maintain contact with OTM during the evaluation process to answer any questions relating to the invention.
- Prepare and present a 15 minute presentation to the I.P. Committee. This presentation should not only focus on the scientific merits of the invention, but also the commercial viability of the invention. The presentation should address such issues as market size, competing products, strengths and weaknesses, and any potential licensees the inventor has had contact with.