For Researchers - FAQ

UTA POLICY & PROCEDURES

• What is the University's process for evaluating an IP disclosure?

• When should a disclosure form be submitted?

• What is the purpose of a disclosure document?

• Does submitting an Invention Disclosure to OTM secure protection?

• What are my rights under the university IP policy?

• What are my responsibilities under the university IP policy?

• Why is intellectual property important to the university?

• What does the university do with its intellectual property?

• Why is intellectual property important to the inventor?  

• What if UTA does not want to pursue the intellectual property protection?

INTELLECTUAL PROPERTY FAQS

• What is intellectual property?

• Why should I bother protecting my intellectual property?

• How is intellectual property protected?

• I need to share my work with my fellow colleagues. How does protecting my intellectual property help this effort?

• I have a paper that I want to send in for publication. Does that matter for purposes of protecting my intellectual property?

• What happens if my invention is publicly exposed?

• What constitutes public disclosure?

• Does the invention have to be totally new to obtain a patent?

• What are the different types of patents?

PATENT FAQS

• What constitutes an inventor?

• What is "prior art" and how do I find it?

• What is a patent search?

• What kind of patent searches are available?

• Is an online computer search enough for the search process?

• What is a patent?

• What can be patented?

• What is a provisional application?

• Are provisional applications available for search?

• What is a utility patent?

• Does the inventor have the same rights over his or her invention under a "patent pending" status?

• How long does it take to obtain a patent?

• How do I check the status of my patent application?

• How many years will my patent last?

• Can an invention be corrected once a patent is granted?

• Does it cost anything to file a patent?

• What is a notice of allowance?

• What is a maintenance fee?

• What happens when a patent expires?

• Do the rights granted by a United States patent extend to foreign countries?

COMMERCIALIZATION FAQS

• What is a Confidentiality Agreement?

• Who can sign a Confidentiality Agreement?

• What is a Non-Disclosure Agreement?

• What is an Exclusive, Non-Exclusive, Option Agreement License?

• How much inventor involvement is there in the licensing of technology?

• Where are potential licensees found?

• How long does it take to execute a license agreement?

• What happens after a license has been executed?

• How are inventors contribution percentage assigned?

• How does UTA distribute royalties?

• What financial terms are included in a license agreement?

• How do companies use university-licensed intellectual property?

• What kinds of economic incentives exist for a company to motivate them to in-license?

• Can companies take my intellectual property and use them to their advantage?

• Does UTA take equity as part of a licensing deal?

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UTA POLICY & PROCEDURES

What is the purpose of a disclosure document?

Submission of an IPD is a first step in disclosing your invention to the University. Our office will stay in touch and guide you through the entire process. You can also obtain some additional information at http://uta.edu/ra/otm. Important! Mere submission of an IPD does not mean that your technology is protected and has a patent pending status. It is protected/has patent pending status only if and when an actual patent application is filed.

Does submitting an Invention Disclosure to OTM secure protection?

Submitting an invention disclosure to OTM does not directly result in any form of protection. OTM Will apply for appropriate protection after performing thorough due diligence on the technology disclosed.

What are my rights under the university IP policy?

Inventors have the right to share in the financial rewards of successfully licensed intellectual property. Please see section 2.5 of the Intellectual Property Policy (UT System Board of Regents’ Rules and Regulations 90101 Series:Intellectual Property (Read Here). If the university decides not to pursue protection of the intellectual property, then inventors have the right to petition to gain the rights to the intellectual property for themselves.

What are my responsibilities under the university IP policy?

All researchers are responsible to disclose all intellectual property that could constitute inventions or copyrightable works to the Office of Technology Management. This is done through the completion of an Invention Disclosure Form.

Why is intellectual property important to the university?

UT System’s policy emphasizes the importance of intellectual property and technology commercialization in the quest for scientific and technological entrepreneurship. UTA is committed to put in place resources to commercialize technology for the public good, including supporting start-up opportunities as appropriate. In addition, the Bayh-Dole Act encourages commercialization of intellectual property created under federal funding for the public good.

What does the university do with its intellectual property?

UTA strives to commercialize the IP generated by its researchers by licensing the technology. The license agreement permits the licensee company ( large,small or start-up) to practice the intellectual property in the pursuit of commercializing product and making money. Licenses can be exclusive or non-exclusive. They can be for use throughout the world or restricted to certain geographic uses, and they can be for any conceivable use of the intellectual property or limited to a field of use. In return, the company will typically return some benefit back to the university, usually in the form of patent cost reimbursements, fees and royalties based on product sales incorporating the intellectual property, equity in the company or some combination of these benefits.

Why is intellectual property important to the inventor?

1. Financial rewards to the inventors when the IP is successfully licensed ( Read UT System Board of Regents’ Rules and Regulation Series 90101: Intellectual Property).

2. Strong industrial ties established during the licensing efforts might result in additional sponsored research

3. Sense of satisfaction seeing their work commercialized, used by the man kind

What if UTA does not want to pursue the intellectual property protection?

If there is no government funding for the invention, then the rights to the invention return to the inventor. If federal government funding is involved, then if UTA does not elect to pursue intellectual property protection, the federal government may elect title. If the government decides not to pursue the protection, then the inventor may do so.