Frequently Asked Questions

Universities, hospitals, and research centers conduct a lot of research that generates groundbreaking inventions, that not only save lives, but improve the way we live, work, and play on a daily basis. Learn more about how technology commercialization benefits you in this video from the Association of University Technology Managers.
 
Watch video here.
 
Intellectual Property
What is intellectual property?
Who owns the intellectual property if I invent something at the University?
How does disclosing my invention to UT Health Science Center at San Antonio benefit me?
How do I disclose my idea?
How can intellectual property be protected?
Why is the protection of intellectual property important?
When should intellectual property be disclosed to UT Health Science Center at San Antonio?
Why should intellectual property be disclosed to
OTC prior to public disclosure?
What is prior art?
 
Patents
What is a patent?
What is patentable?
What is not patentable? What does it cost to prosecute a patent?
 
Copyrights
What is a copyright?

 
Trademarks
What is a trademark?
 
Inventions
What is an invention?

Who is an inventor? Who Should be Listed as an Inventor?
 
Licenses
What is a license?
Who conducts license negotiations?
What kind of financial terms are included in a license agreement?
Can equity be included in a license?

 

Start-up Companies

What is a Start-Up and Why Choose to Create One?
A start-up is a new business entity formed to commercialize one or more related intellectual properties. Forming a start-up business is an alternative to licensing the IP to an established business. A few key factors when considering a start-up company are:

  • Development risk (oft en large companies in established industries are unwilling to take the risk of early stage technology development);
  • Development costs versus investment return (can the investors obtain their needed rates of return);
  • Potential for multiple products or services from the same technology (few companies survive on one product alone);
  • Sufficiently large competitive advantage and target market; and
  • Potential revenues sufficient to sustain and grow a company.

OTC can help evaluate these and other factors.
 
The Decision Process to Form a Start-Up
The choice to establish a new company for commercializing IP is a joint decision made by OTC and the inventors.
 
Assistance and Resources Available
OTC assistance to faculty inventors includes:

  • Working with the inventor(s) to identify, develop, and maintain a protectable patent portfolio. In certain cases, OTC will use internal resources to secure intellectual property rights, typically patents;
  • Assisting with strategic planning and the creation of a commercial development plan that serves as a tactical roadmap for the start-up and a document for acquiring start-up capital. In some cases, OTC is able to access additional human and financial resources for the start-up company to build prototypes, do market assessment, or augment interim management to get the business started and on a clear development path;
  • Providing referrals for corporate attorneys and accountants who specialize in company formation; and
  • Providing introductions to the private equity community, business incubators, and other sources of technical and managerial assistance and capital. OTC case managers serve as advisors and resource locators to help fill the gap between the technology and the formation of a start-up. Their responsibilities may include helping inventors develop a protectable patent portfolio, making introductions to prospective management personnel, the private equity community and business incubators, reviewing business plans, and providing referrals to experts to work on strategic issues.

 
Roles of an Inventor in a Start-Up Company
University faculty typically serve as technology consultant, advisor, or in some other technical developmental capacity. Rarely does faculty choose to leave the university and join the start-up. In many cases, the faculty member’s role may be suggested by the start-up investors and management team, based on the inventor’s expertise and interests. As the company matures, and additional investment is required, the inventor’s role may change. Faculty entrepreneurs must obtain the necessary approvals according to university conflict-of-interest policy and procedures. Student inventors and post-docs may choose to join the start-up upon graduation, but rarely have the experience or business skills to serve as the company’s sole management. The participation of seasoned entrepreneurial management is one of OTC’s keys when assessing a technology for start-up possibilities.
 
Time and Effort Required
Starting a company requires a considerable amount of time and effort. Until the start-up team is identified and engaged, the faculty member will need to champion the formation effort. After the team is in place, effort is required for investor discussions, formal responsibilities in or with the company, and university processes such as conflict of interest reviews.
 
University Shares of Equity in the Company
OTC will accept equity in lieu of cash as financial remuneration for a license. Stock will be sold in an orderly fashion as soon as it is possible to sell it in the public market (i.e., once it is publicly traded and/or any lock-out period has expired).
 
Legal Assistance Needed for Creating a Start-up
In addition to corporate counsel, a start-up may have its own intellectual property counsel to assist with corporate patent strategy, especially if the company will be involved in a patent-rich area. Also, it is wise for inventors to have agreements regarding their roles with the start-up reviewed by their own counsel to ensure that all personal ramifications—including taxation and liabilities—are clearly understood.
 

INTELLECTUAL PROPERTY

What is intellectual property?
Intellectual property is any invention, discovery, trade secret, know how, scientific or technology development, computer software of other form of expression that is in a tangible form.
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Who owns the intellectual property if I invent something at the University?

If the intellectual property was developed by an employee of UT or invented at UT facilities under the supervision of UT personnel, the intellectual property is owned by the Board of Regents of the University of Texas System (see Regents Rules and scroll to "Chapter XII. Intellectual Property"). Each inventor, whether faculty, staff, fellow, or student must assign his or her rights in the intellectual property to the Board.
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How does disclosing my invention to UT Health Science Center at San Antonio benefit me?

If you disclose your invention to UT Health Science Center at San Antonio, then you receive financial and intellectual backing of OTC to assist you in patenting and licensing procedures. If the invention is commercialized, then you are entitled to 50% of all royalties earned.
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How do I disclose my idea?

See Disclosure Process.
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How can intellectual property be protected?

Intellectual property can be protected by patent, trademark, and/or copyright laws, or it can be protected by not disclosing the "know how" to others.
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Why is the protection of intellectual property important?

Intellectual property is an asset to be developed, maintained and protected, not unlike land, equipment and facilities. By protecting it appropriately, it can return value and advantages to its owner(s).
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When should intellectual property be disclosed to UT Health Science Center at San Antonio?

Intellectual property should be disclosed to the Office of Technology Commercialization (OTC) as early in the development process as possible. Disclosure to this office should most definitely be done before any public, either oral or written, disclosure of the information is made. In this way, an informed evaluation can be completed for the potential invention and an appropriate protection and marketing strategy developed.
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Why should intellectual property be disclosed to OTC prior to public disclosure?

After you publish, present or otherwise publicly disclose your invention, you have one year from the first disclosure date to file a U.S. patent. After this anniversary has passed, you lose all U.S. patent rights. No grace period exists for foreign patent applications. All foreign patent rights will be irrevocably lost once your invention is publicly disclosed.
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What is prior art?

Prior art is relevant past technology that may be considered by the patent office in evaluating novelty and non-obviousness. If a patent application is filed in the U.S., anything that has been published, used in public, offered for sale or sold by anyone before the inventor(s) made the invention, or more than one year before the application is filed, becomes a part of the prior art for that application. The inventor's own publications made within a year prior to the filing of the patent application do not prevent the inventor from obtaining a U.S. patent. However, such publications do prevent foreign patents from being obtained, because of the requirement for absolute novelty.
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PATENTS

What is a patent?
A patent is granted by the government to an inventor and allows the inventor "to exclude others from making, using, offering for sale, or selling [an] invention throughout the United States or importing the invention into the United States." Generally patents may be enforced only in the jurisdiction that has granted them.
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What is patentable?
There are three categories of patents: 1. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof. 2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. 3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
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What is not patentable?

Some things that cannot be patented in the U.S. include: theories, ideas, plans of action, results, methods of doing business, printed matter and discoveries of laws of nature or scientific principles.
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What does it cost to prosecute a patent?

Typically, the cost of preparing (filing) a U.S. patent will be between $6,000 to $9,000 depending on the complexity of the application. Prosecution of the application (the process of shepherding the application thru various stages of the patent review process prior to issuance) will increase the total cost somewhere between $13,000 to $25,000. Foreign patents can be extremely expensive, often in excess of $100,000 to $150,000 from filing to issue depending on the country. How long does it take for a patent to issue?
Patent applications may take anywhere from a few months to a few years. It is very common for an application to take at least two years to issue.
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COPYRIGHTS

What is a copyright?

A copyright is a grant by the United States of exclusive rights over the writings of an author, and includes software. How do you file for copyright protection?
 Copyright protection is automatically granted from the moment of creation, and a work is created when it is fixed in a tangible form. Therefore, no publication or registration or other action by the Copyright Office is required to secure a copyright although certain advantages are retained for registered copyrights, such as the right to seek damages for copyright infringement.
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TRADEMARKS

What is a trademark?
A trademark differs from both a patent and a copyright. It is a work, name, or symbol adopted or used by an individual or corporation to distinguish its goods or services from others' goods or services.
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INVENTIONS

What is an invention?

An invention is any currently unknown thing, process, or idea that can be either used in a tangible object or exist in, or be reduced to, tangible form. An invention disclosure should be made when something new and potentially useful has been created or when unusual or unexpected research results have been achieved that contain the potential for being of use to society.
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Who is an inventor?
An inventor is one who, alone or in conjunction with others, first invents a new and useful process, machine, composition of matter, or any other patentable subject matter. Because inventorship has a strict legal meaning under the laws and regulations of the U.S. patent system, a patent attorney usually determines inventorship during the patent prosecution process. For purposes of patent submissions, only those persons who have independent, conceptual contributions to an invention are legal inventors.
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Who Should be Listed as an Inventor?
Inventorship is a legal determination that must follow patent law in order to support the validity of an issued patent. This helpful information can assist you and your colleagues in determining whether they should be considered inventors.
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LICENSES

What is a license?
Generally speaking, a license is a legally binding written document in which one party, having definable rights in a property, transfers or grants all or some part of those rights to another entity for some type of consideration.
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Who conducts license negotiations?
The staff of the OTC handles license negotiations.
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What kind of financial terms are included in a license agreement?
The financial terms of a license agreement can vary greatly. They may include, but are not limited to, up-front fees, license re-issue fees, minimum annual royalties, milestone payments, royalties and equity. Financial terms vary widely and are tailored to fit the specific nature of each technology and each license transaction.
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Can equity be included in a license?

Equity may be transferred to The University in a license transaction as partial or sometimes total compensation for the rights conveyed. Typically, equity plays an important part in licensing to a start-up company.
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