The procedure to coordinate and assist in securing available protection for intellectual property (IP) owned by UT System Board of Regents and the university, as well as, pursue development and commercialization of such IP are outlined below:
Early consultation with OTC staff to discuss your scholarly work and to provide guidance with respect to the disclosure, evaluation, and protection processes.
The written notice of invention to OTC begins the formal technology commercialization process. An invention disclosure is a legal and confidential document prepared by a creator that explains what was discovered or created, or what scholarly work was created, who sponsored the work and whether such work has been disclosed or is scheduled for publication or public presentation. For patentable inventions, the completed IDF should clearly indicate the new, useful and non-obvious properties of the IP over existing published materials. All creators of the IP should be listed in the IDF even if they are not university employees.
Evaluation of Intellectual Property Rights
When OTC receives a reasonably complete and detailed IDF, the business development managers will evaluate the IDF to determine the UT System Board of Regents ownership interest in and rights to the IP, appropriate protection (i.e. patent, copyright, or research tool), commercial potential, market interest and technical merit. OTC will provide a detailed report within 12 weeks of an IDF submission to the inventor. During this time, OTC may consult with the creator and members of the faculty or other experts to evaluate the IDF for technical merit and to comment on the commercial potential, marketability and competitive advantages of the technology. Following the initial evaluation, OTC will make a recommendation that may include the following:
- Hold the disclosure for more information or research data from the creator(s);
- Seek protection (patent or copyright) on behalf of the university and UT System Regents;
- Pursue a research sponsor or licensee. Potential licensees may include existing or new start-up companies with an interest in using or commercializing the technology; and/or,
- Release or offer to license some or all of the rights to the creators. In accordance with the Handbook of Operating Procedures (Release of Intellectual Property), OTC will notify creators of the recommendation approved by the President and notification to the UT System Office of General Counsel.
Commercializing Intellectual Property
When the university decides to file for intellectual property protection, OTC will coordinate with outside legal counsel, as approved by the Texas Attorney General and with the General Counsel at UT System, to obtain the appropriate protection. The university bears the costs of filing for intellectual property protection. OTC will give due regard to creator's comments and recommendations when making decisions with respect to the patenting of their discoveries and will keep them apprised of the decisions regarding patent strategy during patent prosecution. The creators must assist throughout the process to ensure that the strongest intellectual property protection is obtained.
In those instances where the Board asserts its ownership interest in intellectual property, OTC will determine what course of action to follow to realize the greatest potential for the Board's intellectual property.
OTC negotiates and administers all transactions relating to intellectual property owned by the UT Board of Regents for and on behalf of the university. Such arrangements may include, but are not limited to, confidential disclosure agreements, material transfer agreements, joint ownership agreements, inter-institutional agreements, option agreements and license agreement (exclusive and non-exclusive). All such agreements must: (1) include unrestricted publication rights for the university and its creator, (2) fully indemnify the Board, university and its creators and (3) include other normal and customary provisions.
Distribution of Income from Intellectual Property Agreements
Intellectual property agreements may yield a variety of different financial payments, which may include, but are not limited to, up-front license fees, milestone payments and royalties. All such compensation is received by OTC, which will maintain accounts documenting intellectual property expenses, income and disbursement. Licensing income will be distributed according to the university's policy as detailed below. Before disbursing licensing compensation, OTC will deduct the expenses that the university has incurred to protect, manage, market, and commercialize the intellectual property. Additionally, OTC may withhold a portion of the licensing income to cover future expense obligations. The net consideration received by the university, excluding equity, will be shared between the university and the inventors according to the Invention Revenue Distribution in the Handbook of Operating Procedures Policy 12.2.1.