What is technology transfer?

Technology transfer is the transfer of knowledge and discoveries from one organization to another. In academia, it can occur through publications, educated students entering the workforce, exchanges at conferences, and relationships with industry. UT Health San Antonio’s Office of Technology Commercialization (OTC) focuses on transferring technology through partnering, which can result in the formal licensing of technology to third parties under the guidance of professionals employed by universities, research foundations, and businesses.

Who is OTC?

OTC is a University service unit composed of specialists in licensing, business development, and legal matters who are experienced in transferring technologies from the physical sciences, life sciences, and information and computer sciences. We are responsible for managing invention disclosures from all schools on the UT Health San Antonio campus.

Research & Invention

Inventor Disclosure

What is an invention?

UT Health San Antonio Intellectual Property Policy defines inventions as ideas, discoveries, and/or know-how that are either patentable or potentially patentable. Patentable subject matter includes:

  • Compositions of matter—new chemical or biological entities, but not isolated products of nature
  • Machines—mechanical or electronic devices, including medical devices
  • Articles of manufacture—new products made by a defined process
  • Processes—methods of making compositions, methods of making articles, and even some methods of gathering or evaluating data or of performing business.

UT Health San Antonio researchers generate other types of intellectual property in addition to inventions, such as copyrightable creations, including content-based scholarly works, and unpatented materials, such as cell lines.

What is an invention disclosure form?

An invention disclosure form is a written description of a discovery or invention that UT Health San Antonio inventors provide to OTC. These reports are preferably submitted electronically to the Invention Disclosure Portal. The invention disclosure form should list all collaborating sources of support and fund in and include the information necessary to begin pursuing evaluation activities. Please attach any draft manuscripts or pending grant proposals to simplify the process.

Why should I submit an invention disclosure form and what action does it activate?

When you submit your invention disclosure form to OTC, it starts a process that could lead to the protection and commercialization of your technology. This may involve beginning the process of filing for patent protection and/or working to identify outside development partners. Federal grants generally require reporting of discoveries to the sponsoring agency, and OTC will handle this for you.  However, for OTC to act on your behalf, OTC must have the first step to this process which is submitting your form to OTC. Similar requirements may exist for other sponsored projects.

How do I know if my discovery is an invention?

OTC will perform the analysis for you. You are encouraged to submit an invention disclosure form for all discoveries and developments that you feel may solve a significant problem and/or have significant value. If you are in doubt, contact an OTC licensing specialist to discuss the discovery and strategies for commercialization

When should I submit an invention disclosure form?

You should complete the invention disclosure form report whenever you feel you have discovered something unique with possible commercial value. This should be done well before presenting the discovery through publications, poster sessions, conferences, press releases, or other communications. If an invention is publicly disclosed (i.e., published or presented in some form) prior to the filing of a patent application, the invention cannot be patented outside of the United States, though U.S. protection may still be available.

Be sure to inform OTC of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal, dissertation/masters thesis, publication, or other public presentation describing the invention.

Should I submit an invention disclosure form on research tools?

Yes. Typically, research tools are materials such as antibodies, vectors, plasmids, cell lines, mice, rats and other materials used as “tools” in the research process. If your new tools would benefit other researchers, you should report them to OTC. OTC will work with you to develop the appropriate protection, licensing, and distribution strategy. Most research tools do not necessarily need to be protected by patents to be licensed to commercial third parties and/or generate revenue.

Should I submit an invention disclosure form on software, content, databases, apps, websites, etc.?

Yes.  Please submit an invention disclosure form if you have new software, content, databases, apps, and websites that might have commercial value.

How do I submit an invention disclosure form?

We encourage you to submit a new form online through the Invention Disclosure Portal. If you have any questions or would like help submitting your invention disclosure form through another method, call OTC at 210.562.4000 or email us at OTCInfo@uthscsa.edu.

How should the UT Health San Antonio community determine whether another individual should be an Inventor(s) to be named on an invention disclosure form?

You should list as an inventor any individual who made a contribution to the conception and reduction to practice of the technology. If you are unsure whether to list a particular individual, or if disputes arise regarding inventorship, OTC will seek the advice of outside counsel to assist us with making a final determination of inventorship under applicable US patent law.

Should I list visiting scientists or scientists at other institutions/companies on my report submission?

Yes, if you believe they have contributed to the conception and reduction to practice of the invention. Non-UT Health San Antonio employees should inform their respective institution or company as well.  All contributors to the ideas leading to a discovery should be mentioned in your report, even if they are not UT Health San Antonio employees. OTC, along with UT Health San Antonio outside patent counsel, will determine the rights of such persons and institutions. It is prudent to discuss with OTC all working relationships (preferably before they begin) to understand the implications for any subsequent inventions.

Under U.S. law, an inventor is a person who takes part in the conception of the ideas in the patent claims of a patent application. Thus, inventorship of a patent application may change as the patent claims are changed during prosecution of the application. An employer or person who only highlights a problem or furnishes money to build or practice an invention is not an inventor. Inventorship is a legal issue and may require an intricate legal determination by the patent attorney prosecuting the application

What if I created the invention with someone from another institution or company?

You must still disclose the invention regardless of whether the other inventor has disclosed at their institution, or additionally named you as an inventor at the other institution.   Invention disclosures are not transferable outside of UT Health San Antonio.

OTC will work with the other institution or company to find the best solution for managing the invention. If there is a sponsored research agreement or consulting agreement with a company that relates to your invention, the OTC licensing specialist will need to review that agreement to determine ownership and other rights associated with the contract, and to determine the appropriate next steps. Should the technology be jointly owned with another academic institution, the licensing specialist will usually enter into an inter-institutional agreement (“IIA”) that provides for one of the institutions to take the lead in protecting and licensing the invention, sharing of expenses associated with the patenting process, and allocating any licensing revenues. If the technology is jointly owned with another company, the licensing specialist will work with the company to determine the appropriate patenting and licensing strategy


How does OTC assess new technologies for commercialization value?

Licensing specialists at OTC examine each newly reported technology using a variety of proprietary databases to perform due diligence. Examples include but are not limited to: the novelty of the invention, whether it can be protected by patent or other legal protection, marketability of potential products or services, relationship to related intellectual property, size and growth potential of the relevant market, amount of time and money required for further development, pre-existing rights associated with the intellectual property, and potential competition from other products/technologies. This assessment will include consideration of whether the intellectual property can be the basis for a new business startup, partnership or a direct license.


What is a patent?

Although rights may vary from country to country, in general, a patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. Because a patent a “right to exclude,” a patent does not necessarily provide the holder any affirmative right to practice a technology; that practice may fall under a broader patent(s) owned by others.

What is the United States Patent and Trademark Office (PTO)?

The PTO is the federal agency, organized under the Department of Commerce, that administers patents on behalf of the U.S. government. The PTO employs patent examiners skilled in all technical fields in order to appraise patent applications. The PTO also issues federal trademark registrations.

What type of subject matter can be patented?

Patentable subject matter includes processes, machines, compositions of matter, articles, some computer programs, and methods (including methods of making compositions, methods of making articles, and even methods of performing business). The type of inventions that are patentable vary from country to country.

Can software be patented?

Some software is patentable, and OTC evaluates the possibility of filing a patent application on software reported to our office; but in most cases patenting is not the preferred pathway for IP protection for software. This is due to a variety of factors, including the recently heightened burden in proving that a software invention is patentable, challenges in proving infringement if a patent is obtained, and the speed at which software markets and products change. In most cases, copyright protection is sufficient to enable commercialization of software.

What is the patenting process?

Patent applications are drafted and filed by a patent attorney or a patent agent (a non-attorney with a science education registered to practice before the PTO); OTC, from an approved UT System list of legal firms, retains outside patent counsel to draft and file provisional patent applications in collaboration with the inventor. Our office will most often file a provisional patent application first. This provisional application is not formally reviewed on the merits, but it can serve as a placeholder to establish filing dates that are critical in the patent process. Over the course of the next several years after the initial provisional filing, there may be several additional applications filed both in the US and abroad. While the applications are pending, they will be reviewed by patent examiners at the PTO (or a foreign country’s equivalent patent office). If the examiner has any concerns about the patentability of the technology, the examiner will issue a formal review document called an office action. The office action will describe in detail the issues the examiner has raised, and it will provide a deadline by which our attorneys must file a formal response. We may receive more than one office action during the course of the patenting process. If we are able to overcome each matter raised by the examiner, we will receive a Notice of Allowance. Once we respond to the Notice of Allowance and all other criteria have been met, the PTO will issue the patent.

During the patent process, OTC will continually assess the technology, the market, and its commercialization potential to determine if we should continue to move forward with seeking patent protection. Inventor input is critical at every step of the process. Inventors not only provide most of the detail necessary for the attorney to draft a patent application, but inventors can also provide critical information that may be helpful in overcoming an examiner’s objection.


How are inventors involved in the patenting process?

The patent attorney will ask you to provide as much detailed information as possible, including a Word version of any draft manuscripts or grants, if available. The attorney will also request that you review an application before it is filed. At the time an application is filed, the patent attorney or OTC will ask the inventor(s) to sign a “Declaration” (which basically says that the inventor made the invention and agrees to tell the truth during patent prosecution) and an “Assignment” (which evidences the inventor’s duty to assign the patent to the  Board of Regentsof the University of Texas System (“Board”)). In addition, Inventors have an obligation to provide to our patent attorney any relevant publications or information that may be relevant to the invention; failure to disclose such information may render any issued patent unenforceable or invalid.

What does it cost to file for and obtain a patent?

Obtaining a patent is expensive. Filing a U.S. utility patent application typically costs between $10,000 and $15,000. To obtain an issued patent may require an additional $10,000 to $20,000 for patent prosecution. Filing and obtaining issued patents in other countries may cost $20,000 or more per country. Also, once a patent is issued in the U.S or in foreign countries, certain government fees are required to keep the patent alive (referred to as “maintenance fees” in the U.S. and “annuities” in other countries).

What does “first-to-file” patent system mean?

The U.S. changed to a “first-to-file” patent law in 2013. First-to-file is a shorthanded way of referring to how one defines “prior art.” If two inventors independently seek patent protection for the same invention, the inventor that first filed her/his application will be awarded the patent on that invention (assuming that the application fully describes and enables the invention). Under our old system, in many such cases, a process would be used to determine which inventor made the invention first. While there is a lot of literature on the subject, the reality is that in practice our new law will not affect a lot of competing inventors.

What is the effect on patenting if I publish the results of my research?

Publishing or presenting can prevent us from obtaining patent protection, so OTC would like to know about your invention before you publish on it. There are significant differences between the U.S. and other countries as to how early publication affects a potential patent. Once publicly disclosed (published or presented in some form), an invention may have a restricted or minimal potential for patent protection outside of the United States. Since patent rights are affected by publishing or presenting, it is best to submit an invention report or call your licensing specialist at least 3 months before communicating or disclosing your invention to others.

Even after you submit an Invention Disclosure, be sure to inform the OTC licensing specialist assigned to you of any imminent or prior presentation, lecture, poster, abstract, website description, research proposal submission, dissertation/masters thesis, publication, or other public presentation describing any part of the invention. Submitting a manuscript to your licensing specialist prior to submitting to a journal for publication can be extremely helpful for both the marketing and licensing process as well as for the patent attorney assigned to the case.

Is there any effect or implication from the order of inventors named in a patent application or patent?

Not at all. While authorship order in journal publications is relevant to input and perhaps prestige, the order of the inventors on a patent application conveys no advantage to the inventor or patent application.

Are patent applications kept secret?

The PTO holds patent applications confidential until published by the PTO, 18 months after initial provisional filing. After that time, both the application and the PTO’s prosecution materials related to the application are publicly available.

Why file a provisional patent application as opposed to a regular (“nonprovisional” or “utility”) patent application?

In certain circumstances, U.S. provisional patent applications can provide a tool for preserving patent rights while postponing the cost of negotiating the patent application with the PTO. This occurs because a provisional application is not examined during the year in which it is pending, and claims are not required. A regular U.S. application and related foreign applications must be filed within one year of filing the provisional application in order to receive its early filing date. However, an applicant only receives the benefit of the earlier filing date for material that is adequately described and enabled in the provisional application. As a result, the patent attorney likely will need your assistance when an application is filed as a provisional.

What’s different about foreign patent protection?

Foreign patent protection is subject to the laws of each individual country, although in a general sense the process works much the same as it does in the United States. In foreign countries, however, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing the patent application. In contrast, the United States has a one-year grace period for public disclosures by an inventor.

Who is responsible for patenting?

OTC contracts with UT System approved outside patent counsel for IP protection, thus assuring access to patent attorneys with expertise in diverse technology areas. Inventors work with the patent counsel in drafting the patent applications and responses to worldwide patent offices. OTC staff will select the outside patent counsel based on their expertise in the technology field.

Is there such a thing as an international patent?

Although an international patent does not exist, an international agreement known as the Patent Cooperation Treaty (PCT) provides a streamlined filing procedure for most industrialized nations. The best way to think about it is that while there are international patent applications, there is no such thing as an international patent. For U.S. applicants, a PCT application is generally filed one year after the corresponding U.S. application (either provisional or regular) has been submitted. The PCT application must later be filed in the national patent office of any country in which the applicant wishes to seek patent protection, generally within 30 months of the earliest claimed filing date. The PCT provides two advantages. First, it delays the need to file costly foreign applications until the 30-month date, often after an applicant has the opportunity to further develop, evaluate and/or market the invention for licensing. Second, the international preliminary examination often allows an applicant to simplify the patent prosecution process by having a single examiner speak to the patentability of the claims, which can save significant costs in prosecuting foreign patent applications. An important international treaty called the Paris Convention permits a patent application filed in a second country (or a PCT application) to claim the benefit of the filing date of an application filed in a first country. However, pursuant to this treaty, these so-called “convention applications” must be filed in foreign countries (or as a PCT) within one year of the first filing date of the U.S. application.

What is the timeline of the patenting process and resulting protection?

Currently, the average U.S. utility patent application is pending for about two years, though inventors in the biotech and computer fields should plan on a longer waiting period before a patent is awarded (issued). Once a patent is issued, it is generally enforceable for 20 years from the initial filing of the application that resulted in the patent, if PTO-mandated maintenance fees are paid. The actual life of the patent may vary based on its lineage and whether the PTO grants any additional time extensions.

Why does UT Health San Antonio protect some intellectual property through patenting?

Patent protection is often a requirement of a potential commercialization partner (licensee) because it can protect the commercial partner’s often sizable investment required to bring the technology to market. Due to their expense and the length of time required to obtain a patent, patent applications are not possible or appropriate for all UT Health San Antonio intellectual property. We carefully review the commercial potential for an invention before investing in the patent process. However, because the need for commencing a patent filing usually precedes finding a licensee, we look for creative and cost-effective ways to seek early protections for as many promising inventions as possible.

Who decides what gets protected?

OTC utilizes a process that results in a Technology Management Report.  The process requires up to 10 weeks to perform before a decision is determined. Numerous factors including the expertise of the inventor(s) are considered. Based on a recommendation from the licensing specialist, the Assistant Vice President for Technology Commercialization ultimately makes the final decision as to whether to file a patent application or seek another form of protection.

Will UT Health San Antonio initiate or continue patenting activity without an identified licensee?

Sometimes.  UT Health San Antonio evaluates all technologies on the basis of commercialization potential first.  If the invention warrants commercialization, the intellectual property strategy is then considered.  OTC bears the expenses of filing a patent application before a licensee has been identified. After UT Health San Antonio’s patent rights have been licensed to a licensee, the licensee generally reimburses OTC for past patent expenses and continues to pay ongoing patent expenses, especially where the license is exclusive. At times UT Health San Antonio must decline further patent prosecution after a reasonable period (often a year or two) of attempting to identify a licensee, or if it is determined that we cannot obtain reasonable claims from the PTO.

Ownership of Intellectual Property

Who owns the intellectual property I create?

Ownership depends upon the employment status of the creators of the invention and their use of University facilities and other resources. Considerations include:

  • What is the source of the funds or resources used to produce the invention?
  • What was the employment status of the creators at the time the intellectual property was made?
  • What are the terms of any agreement related to the creation of the intellectual property?

As such, the Board owns inventions made by its employees while acting within the scope of their employment or using University resources. In some cases, the terms of a Sponsored Research Agreement or Materials Transfer Agreement may impact ownership. When in doubt, it is best to call the OTC to discuss the specific details of the circumstances that led to the discovery or invention.

Who owns rights to discoveries made while on sabbatical?

Generally, if you are on a sabbatical paid by UT Health San Antonio, the Board retains rights to any discoveries connected to your scope of employment. Contact OTC before your sabbatical to ensure that ownership considerations are documented.

Who owns rights to discoveries made while I am consulting?

If the consulting is in the scope of your university employment, the rights belong to the Board. It is important to clearly define the scope of work within consulting contracts to minimize any issues or conflict with ownership of inventions created from UT Health San Antonio research. If you have questions about your obligations to UT Health San Antonio, OTC is available for informal discussion. Consulting agreements are typically considered private agreements, and as such, OTC will not review or advise on them other than to comment on the ownership of intellectual property created by a University employee.

Can a student contribute to an invention?

Yes, many students work on inventions at UT Health San Antonio under a wide variety of circumstances. UT Health San Antonio promotes student entrepreneurism, and students can be named as inventors under UT Health San Antonio policy.   Due to the resources allocated to commercialization, UT Health San Antonio will not commercialize a student led invention unless the student assigns rights to the Board.  At that time, the student will enjoy all the rights that employees enjoy in the commercialization process.

What is the Bayh-Dole Act and how does it impact ownership of inventions?

The U.S. Bayh-Dole Act of 1980 allows universities and other non-profit institutions to have ownership rights to discoveries resulting from federally funded research, provided certain obligations are met. These obligations include making efforts to protect (when appropriate) and commercialize the discoveries, submitting progress reports to the funding agency, giving preference to small businesses that demonstrate sufficient capability, substantial manufacture in the US, and sharing any resulting revenues with the inventors. The Bayh-Dole Act is credited with stimulating interest in tech transfer activities and generating increased research, commercialization, educational opportunities, and economic development in the United States.


Selecting a Licensee

Marketing an Invention to Identify Potential Licensees

How does OTC market my inventions?

Licensing specialists use many sources and strategies to identify potential licensees and market inventions. Most often, existing relationships of the inventors, OTC staff, and other researchers are the most useful in marketing an invention. Market research can assist in identifying prospective licensees. We also examine other complementary technologies and agreements to assist our efforts. We use our website to post inventions, leverage conferences and industry events, and make direct contacts. Faculty publications and presentations are often excellent marketing tools as well.

How are most licensees found?

Nationwide studies of university licensing have shown that 70% of licenses result from contacts already known by the inventors. Thus research, consulting relationships, alumni, and even former students and postdocs, are often a valuable source for identifying licensees. Licensees are also identified through existing relationships of the OTC staff. Our licensees often license more than one technology from OTC. We attempt to broaden these relationships through contacts obtained from website posting inquiries, market research, industry events and the cultivation of existing licensing relationships.  Marketing at OTC is dynamic.  OTC is constantly having discussions with angels, venture groups, pharmaceutical industries, and evidence-based nonprofits to determine the optimal strategy to get an invention to the patient.

How long does it take to find a potential licensee?

It can take months and sometimes years to locate a potential licensee, depending on the attractiveness of the invention, its stage of development, competing technologies, and the size and intensity of the market. Most university inventions tend to be in the early stage in the development cycle and thus require substantial commercialization investment, making it difficult to immediately attract a licensee.

How can I assist in marketing my invention?

Your active involvement dramatically improves the chances of matching an invention to an outside company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. The most successful technology commercialization results are obtained when the inventor and the licensing professional work together as a team to market and sell the technology. Data indicates that if the investigator is not interested in the commercialization aspects of the invention, the invention rarely is licensed. As such, OTC does weigh inventor interest when determining whether a patent should be filed.

Can there be more than one licensee?

Yes, an invention can be licensed to multiple licensees, either non-exclusively to several companies or exclusively to several companies, each for a unique field-of-use (application) or geography.



What is a startup company and why choose to create one?

A startup is a new business entity formed to commercialize one or more related inventions. Forming a startup company is an alternative to licensing the IP to an established business. A few key factors when considering a startup company are:

  • development risk (often companies in established industries are unwilling to take the risk)
  • 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
  • potential revenues sufficient to sustain and grow a company

OTC can help evaluate these and other factors. For additional information and available resources, see here.

Who decides whether to form a startup?

The choice whether to license to a startup for commercializing IP is a joint decision made by OTC and the inventors. The startup is actually formed by those outside of UT Health San Antonio, but if a new business startup is chosen as the preferred commercialization path, OTC licensing specialists will assist you in planning and executing the process. These staff members act as business formation consultants, providing hands-on assistance and access to University and outside resources.

What role may an inventor usually play in a company?

UT Health San Antonio faculty typically serve as technology consultants, advisers or in some other technical developmental capacity. Rarely do faculty choose to leave UT Health San Antonio to join the startup although some choose to work at the startup company during a planned sabbatical or choose to take a reduced appointment for a defined period of time. In many cases, the faculty role is suggested by the startup investors and management team who identify the best role based on the inventor’s expertise and interests. As the company matures, and additional investment is required, the inventor’s role may change. University employees should also be aware that all start-up related, consulting, or other outside activities may be subject to disclosure to the university via iDisclose, and may be subject to review by the Conflict of Interest Committee and/or the person responsible for approving conflicts of commitment. Please consult the HOP, the Conflict of Interest & Research Integrity Office, or your department chair if you have any questions about your reporting obligations.

How much of my time and effort will it take?

Starting a company requires a considerable amount of time and effort. Until the startup 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.

What assistance and resources are available to the inventor?

OTC’s licensing specialists serve as coaches, mentors, resource locators, and project planners to help fill the gap between the technology and the formation of a startup. Their activities may include locating prospective management talent, developing a funding strategy, determining the appropriate regulatory path, making introductions to probable investors, reviewing business plans, and engaging experts to work on key gating issues. Licensing specialists can also draw upon an extensive network of resources and experience to assist you.

Will UT Health San Antonio pay for or lead the incorporation of a startup company?

No. As a separate entity, the startup should pay for its own legal matters, including all business incorporation matters and patent and licensing expenses.

What legal assistance is needed in creating a startup company?

In addition to corporate counsel, the startup 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. The startup’s counsel must be separate from UT Health San Antonio counsel, though it is advisable and recommended that the corporate IP Counsel and OTC patent counsel coordinate activities. Also, it is wise for inventors to have agreements regarding their roles with the startup reviewed by their own counsel to ensure that all personal ramifications—including taxation and liabilities—are clearly understood. For additional information and available resources, see here.

Can UT Health San Antonio accept equity in the company?

UT Health San Antonio can accept equity as part of the financial terms of a license. Equity may be substituted for other cash considerations that are often difficult for startups. It is also a way for UT Health San Antonio to share some of the risk associated with startups. A decision to take equity must make sense for both UT Health San Antonio and the company.



Licensing and Commercialization

What types of agreements does OTC manage?

  • License Agreements grant third parties the rights under UT Health San Antonio patents or copyrights. University license agreements typically stipulate that the licensee should diligently seek to bring the intellectual property into commercial use for the public good, provide a reasonable return for UT Health San Antonio, and specify limitations to UT Health San Antonio‘s liability.
  • Non-Disclosure Agreements (NDAs) (also referred to as Confidential Disclosure Agreements (CDAs)) are often used to protect the confidentiality of an invention during evaluation by potential licensees. NDAs also protect proprietary information of third parties that University researchers need to review in order to conduct research or to evaluate research opportunities. OTC negotiates Confidentiality Agreements (CDAs) for University proprietary information shared with someone outside of UT Health San Antonio.
  • Material Transfer Agreements (MTAs), used for incoming and outgoing materials at UT Health San Antonio which contain or are concerned with intellectual property assets (cell lines, plasmids, etc.) are managed by both OTC and the Office of Sponsored Programs (OSP). These agreements describe the terms under which university researchers and outside researchers may share materials, typically for research or evaluation purposes. Intellectual property rights can be endangered if materials are used without a proper MTA. More information about MTAs can be obtained here.
  • Inter-Institutional Agreements describe the terms under which two or more institutions (generally universities) will collaborate to assess, protect, market, license, and share in the revenues received from licensing jointly owned intellectual property.
  • Option Agreements, or Option Clauses within research agreements, describe the conditions under which UT Health San Antonio preserves the opportunity for a third party to negotiate a license for intellectual property. Option clauses are often provided in a Sponsored Research Agreement to corporate research sponsors or Option Agreements are entered into with third parties wishing to evaluate the technology prior to entering into a license agreement.
  • Research Agreements describe the terms under which sponsors provide research support to UT Health San Antonio. These are negotiated by OSP, although OTC  assists in negotiation of non-standard clauses relating to intellectual property – most often with companies or foundations. More information about OSP can be obtained here.

How is a company chosen to be a licensee?

OTC chooses a licensee based on a company’s ability to commercialize the technology for the benefit of the general public.

OTC seeks long term partners.  OTC values the relationship as commercialization is a high-risk business which requires compromise and input from all collaborators.  Sometimes an established company with experience in similar technologies and markets is the best choice. In other cases, the focus and intensity of a startup company is a better option. However, in our experience it is rare for UT Health San Antonio to have multiple potential licensees bidding on an invention.

What can I expect to gain if my IP is licensed?

Per UT Health San Antonio policy, a portion of any financial return (after OTC’s expenses) from a license is provided to the inventor(s) in accordance with the distribution policy outlined in the Handbook of Operating Procedures (“HOP”). Most inventors enjoy the satisfaction of knowing their inventions are being deployed for the benefit of the general public. New and enhanced relationships with businesses are another outcome that can augment one’s teaching, research and consulting. In some cases, additional sponsored research may be funded by the licensee.

What is the relationship between an inventor and a licensee, and how much of my time will it require?

Many licensees require the active assistance of the inventor to facilitate their commercialization efforts, at least at the early stages of product development. This can range from infrequent, informal contacts to a more formal consulting relationship to additional sponsored research in the inventor’s laboratory. Working with a new business startup can require substantially more time, depending on your role in or with the company and your continuing role within UT Health San Antonio. Your participation with a startup or any consulting arrangement with a licensee is governed by UT Health San Antonio conflict of interest policies. More information about conflict of interest policies can be found in the HOP. .

What activities occur during commercialization?

As part of the license being awarded to a licensee, it is incumbent on the licensee to add value to the invention plus focus on delivering the technology to the market.  It is not acceptable for a licensee to license a UT Health San Antonio technology and not develop the technology.

As such, the license will contain numerous details and expectations of the licensee that the licensee has agreed.  Failure to meet these obligations can result in termination of the license.  Most licensees continue to develop an invention to enhance the technology, reduce risk, prove reliability, and satisfy the market requirements for adoption by customers. This can involve additional testing, prototyping for manufacturability, durability and integrity, and further development to improve performance and other characteristics. Documentation for training, installation and marketing is often created during this phase. Benchmarking tests are often required to demonstrate the product/service advantages and to position the product in the market. Medical products (therapeutics, diagnostics and devices) require extensive animal and clinical trials in humans to achieve regulatory approval. Software used in medical applications may also require regulatory approval.

What will happen to my invention if the startup company or licensee is unsuccessful in commercializing the technology? Can the invention be licensed to another entity?

Licenses typically include financial payments and performance milestones that, if unmet, can result in termination of the license. Alternatively, a licensee may be able to terminate a license for a variety of reasons, so long as the conditions of licensee termination are met. Any termination will allow OTC to re-evaluate the technology’s potential and determine if it is appropriate to market the technology to other potential licensees.



What revenues are generated for UT Health San Antonio if commercialization is successful?

Most licenses have licensing fees that can be very modest (for startups or situations in which the value of the license is deemed to warrant a modest license fee) or can reach hundreds of thousands of dollars. Additional revenues from annual minimums and payments upon achievement of certain milestones may also result prior to actual sales of the licensed product. Typical fees that are assessed to licensees include: a fee at the start of the license (upfront fee), fees for reaching pre-clinical and clinical milestones, maintenance of the license fee, sub-licensing fees, royalty, equity, transaction fees are a few examples.  Royalties on the eventual sales of the licensed products can generate revenues, although this can take years to occur and depends upon the type of technology. Equity, if included in a license, can yield returns, but only if a successful equity liquidation event occurs, and importantly, if the Institution has been able to maintain their equity share. Most licenses do not yield substantial revenues. In the most recent AUTM annual survey of U.S. Universities (2014), less than 1% of all licenses yield over $1 million annually. However, the rewards of an invention reaching the market are often more significant than the financial considerations alone.

How are license revenues distributed?

This is described in the HOP. Typically the inventor group receives a percentage of the revenue after legal, administrative and other unreimbursed fees have been accounted

How is equity from a license distributed?

When university equity is liquidated by OTC, the resulting funds are distributed in accordance with the HOP.

What are the tax implications of any revenues I receive from UT Health San Antonio?

You should consult a tax advisor for specific advice.

What happens to my share of licensing revenue if I waive rights to it?

Please see the most recent HOP and discuss your specific situation with your licensing specialist.

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