Q: What is the Office of Commercialization and Innovation (OCI), can they help me?
A: The Office of Commercialization and Innovation serves UTSA faculty, staff, and students to enable industrial research partnerships, intellectual property management, proof-of-concept development, new venture incubation, entrepreneurial training, and policies and procedures that accelerate the ease of transition of intellectual property from the university to industry.
Q: What is an invention?
A: An invention is any useful process, machine, composition of matter, or any new or useful improvement of the same. http://research.utsa.edu/research-funding/commercialization
Q: Who is an inventor?
A: 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 on a patent application may change as the patent claims are changed during prosecution of the application. An employer or person who only 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. http://research.utsa.edu/research-funding/commercialization/entrepreneurship-and-training | UTSA Inventor’s Handbook | Disclose an Invention Form
Q: What do I do if I think that I have invented something while I was employed by or a student of UTSA?
A: Call the Office of Commercialization and Innovation when you believe you have created or discovered something unique with potential commercial or research value. (210) 458-4458.
Q: Do I have to fill out a technology disclosure form?
A: Yes, an invention disclosure remains a confidential document and should fully document your invention so that the options for commercialization can be evaluated and pursued.
Q: What happens after I fill out a technology disclosure form?
A: The period in which you and your licensing specialist review the invention disclosure, conduct patent searches (if applicable), and analyze the market and competitive technologies to determine the invention’s commercialization potential. http://research.utsa.edu/research-funding/commercialization/intellectual-property-process
Q: If the University proceeds with filing for patent protection, what happens next?
A: Once a patent application has been filed, it typically will require several years and tens of thousands of dollars to obtain issued U.S. and foreign patents. http://research.utsa.edu/research-funding/commercialization/intellectual-property-process
Q: What are some of the important things I should know about patent rights?
A: While the university owns the invention or discovery if a patent is pursued, it is the inventor(s’) name(s) that will appear on the patent. http://research.utsa.edu/research-funding/commercialization/intellectual-property-process
Q: What if I want to talk about my ideas with a potential business partner? Who can help me with this?
A: In the event of ongoing industry partnerships, the UTSA Chief Commercialization Officer will be involved to ensure the long-term growth and success of these relationships.
Q: What do I do if I want to create a company for my invention?
A: If creation of a new business start-up is being pursued, the UTSA Chief Commercialization Officer (210-458-6985) will work to license the start-up. http://research.utsa.edu/research-funding/commercialization/intellectual-property-process
Q: How do I file for a copyright?
A: Copyright protects the expression of an idea, not the idea itself, in contrast to a patent, which protects an idea and its implementation. The expression must be in some retrievable form such as handwriting, set in type, or recorded on storage media. http://research.utsa.edu/files/commercialization/Copyrights.pdf
Q: If I start a company related to my research, do I have to inform my Chair and Dean?
A: Yes, Department Chairs and Deans should be aware of any company that is owned by a faculty member. In addition, the Office of Research Integrity should be notified. An outside activity form should be completed and submitted to the supervisor.
Q: If I am consulting for a company in the area of my research how do I make sure I protect my own research?
A: You can consult with the Office of Commercialization and Innovation to ensure that your research is protected through written agreement. (210) 458-6963.
Q: My research notebooks are my property to move as I may move from institution to institution, correct?
A: You can consult with the Office of Commercialization and Innovation to discuss the removal of research notebooks from UTSA. (210) 458-6963. For information on the importance and use of research notebooks, visit http://research.utsa.edu/research-funding/commercialization/intellectual-property-process/maintaining-books
Q: How do I find funding to develop a prototype for my invention?
A: The Office of the Vice President for Research has set up this website to provide our university research community continually updated information on all aspects of the funds available for research and development initiatives.
Q: What are the sources of Proof of Concept funding?
A: Proof of concept funding is handled through the Office of Commercialization and Innovation. Contact (210) 458-6963 for additional information. http://research.utsa.edu/research-funding/commercialization/pocs
Q: If I want to publish my student’s work product, what is the process for gaining their permission?
A: You can consult with the Office of Commercialization and Innovation to discuss the process for publishing a students work product. (210) 458-6963.
Q: Who pays to file patents? Copyrights?
A: Royalties and/or license fees are paid to the University by the Company that obtains a license to market or commercialize the invention or the discovery. http://research.utsa.edu/research-funding/commercialization/intellectual-property-process and http://research.utsa.edu/research-funding/commercialization/entrepreneurship-and-training/
Q: Who owns patents? Copyrights?
A: In the U.S., a patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. A patent does not necessarily provide the holder any affirmative right to practice a technology since it may fall under a broader patent owned by others. Instead, it provides the right to exclude others from practicing the invention. Patent claims are the legal definition of an inventor’s protectable invention. http://research.utsa.edu/files/commercialization/UTSA_Guide_Innovation_Commercialization.pdf
Q: What are student’s rights regarding inventions and copyrights?
A: Per the Regents Rules, Series 9000 Intellectual Property (http://www.utsystem.edu/BOR/rules.htm), and the university’s employment contract, all inventions made by faculty, staff and students during their employment with UTSA belong to the university. The inventor(s’) name(s) appear on the patents, but the patents are assigned to UTSA. Students are considered to own any of their own inventions created for class projects or assignments, but inventions resulting from work they do for funded research, such as a graduate research assistantship in the lab, remain the property of the university.
Q: What does patentability mean?
A: Patent applications are generally drafted by a patent attorney or a patent agent (a non-attorney with a science education licensed to practice by the PTO). The patent attorney generally will ask you to review an application before it is filed and will also ask you questions about inventorship of the application claims. At the time a patent application is filed, the patent attorney will ask the inventor(s) to sign an Inventor’s Declaration and an Assignment, which evidences the inventor’s duty to assign the patent to the University. Under UT System Regents Rules assignment of a patent to the University is a condition of employment.
Q: What does marketability mean?
A: Marketability is a measure of the ability of a an invention to be bought and sold. Marketability is a determining factor for UTSA to fund patent processes for UTSA conceived inventions. http://research.utsa.edu/research-funding/commercialization/intellectual-property-process/
Q: What is the UTSA Tech Transfer Policy?
A: Technology transfer steps can be viewed at http://research.utsa.edu/research-funding/commercialization/intellectual-property-process/
Q: What is the UTSA Revenue Distribution Model?
A: Revenues from license fees and royalties, minus any unreimbursed patenting and filing expenses, are shared with inventors 50/50. The inventor(s’) revenue is distributed as income above and beyond normal salary, typically reported on an IRS 1099 form. The university portion is allocated to the VP for Research, the college, the department, and the inventor’s lab. This revenue is to be used as discretionary funds for reinvesting in the growth of research in the university (i.e. research, staff, students, conferences, etc.). http://research.utsa.edu/commercialization/revenue.php
Q: Does UTSA allow new venture incubators?
A: Translating technological innovations into new products and services is a critical factor for the US economy. The UTSA New Venture Incubator (NVI) program is focused on supporting the translation of research into products and services. http://research.utsa.edu/research-funding/commercialization/new-venture-incubator