The process of technology transfer is summarized in the following steps. These steps can vary in sequence and often overlap.
Observations and experiments in UTSA laboratories or other research facilities often lead to discoveries and inventions. An invention is any useful process, machine, composition of matter, or any new or useful improvement of the same. Often, multiple researchers may have contributed to the invention. Keeping good lab notebooks is an important part of the invention process.
Any early contact with our tech transfer personnel to discuss your invention and to provide guidance with respect to the disclosure, evaluation, and protection processes described below.
3. Invention Disclosure:
The written notice of invention or discoveries that begins the formal technology transfer process. An invention disclosure remains a confidential document and should fully document your invention so that the options for commercialization can be evaluated and pursued. The disclosure helps establish the timing of your invention or discovery and assists the licensing specialist with evaluating the commercial potential of the technology. 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.
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. This evaluation process, which may lead to a broadening or refinement of the invention, will guide the licensing strategy. The four key points for assessment include technology readiness, patentability, commercial potential, and licensing potential.
The process in which protection for an invention is pursued. Patent protection, a common legal protection method, begins with the filing of a patent application with the U.S. Patent Office and, when appropriate, foreign patent offices. 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. Other protection methods include copyright, trademark, trade secrets, and contractual use restrictions (e.g., for databases and materials).
6. Find Licensee:
Commercialization staff will identify candidate companies that have the expertise, resources, and business networks to bring the technology to market. Your active involvement can dramatically shorten this process, as two thirds of all licenses are derived from inventor contacts.
7a. Start-up Company:
If creation of a new business start-up is being pursued, the UTSA Chief Commercialization Officer (210-458-6985) will work to license to the start-up. In the event of faculty/staff involvement in the company, the appropriate Conflict of Interest forms (COI) will need to be submitted and a conflict management plan will be created. The COI office will help first time faculty/staff on their COI forms. The procedure is fully defined with the forms and the COI committee can be contacted via Dr. Michelle (Mickey) Stevenson at (210) 458-4233.
7b. Existing Business:
If an existing company is the licensee, OCI will develop the license agreement. 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. In the event that faculty/staff have roles or financial interest in the company involved in the license, then COI forms will also need to be filed.
A license agreement is a contract between the University and a third party in which the University’s rights to a technology are licensed, without relinquishing ownership, for financial and other benefits. An option agreement is sometimes used to enable a third party to evaluate the technology for a limited time prior to making a decision about licensing.
The licensee continues the advancement of the technology and makes other business investments to develop the product or service. This step may entail further development, regulatory approvals, sales and marketing support, training, and other activities, eventually resulting in sales of a product or service to the public.
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. To encourage further participation in the technology transfer process, 50% of the royalty revenues received by the University after patents expenses are reimbursed, are distributed to the inventor(s). All patent costs must be recovered by the university before royalty distributions are made to the inventors.
If I have an invention or discovery what do I do?
- 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.
- Complete the Disclosure Form (PDF) before publicly disclosing your technology or submitting a manuscript for review and publication. Include companies and contacts you believe might be interested in your invention or who may have already contacted you about your invention. Call (210) 458-4458 or send an e-mail to email@example.com when your disclosure is complete and someone will pick it up in person.
- To avoid risking your patent rights and possibly hindering the opportunity to market your invention, contact the Office of Sponsored Project Administration to ensure you have the appropriate agreements in place.
- Some aspects of the patent and licensing process may require significant participation on your part. You will be required to participate with the lawyers and licensing staff in drafting the patent material and responding to information requests as part of the patenting and licensing process.
- Keep licensing staff informed of upcoming publications or interactions with companies related to your intellectual property.
How long does the tech transfer process take?
From disclosure to having a patent filing decision should take 1 month. Once the patent has been filed, the patent process however, might take years, as the United States Patent and Trademark Office (USPTO) currently has a 3-5 year backlog of patents to review. The commercialization process may take months to years depending on the level of development of the invention and the approval timeline for the invention. For example, new drugs take years to develop and achieve FDA approval before sale, compared to software that may be developed and sold in a matter of months with no regulatory approval.