Intellectual Property Process

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.

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).

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.

If creation of a new business start-up is being pursued, the OCI Licensing Associates will work to license to the start-up and help find resources and programs to accelerate then company’s success. 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.

If an existing company is the licensee, OCI will develop the license agreement. In the event of ongoing industry partnerships, the Director of Commercialization and Tech Transfer 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.

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.).

Multiple inventors and/or patents in a license, a UTSA Revenue Distribution Formula Agreement (RDFA) will be signed by the inventors clearly defining the terms of royalty distributions. The initial RDFA includes a draft formula based on the contributions listed in the Invention Disclosure(s) relating to the license. All inventors must sign the RDFA, signifying their approval. The RDFA also outlines how revenue will be distributed in the event that new inventors and/or patents are added to the license agreement, as can arise with a sponsored research agreement. The Office of Commercialization and Innovation staff will work with inventors to create an RDFA.