Click on the panels below to view answers to some of the most frequently asked questions:
Submit Disclosure. This link will take you to the page where you may submit a disclosure.
Once UT Research Foundation has received the disclosure form, it will be given a file number. You (inventor) will receive a letter advising you of the file number and the licensing associate who will be handling your file. UTRF will review your disclosure, set up a discussion time with you, and evaluate your technology to determine whether UTRF may be of assistance. You are welcome to contact the licensing associate by e-mail or phone (both will be listed in the contact letter).
During the review/evaluation process, UTRF may enlist the assistance of a patent attorney to further evaluate the technology for patentability. Based on the market and patentability, a decision will be made as to whether an application will be filed. You, as an inventor, will have input in that decision.
UTRF is happy to work with you (the inventor) and any company that would like to discuss your technology. UTRF can prepare a confidentiality agreement that the company, UT and UTRF may sign so that you will be able to discuss your technology in-depth. Then UTRF possibly may negotiate an agreement for research funding, option or licensing fees, depending on the company’s level of interest.
- There is no initial fee for UTRF to process your disclosure; this is part of what UTRF does for, and on behalf of, the University.
- By University rules, UT professors/inventors are required to submit their disclosures that have been developed on/at the University or with University time/funds, especially if there is outside funding involved.
- UTRF is set up to protect the rights of you (inventors) on behalf of the University. There is no fee to you (inventor) for filing a patent application or the salaries of UTRF employees.
- If there are fees and/or royalties collected, then there is a policy that determines how that money is distributed.
- See the details in the revenue sharing policy.
- There is never any cost to you or your grant.
- If there are revenues collected from a commercial partner, then you will receive royalties based on the UT policy that existed at the time you made your disclosure.
- The current policy may be found in SECTION 2. Distribution of Revenue.
- Revenue Sharing Graphic
An invention is almost anything. In the past five years, UT faculty, staff, and students have disclosed software, medical devices, drugs, biomarkers, research tools and many other inventions. Nationally, university researchers develop thousands of new inventions each year covering all economic sectors.
To disclose an invention:
Under UT Policy, any inventions that are developed as a part of employment, or with the use of University facilities or funds, are owned by the University, including inventions developed under sponsored research awards. However, ownership of textbooks, teaching materials, publications and other scholarly written works is generally excluded from this policy and ownership remains with the author. During the commercialization process, ownership of inventions is transferred from UT to UTRF, using a written assignment agreement that the inventors, the University, and UTRF will sign.
This is a complicated question that is answered more fully on the “Who is an Inventor?” page. The bottom line is that patent law is very specific about who should be included on a patent and an external patent attorney will make that determination, but UTRF can include individuals in a royalty-sharing plan, even if they are not on the patent.
We typically take around 60 days to reach an initial decision. To perform an evaluation, your licensing associate will need to be meet with you to understand the invention and your goals, look through both the academic and patent literature to make a patentability assessment, perform market research to make a commercial assessment, present your invention at a UTRF internal meeting, and sometimes seek external opinions if the previous steps still have not created a consensus opinion. If there is an urgent deadline, such as a publication or conference, UTRF will attempt to accelerate this process, but all inventions need to complete an evaluation before a patent application may be filed.
- Because an invention must be both protectable and marketable for UTRF to decide to invest in a patent application, and because we have a limited patent budget, we do have to decline some promising inventions.
- First, please understand that this is not a judgment on your research.
- Unfortunately, many of the best university research projects are too far ahead of industry for partners to be found.
- If your invention is declined, you will receive a formal close letter from UTRF, relinquishing UTRF’s ownership rights.
- Depending on the source of funding, ownership will generally revert either back to the sponsor or to the inventors themselves.
- For NIH-funded projects, the rights will revert to the government, but UTRF can help get these rights returned to you.
- If the rights are returned to you, you owe nothing to UTRF, regardless of what we may have spent.
- You also are free to commercialize your invention. As long as you do this without the use of UT resources, there will never be a University claim on your invention.
Patents & Public Disclosures
You should plan on at least one month to file a patent. Upon deciding to invest, UTRF will engage an outside patent attorney to work with you. This attorney will want to talk with you and read any written description of the invention. The attorney will then take several weeks to prepare a patent-application draft. You will be asked to review and comment on the draft, specifically making sure that the invention is thoroughly and accurately described. It generally takes two or three revisions for a patent application to be ready for filing, so the faster that you can respond to the attorney, the shorter the time to filing.
Any way we can! Finding a commercial partner to develop your invention is the hardest part of our job, and we use a variety of approaches. First, the best leads are industry contacts that the inventors already know. Next, we work hard to develop our own network of contacts, and will contact them when we have an invention that we think fits their company. We also attend numerous local, state, and national partnering meetings, at which we pitch UTRF technologies to investors and companies in attendance. Finally, all inventions on which a patent has been filed will have a marketing abstract posted on the UTRF website. Companies that we have never met are constantly searching online for their next product, and we have done several deals that started with a company reading a technology description online.
Yes, and you will join a growing list of UT faculty who have done so. If you wish to start a company, please let UTRF know at the start of the process, as this has a number of impacts on how we will manage your invention. UTRF does not have a specific financial deal that is offered to startups, but we will work with you to craft a deal with minimal upfront costs, usually by taking a small equity stake in your company in lieu of a cash license fees.
Yes, disclosure of an invention to UTRF has no impact on University-allowed consulting activities. However, you should disclose the existence of your invention to the outside party if your invention is related to their field of business. Don’t disclose the details of your invention without talking to UTRF, as this may be considered a public disclosure and impact patent rights. Click here for more information: the Impact Of Public Disclosure On Patent Protection.
Part of UTRF’s review will include public disclosure issues. If there has been a public disclosure, this will limit the realm of patenting the technology but may not mean that a patent application cannot be filed. Such filing will depend on several mitigating factors, which will be reviewed by UTRF.
UTRF typically budgets $5,000 for a provisional patent application, an additional $10,000 to file a utility application, and another $10,000 in costs to prosecute the application. These are only the U.S. costs; international costs are another $25,000 to $100,000+, so UTRF rarely approves international filing unless a partner is carrying the costs.
Yes, but only through our annual Maturation Grant competition. This competition is held in the fall of each year and awards a number of grants (up to $15,000). Sometimes UTRF learns of other grant programs for which UT researchers are eligible to apply. When such opportunities arise, we will solicit proposals from the campus.