Frequently Asked Questions
Health Science Center
Do you have questions about working with UTRF, or about patents, copyrights or Material Transfer Agreements? We have compiled answers to some of the most common questions:
What/Where is the form I need to submit a Disclosure?
http://utrf.tennessee.edu/techtransfer/resources.shtml. This link will take you to the page where you may click on "technology disclosure form."
You need to complete parts 1-7, have your department head and dean sign parts 8 and 9, and then send the form to the Office of Research Administration (910 Madison, Suite 823). At this time disclosure forms cannot be routed electronically -- you must sign and send a printout. ORA will obtain the signature of the vice chancellor of research and then send the completed form to UTRF, allowing us to assign your invention a file number.
UTRF has been very helpful in securing additional funding for prototype development, seeking licensing partners, and providing me with start-up assistance for the technologies I have developed at UT.
-Jimmy Mays, Professor, UT Department of Chemistry
Who/Where does it go?
Once you have completed the form, you will need to print and process it for signatures by your department head, dean and campus research officer. The campus research office will forward it to UT Research Foundation for review and evaluation.
What happens after I submit the disclosure form?
Once UT Research Foundation has received the disclosure form, it will be given a file number and 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 can be of assistance. You are welcome to contact the licensing associate by e-mail or phone (both will be listed in the contact letter).
Does this mean UTRF will file a patent application?
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.
I have already published a paper or had discussions with someone/Company, what happens now?
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.
I have a company that wants to talk to me about my work/Technology, what should I do?
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.
How much does this cost me or what do I get out of UTRF handling my technology?
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 following revenue sharing policy. To summarize briefly, you (inventor) will receive the first $5,000. Any money received after that will have the UTRF expenses deducted, and money will be split in increments, as stated per the policy.
There is never any cost to you or your grants, this is what UTRF does for the University. If there are revenues collected from a commercial partner then you will receive royalties based on the UT policy which existed at the time you made your disclosure. The current policy is found here. To summarize briefly, the inventors will receive the first $5000 that UTRF grosses, 40% of UTRF’s profits up to $1,000,000 and 35% of profits above $1,000,000.
What can be an invention?
An invention is almost anything. In the past five years, UTHSC 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.
How do I disclose an invention?
To disclose an invention, you should submit an invention disclosure form. However, we also encourage you to simply call or email UTRF especially if you haven’t previously worked with us. Eventually we will need a disclosure form so that we can formally record your invention disclosure, but we can start just by talking with you and learning about your idea.
Who owns my 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 here. 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. UTRF may include individuals in a royalty-sharing plan, even if they are not on the patent.
How long does it take UTRF to evaluate my invention?
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 can be filed.
What if UTRF declines my invention?
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.
Finally, we hope that you succeed and prove us wrong! Everyone at UTRF strongly believes that moving inventions from UT to the marketplace benefits society, and we will cheer your success, regardless of our own involvement.
How long does it take to file a patent once UTRF approves?
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 respond to the attorney, the shorter the time to filing.
How does UTRF find partners?
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.
What does a standard license look like?
Although each technology and each license is unique, we do have a template license that is our preferred starting point. This is only a starting point for negotiations, and our experience is that it quickly can be customized to fit each deal. UTRF will never turn away a partner simply because they have another license template they prefer to use. There are no standard financial terms; UTRF will consider any equitable deal.
Can I start a company with my invention?
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.
may I still consult, if I have disclosed an invention?
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.
How much does a patent cost?
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.
Can UTRF provide money to help me develop my invention?
Yes, but only through our annual Maturation Grant competition. This competition is held in the fall of each year and awards a number of $15,000 grants. 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.
Are policies the same for students, faculty and staff?
Inventions made by students are evaluated to determine if they involved the substantial use of UT resources. Current University policy specifically defines the general use of libraries, Internet and computers as not being a substantial use of University resources, so a student would likely retain ownership of their invention despite the use of these resources. In contrast, a graduate student’s involvement in a sponsored research project will be considered the use of substantial University resources, and they will be treated as equals to other faculty and staff involved in the project.