The University of Tennessee Research Foundation is a non-profit 501(c)(3) organization that promotes the commercialization of UT intellectual property, encourages an entrepreneurial culture, contributes to state and regional economic development, and promotes research and education to benefit the people of Tennessee and beyond. While UTRF is a separate entity from UT, it provides assistance and resources to the research activities of faculty, staff and students of the UT system by helping move ideas to the marketplace.
The UT Foundation is an interdependent nonprofit corporation that enriches the lives of the students, faculty, staff, alumni and friends of the University of Tennnessee through alumni engagement, financial stewardship and private investments. Please click here to learn more.
An innovation or invention can be almost anything! Over the past few years, UT faculty, staff and students have disclosed innovations ranging from software and medical devices to research tools, artwork and curriculum. Nationally, university researchers develop thousands of new inventions each year covering all economic sectors.
To disclose an innovation, submit an Innovation Disclosure form. We also encourage you to call our Multi-Campus Office or our Health Science Center Office, or contact us by email, especially if you haven’t previously worked with us.
We will need the electronic disclosure form so that we may record your disclosure.
Under UT Policy, any innovations that are developed as a part of employment, or with the use of University facilities or funds, are owned by the University, including innovations 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.
It usually takes about 60 days to reach an initial decision. To perform an evaluation, your licensing associate will need to: 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 innovation at an internal UTRF 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 much complete an evaluation before a patent application may be filed.
Because an innovation must be both protectable and marketable for UTRF to invest in a patent application, we do occasionally have to decline some promising innovations. 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 to find available partners.
If your innovation 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 you (inventor). 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.
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 innovation.
This Submit Disclosure link will take you to the page where you may submit a disclosure.
Once UTRF has received your 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 email or phone.
Click here for the Technology Transfer Process Infographic
During the review process, UTRF may enlist the assistance of a patent attorney to further evaluate the technology for patentability. Based on the market and patentability assessment, a decision will be made as to whether an application will be filed. You, as an inventor, will have input in that decision.
Please reference the Who is an Inventor? page. Essentially, 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.
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 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 can discuss your technology in-depth. Then UTRF may negotiate an agreement for research funding, option or licensing fees, depending on the company’s level of interest.
To summarize briefly: you (inventor) will receive the first $5,000 that UTRF grosses, 40% of UTRF’s profits up to $1,000,000 and 35% of profits above $1,000,000. 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 no initial fee for UTRF to process your disclosure; this is part of what UTRF does for and on behalf of UT. 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 (inventor) on behalf of UT. 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.
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. See details in the <link> revenue sharing policy. The current policy may be found in Section 2.
This Revenue Sharing Graphic provides an illustrated breakdown of the policy.
PATENTS AND PUBLIC DISCLOSURE FAQS
Generally, the process takes at least one month to file a patent. Upon deciding to invest, UTRF will engage a patent attorney to work with you who will speak with you and read written descriptions of your innovation. 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-to-three revisions for a patent application to be ready for filing. The sooner you begin working with an attorney, the shorter the time to filing will be.
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, we can reach out to our existing industry contacts. 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 local, state and national partnering meetings, at which we pitch UTRF technologies to investors and companies in attendance. Finally, UTRF can also post a marketing abstract on the UTRF website to showcase your innovation. We’ve made several deals that have started with a company reading a technology description online.
Yes! If you wish to start a company, please let UTRF know at the start of the process, as this impacts 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 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 innovation is related to their field of business. Don’t disclose the details of your innovation without speaking with UTRF, as this may be considered a public disclosure and impact patent rights. Click here for more information.
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! We host an annual Maturation Grant competition each fall and award several 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.