“Turning a new discovery into a commercial product is an exciting (and challenging!) journey, especially for researchers working in the life sciences. Whether you are a new inventor or a technology transfer veteran, listed below you will find information to help you understand how our office works with researchers at the UTHSC and what UTRF will do to help bring your idea to market.”Richard Magid, Vice President, Office of Technology Transfer, UTHSC
Why is it so important to accurately determine who are inventors?
If a patent does not correctly list the inventors it can be declared invalid and thrown out. If (when!) your invention is a big success and is making lots of money, it is reasonably likely that competitors will be looking to copy your invention. One strategy that companies use is to attack the key patents protecting an invention because if they can defeat your patents they can legally sell copies of your invention.
Who is an inventor?
Basically, the inventors are all the people who contributed to the conception of the invention. Conception is the mental part of invention – formulating a mental representation of the means to achieve a desired result. While there may be considerable work involved in building and testing this mental representation to create a tangible invention (which is referred to as the “reduction to practice” in patent law), only individuals who contributed to the conception of the idea are inventors on the patent.
Who is not an inventor?
An individual who was involved in the reduction to practice of an invention, but not the conception, is not an inventor. A department head or dean who did not have any direct role in the making of the invention is not an inventor. The sponsors who provided the funds supporting your work on the invention are not inventors. A colleague who generously provided materials for you to build or test your invention is not an inventor.
How can I reward people who are not inventors?
As discussed above, naming inventors incorrectly on a patent can have serious adverse consequences, so UTRF will always follow the advice of our patent attorneys when there is a question of inventorship. However, this doesn’t mean that we can’t include non-inventors in the royalty sharing of your invention. During the commercialization process UTRF, UT, and all of the individuals to receive royalties, will sign a document called a “Basic Agreement” that clearly defines how revenues will be split. You are welcome to reward important contributors with a royalty share, by including them in the Basic Agreement.
What if there are inventors at another institution?
Because research is such a collaborate process today, there frequently are inventors from more than one school involved. In these cases, UTRF will work with the technology transfer office at the other school(s) to jointly manage the invention. Most commonly, we will sign an Inter-Institutional Agreement with the other school, which details who will take the lead on patenting and commercialization, as well as how expenses and royalties will be split.