Bringing an innovation to market is an exciting and challenging journey — and UTRF is here to guide you through the process. A key part of starting the technology transfer process is understanding who is considered an inventor. For more information, please consult our document Who is an Inventor?
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 (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.
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 your innovation is successful, it is likely that competitors will look 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.
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 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 collaborative process, there are frequently inventors from more than one school involved. In these cases, UTRF will work with the technology transfer offices of 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.