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OTC Processes

Research


Your research efforts can lead to impactful discoveries and innovations. If given the chance, university breakthroughs carry the potential to transform lives and change the world. The goal of the office is to facilitate advancement of such research and put these breakthroughs to practice in the real world. In addition to IP protection and commercialization, OTC offers assistance in following collaborations:

A Non-Disclosure Agreement (NDA), also sometimes referred to as a confidential disclosure agreement (CDA) or a proprietary information agreement (PIA), is a legal contract between at least two parties which outlines confidential materials or knowledge the parties wish to share with one another for certain purposes, but wish to restrict from generalized use.

Material Transfer Agreements (MTAs) are contractual documents used for the acquisition of various biological and research materials, and occasionally data, developed by nonprofit, government and private industry. Often these materials are a necessary component of a research project and are available only from a sole source, often industry. Industry may view their materials as important proprietary resources, and may want to assert ownership of any inventions made with those materials, or restrict publication of unfavorable results. Universities will want to ensure that MTA terms permit full dissemination of research results, and do not conflict with other University policies. Because of these differing views of MTAs, the necessary negotiations to accommodate the needs of both parties can be time consuming. The usual areas of negotiation relate to publications, use of the research results, and the ownership of the technology generated by the research. To submit an MTA request, please fill out the appropriate MTA form available here: MTA Infoforms

A Data Use Agreement (DUA) is a contractual document used for the transfer of non­ public or restricted use data. Examples include records from governmental agencies, institutions or corporations, student records information, and existing human research subjects' data.

IP License Agreements are legally binding contracts where the owner of intellectual property gives a third party (usually referred to as "the licensee") permission to use, reproduce, and/or create derivative works (as the case may be), often in a defined territory. License Agreements may be exclusive or non-exclusive, royalty bearing or royalty free.

Royalty-free licenses are commonly required on government sponsored projects and processed within the grant agreement. However, royalty bearing licenses for commercialization are processed through OTC.

Option agreements are contracts between two parties, in which one party has the right, but not the obligation, to negotiate a license with the other party for the use of certain technologies. It outlines the general terms and conditions for the license and a future date for the transaction. Option agreements can be executed in an exchange of a fee (often called premium) or be paid-up (provided other elements present). Option Agreements are often associated with the licensing of technology owned by the UT Board of Regents, hence, processed through OTC.

Contract between two or more institutions that are co-owners of an invention. The purpose of the agreement is to establish the rights and obligations of each of the co­ owners with regard to the management of their joint invention and to designate a managing party.

Agreement between two or more parties who are co-owners of an invention with the intent of exploiting an invention, commercialize it, and share expenses and royalties revenues generated.

Invention Disclosures

An invention disclosure is a written description of an invention that the inventors submit to OTC. This step is important for initiating the IP protection and marketing process.

It is best to disclose any idea/technology to OTC as soon as it is deemed an invention, even while in initial development phase. It is also required to disclose any potential inventions to OTC before disclosing them to a third party.

Technology Assessment

OTC will evaluate the disclosed invention based on following factors:

  1. Patentability: Under the U.S. patent law, an invention is patentable if it meets the following requirements:
    1. Patentable subject matter: The subject matters that can be patentable include processes, machines, manufactured articles, and compositions of matter. (To contrast, some non-patentable subject matters include data structures, nonfunctional descriptive material like books or music, electromagnetic signals, laws of nature, and other abstract ideas.)
    2. Utility: An invention should be useful and have an intended purpose in the real world.
    3. Novelty: The details of an invention should not be publicly disclosed before the date of filing. (Some countries have a grace period where patent applications are still allowed after a public disclosure.)
    4. Non-obviousness: For an invention to be patentable, it should not be obvious to an ordinary skilled person in the subject. The invention should not be apparent by looking at the prior art in the subject.
    5. Enablement: The invention should be explained with enough detail that a person with ordinary skill in the art can implement it without any undo experimentation.
  2. Commercial potential: OTC will evaluate the technology based on the potential of the technology to be commercialized. This includes analyzing the market needs and demands for similar technologies.
  3. Competitive technologies: OTC will review the available competitive technologies currently on the market. This review will give an idea about market needs and potential licensees.
  4. Feasibility of development and manufacturing:

Our staff will meet with the inventors to discuss the invention so that the invention and its applications are mutually understood. We will consider these aspects along with your input, and together make a decision about whether or not to proceed with protection of the invention.  This process could take anywhere between 1 week to 3 weeks, depending on the technology. Any prior public disclosures or prior art might affect the evaluation process. If an invention qualifies for further consideration, we will proceed with protection and marketing to find a qualified licensee.

IP Protection

Inventions can be protected using patents, copyrights and trademarks. Utility patents are the most commonly used patent type. Patents are granted for new, nonobvious and useful inventions, such as a process, machine, article of manufacture or composition of matter. Copyrights are granted to original works of authorship including literary, dramatic, musical, artistic works, software, architecture, and collections. If the invention qualifies, OTC will proceed with and coordinate the application filing process. A patent attorney is engaged to draft the patent application. The inventor works closely with the attorney to complete the application. The completed patent application is submitted to the United States Patent and Trademark Office (USPTO).

Marketing

Most often, potential licensees identified by the inventors are useful for licensing the technology. OTC uses multiple sources and strategies to identify potential licensees for marketing the invention. OTC website lists all the inventions developed at UTRGV that are available for licensing. Other third-party services are also used for finding the potential licensee and marketing the technology. Additionally, our staff identifies the companies that might be interested in licensing and reaches out to them individually. Inventor’s active involvement can dramatically improve the chances of matching an invention to a company. Your research and consulting relationships are often helpful in both identifying potential licensees and technology champions within companies.

OTC will work closely with the inventors in the process of marketing the technologies. Inventor is the best person to describe the technology and its advantages. OTC will set up meetings between inventors and potential licensees to discuss the invention and the company requirements. Companies might wish to know confidential information or request samples for testing to make a decision on licensing, in this case OTC will execute appropriate agreements (Option agreement, NDA, MTA, RCA, etc.) with the company to protect the confidentiality of the invention and related know-how.

Licensing

A license is an agreement between the university and a licensee where the licensee is granted the rights to create, use or sell the invention. Inventions can be licensed to one or multiple licensees depending on the exclusivity. An exclusive license trades the rights to a single licensee and restricts the owner from licensing those same rights to any other third party during the license period. A non-exclusive license trades the rights to multiple licensees and each one can produce and sell the invention. OTC will identify the appropriate license and negotiate the terms with the licensee.

Revenue

Licensing fees, royalties and payment milestones are negotiated with the licensee during licensing of the invention. The licensing revenue, after reimbursement of the patenting and file expenses, will be distributed among the inventors and the university. According to UTRGV policy, the inventors receive 50% of the revenue. If there are multiple inventors, the inventor's share of revenue will be distributed among them depending on the inventorship contribution that is agreed to by the inventors during the time of invention disclosure.

For joint inventions with other institutions, the distributionof revenue will be negotiated and defined in an Inter-Institutional Agreement (IIA).