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.
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:
- Patentability: Under the U.S. patent law, an invention is patentable if it meets the following requirements:
- 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.)
- Utility: An invention should be useful and have an intended purpose in the real world.
- 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.)
- 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.
- 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.
- 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.
- 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.
- 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. If companies wish to know confidential information or request samples for testing to make a decision on licensing, OTC will contact Contracts and Industry Agreements to 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 contact Contracts and Industry Agreements to 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. 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). Contracts and Industry Agreements works with external institutions to get IIAs in place where appropriate.