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Inventors

The Office of Technology Management (OTM) serves the University’s faculty, students, and staff in the technology transfer and commercialization processes of new discoveries.

This section provides information, instructions, forms, and additional resources to help you work with OTM in technology commercialization. In addition, you may find it helpful to visit our Frequently Asked Questions (FAQS) page, which provides answers to common questions about OTM and technology commercialization. You may also contact us to help answer any questions.


General Process Guidelines

Report of a new technology or discovery to OTM should occur when a creator believes he/she has a new discovery, creation, software, and/or invention before a public disclosure. This report is completed by the filling out, signing and sending to OTM one of 4 technology report forms, as appropriate:

Funnel diagram illustrating the five-step technology licensing process. Step 1: Technology disclosed to OTM – IP protection requirements evaluated and commercial potential researched. Step 2: IP protection and marketing strategy developed – File patent applications, if necessary. Identify potential licensees. Step 3: Introduce technology to potential licensees – Draft and execute necessary agreements to protect technology during discussions with potential licensees (e.g. confidentiality agreements). Step 4: Negotiate license agreement(s) for technology – Discuss licensing opportunity with inventors. Draft appropriate license agreement for technology. Step 5: Execute License Agreement – Continuous monitoring licensee’s compliance with terms of license. Management and distribution of consideration received from licensee. Colorful circles of various sizes flow through a narrowing funnel from left to right, representing technologies or ideas being refined through each step.

  1. Technology Report Form: Patents (for something that might be patentable)
  2. Technology Report Form: Software
  3. Technology Report Form: Research Material and/or
  4. Technology Report Form: Copyright

The type of form (or multiple forms) used to report the new intellectual property to OTM depends on the nature of the technology being reported.


Benefits of Working with OTM

There are a wide range of benefits when University technologies are successfully developed and commercialized. The public benefits through job creation, as well as through the availability of innovative and life-saving products and services. The University, its researchers, and its students all benefit from commercialization revenue, where such revenue is directly shared both on a personal level as well as through critical funding for other academic programs.

OTM has a history of successfully licensing and commercializing University technologies, and has consistently ranked among the top universities in licensing income. Over the last 10 years, OTM has brought in millions of dollars in licensing income to the University.

For more information or to report your invention, please see the resources for inventors section below.


Resources for Inventors

  • Forms and Instructions

    Technology Report Forms

    To be submitted via email

    Instructions for submitting a Report Form to OTM

    Please read the following important instructions prior to completing a report form. The submission of a report form is the initial step in the intellectual property process.

    STEP 1: Select the appropriate form for your disclosure.

    If you are unsure, please contact us and we will assist you in selecting the appropriate disclosure form.

    STEP 2: Completely fill out the appropriate report form (including all required attachments).
    Please print the report form, have all UTHealth creators sign the form and date their signature (original signatures please, as this is a legal document).

    STEP 3: Return the completed original report form to “UCT 1400” via inter-departmental mail or drop it off at 7000 Fannin, Suite 1400.
    Please include all documents and/or papers that are relevant to your disclosure, including unpublished abstracts, manuscripts, and write-ups.

    OTM will evaluate the report to determine the UT System Board of Regents’ interest in and rights to the intellectual property. This evaluation may include interviews with the inventors/creators, searches in various databases for prior art, patents or other publications, or other diligence as applicable for the type of intellectual property reported. The intellectual property is also reviewed with regard to for commercialization potential, including what existing companies are there that might be interested in licensing such intellectual property, and/or what interest is there in forming a new startup company based on such intellectual property.

    Typical Evaluation Process for a Technology Report Form

    OTM will make a recommendation that may include the some or all of following:

    • place the report on a hold/deferred status and request additional research data/information from the inventors/creators;
    • perform a preliminary patentability search through a law firm/commercial service, or in-house;
    • file a patent application or copyright registration;
    • pursue a research sponsorship or licensee; or,
    • license/release of some or all of the rights back to the inventor, while retaining certain rights on behalf of UT.

    Recommendations for Software, Copyright and other types of technologies may have similar, alternative and/or additional recommendations.

    If the decision is made to file a patent application, the detailed application will be prepared by an outside patent attorney engaged by UTHealth with the assistance of the inventor and OTM.

    A decision NOT to file may result in the:

    • holding of the Report, with the Board of Regents retaining rights; or
    • return of some or all rights in the Report to the inventor by license or assignment; or
    • commercialization without securing patent rights (may be typical scenario for software, copyright materials and/or research materials)

    Commercialization of the Intellectual Property

    Commercialization of intellectual property involves drafting, negotiating and executing an option and/or license agreement with a third party company. UTHealth does not transfer ownership or assign its rights in the intellectual property to the company, but instead grants the company an exclusive or non-exclusive license to make, use and sell products based on the intellectual property. OTM negotiates these agreements on behalf of UTHealth, as well as any contractual documents representing the Board of Regents’ intellectual property interests developed at UTHealth, including but not limited to confidentiality agreements, option agreements, etc. OTM regularly consults with inventors/creators on terms and conditions of these agreements.

    Once the intellectual property is licensed to a company, OTM monitors the license agreement for compliance regarding the obligations due the University, including collection of fees/royalties, and ensuring that any diligence milestones and/or other obligations of the company are completed in a timely manner. When OTM receives cash under a license agreement, OTM manages the distribution of those funds, both within the University as well as to the individual inventors, all in accordance with HOOP policy (and in accordance with any royalty sharing agreement if multiple inventors are involved).

    If you have any questions or need further assistance, please call: 713-500-3369.

  • Policies and Regulations

    UTHealth Houston Intellectual Property Policy
    UTHealth’s Handbook of Operating Procedures (HOOP) (Policy Number 201) outlines University Intellectual Property policy regarding inventions and intellectual creations.

    UT System Intellectual Property Policy
    Regents’ Rules & Regulations outline The University of Texas System policies regarding intellectual property.

    UTHealth Houston Research Conflict of Interest Policy

    UTHealth Houston Royalty Distribution Policy
    Pursuant to UTHealth’s HOOP (Policy Number 201), and after certain costs of licensing and patenting are recapture (i.e. outside patenting costs), UTHealth divides any remaining royalty income as follows:

    50% Creator(s)
    5% Lab of Creator(s)
    5% School of Creator(s)
    5% Department of Creator(s)
    35% Office of Technology Management

  • Education and Training

Related Links

Available Technologies

Contact Us

Office of Technology Management

7000 Fannin Street, Suite 1400
Houston, Texas 77030
Fax: 713-500-0331
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