Disclose the Invention
- The Invention Disclosure is a confidential document, and should fully describe the new aspects of your invention, including the critical solution it provides and its advantages and benefits over current technologies.
- An Invention Disclosure is a written description of your invention. It can include bullet-point descriptions, manuscripts, drawings and photos. Anything in writing can serve as an Invention Disclosure as long as it describes the essential features of your invention. The Invention Disclosure is the first step in documenting and protecting your idea.
- Please disclose your invention to OTC before making any publications or presentations, which are considered public disclosures.
The UT Dallas Office of Technology Commercialization (OTC) will evaluate your invention by assessing its stage of development and commercial potential. OTC will review the technology and perform detailed patent searches and market analysis to define the features and benefits of the invention.
- The first patent application OTC can file with the USPTO is a provisional patent application. A provisional application is valid for one year and holds your place in line at the USPTO. A provisional application is not examined, not read, and no patent is issued. The inventors obtain a filing date for the invention from the provisional application.
- Within that one-year period, OTC will search for similar ideas and conduct market analysis. Inventors are encouraged to gather more data to support their invention during the one-year period and work together with OTC to determine if a market exists for the technology, whether valuable products could be developed, and to locate industry contacts to find potential licensees for the technology.
- An international patent is not automatically filed on all inventions. OTC will work closely with the inventors on a case-by-case basis to determine the economic feasibility of filing an international patent application. Some considerations may include technology type, potential product lines, foreign markets, public disclosure, OTC budget constraints, and whether a licensee is willing to pay for all international patent fees.
- OTC will conduct a thorough market analysis to assess which industries will most directly benefit from your invention.
- OTC will identify companies within that market that may be interested in licensing your invention.
- OTC will provide a future outlook on those industries to evaluate the product development potential for your invention.
After a non-disclosure agreement (NDA) is signed, OTC strives to negotiate a deal that is a win-win for all parties involved. Compensation can take various forms but is usually some combination of a cash fee, patent expense reimbursements, royalties and equity. Other variable licensing terms include exclusivity, fields of use, duration, sublicensing rights, and required diligence milestones.
Whether commercialization is accomplished through an existing company or a startup, a license or other agreement is needed to grant the rights to use the university invention.
Revenue & commercialization
The licensee is obligated to develop university inventions into commercial products or services. The path to commercial markets by the licensee will vary depending on the nature of the invention, the market it addresses, and its stage of development. The major milestones in commercial development for a particular invention are usually identified in the patent license agreement. These can include achievement of technical or regulatory milestones, development of pilot facilities or commercial prototypes, and first commercial sale.