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General

What is technology commercialization/technology transfer?

Technology commercialization is the process of taking a research-based discovery and developing it into a marketable product for commercial use. This can be accomplished through a traditional licensing arrangement or through the formation of a new startup company and involves many elements along the way, including: intellectual property (IP) evaluation and protection; assessment of the commercial market and competition; advanced development and maturation of the technology or product; financing; and regulatory strategy development.

How long does the technology commercialization process take?

Depending on the type of technology the amount of time the commercialization process can take varies. Each novel invention is different and may require more or less time. The process could take, months or even years to complete, and in many cases may be as long as 10 years or more before significant product sales are realized based on the original discovery/invention. Therapeutics are likely to take even longer, due to the extensive clinical trials required by the FDA. In addition, the stage of development, the potential market, and competitors in the market could play a crucial role in how long the commercialization process will take for a technology.

What is my role as an inventor/IP creator throughout the commercialization process?

The most important things inventors and IP creators can do to aid in the commercialization process is keep detailed notes of your work, maintain regular communication with the Innovation Partners office related to developments in the work disclosed in your invention disclosure, and be responsive to requests for information especially related to intellectual property actions. Also, any information you may have about the market or potential licensees should be shared with Innovation Partners.

What is the Bayh Dole Act and what does this have to do with invention disclosures?

The Bayh–Dole Act or Patent and Trademark Law Amendments Act (Pub. L. 96-517, December 12, 1980) is United States legislation dealing with intellectual property arising from federal government-funded research. The Bayh-Dole Act permits universities that receive federal funding, small businesses, or non-profit organizations to elect to pursue ownership of an invention, rather than obligating inventors to assign inventions to the federal government as was the case prior to Bayh-Dole. When a University employee discloses the creation of an invention derived from federally funded research, the Texas A&M University System has limited time from that date to disclose that information to the appropriate federal agency; therefore, it is crucial that all inventions are disclosed promptly and disclosures outline any federal funding mechanisms used to further the development of the technology.

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Disclosure

How do I know if I have an invention and when should an invention disclosure form be submitted?

No matter how early-stage you think your discovery might be, your research could make a difference and lead to a successful commercial process or product. This is why disclosure is important and should be done as early as possible.

Why should I submit an invention disclosure?

No matter how early-stage you think your discovery might be, your research discoveries and new ideas could make a difference and lead to a successful commercial process or product. This is one reason why disclosing ideas/inventions is important and should be done as early as possible, but in all cases, prior to any publication. Disclosing creations of potential intellectual property to Innovation Partners and TTC is also the obligation of all Texas A&M employees, in accordance with System Policy 17.01, and is typically a requirement of all federal, and sometimes state grants.

How do I submit an invention disclosure?

Please visit the Disclosure page on our website to learn how to disclose an invention and download the appropriate form.

Should I list visiting scientists, collaborators from other universities or collaborators from industry on the invention disclosure form?

Yes, all persons who contributed to the conception of the invention and discovery should be listed in the invention disclosure form in the appropriate fields, A&M employees or not.

Can a student contribute to an invention?

Yes, students can contribute to inventions. It is important in the case of any contributor to an invention to make distinctions between a contributor, who may have participated in the development of the work or related experiments, versus an inventor who has contributed something new to the idea or creation of the invention and is listed on a disclosure.

Should I disclose research tools?

Yes, you should disclose research tools and tangible research materials. Research tools can consist of materials such as mice, vectors, or antibodies, etc. If the research tools an inventor uses would benefit other researchers it is important to list them. Research tools typically do not need to be protected by patents in order to be licensed.

Should I disclose software “inventions”?

Yes, software may be protected by copyrights, and in some cases patents, and can be licensed to companies for commercial purposes. Please visit the Disclosure page to learn how to disclose a software invention and download the software disclosure form.

What is the purpose of listing on the disclosure the sources of funding for an invention?

Under the Bayh-Dole Act and federal regulations and guidelines, the acceptance of federal grant money requires the disclosure of government rights in the invention. This includes an obligation to disclose the federal funding contribution on any invention disclosure. Further, most granting agencies require disclosure of any inventions arising from funding so including the funding information in your disclosure to Texas A&M helps ensure grant requirements are followed.

Does submitting an invention disclosure secure intellectual property/patent protection?

Submission of an invention disclosure does not secure intellectual property protections on its own. However, it does give an inventor access to Innovation Partners resources to determine any applicable intellectual property protections and devise a strategy for commercializing the invention.

What is the process for assessing an invention disclosure?

Submitted invention disclosures are first reviewed for completion of the information on the form and then forwarded to the export control office to determine if any limitations on transfers/information sharing need to be in place in compliance with federal regulation. Upon completion of the review, Innovation Partners is assigned the invention disclosure to perform a preliminary prior art and market analyses to determine commercial potential. The assigned licensing manager will meet with the inventor to gather more background on the invention to allow for more in depth analysis and discuss recommendations on how to proceed with the disclosed invention.

What constitutes an enabling public disclosure?

An enabling public disclosure enables an appropriately experienced individual (“person having ordinary skill in the art”) to reproduce the invention without undue experimentation or trial and error. Publications, technical journals, books, posting to a website, illustrations, presentations that are open to the public and are not confined, could preclude portions or the entirety of the invention from being patentable. If you have questions or concern about a potential public disclosure, please contact your licensing manager or email us.

Why should inventions be disclosed prior to public disclosure?

An invention should be disclosed to the University prior to public disclosure to ensure that optimal intellectual property protections may be pursued when applicable, as public disclosures may limit the intellectual property rights able to be sought if done prior to filing for IP protection. By disclosing an invention, an inventor can consult with an Innovation Partners licensing manager to determine the best protections for the invention, clarify deadlines, assist in the application process, and help create a commercialization plan.

Will I be able to publish the results of my research and still protect the commercial value of my intellectual property?

Yes. However, these activities must be timed correctly to avoid possible negative impacts to patent rights as publications are considered a public disclosure. It is best to submit an invention disclosure form and communicate with the licensing managers at Innovation Partners before publishing results of your research.

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Intellectual Property Ownership

Who owns the intellectual property if I invent something in the course of my employment at the University?

Under Texas A&M System Regulation 17.01.01, Ownership of Intellectual Property and Tangible Research Property, the system will and does own all intellectual property conceived or developed by an IP creator:

  1. as a result of activities related to an individual’s employment responsibilities with the system or a member;
  2. with financial support from the system or any of its members, or financial support received from a third party that is administered by the system or a member;
  3. with significant use of system and/or member resources; or
  4. any combination of the foregoing.

See the referenced regulation above for descriptions of other ownership types.

What happens if IP is co-developed with investigators at another university?

If a Texas A&M inventor collaborates with an inventor from another university, the Texas A&M University System requires an Inter-Institutional Agreement (or IIA) with the other university that outlines ownership interests in the technology, as well as ownership interests in any past, current, or future intellectual property and/or who will lead marketing and licensing efforts.

Is an invention owned by Texas A&M ever given back to an inventor?

An inventor may make a request to the Texas A&M University System to have the rights to an invention released back to the inventor(s), unless the invention is developed using federal funds, in which case the inventors will usually have to pursue re-assignment directly from the federal funding agency.

What right does a research sponsor have to any discoveries associated with my research?

The Sponsored Research Agreement should identify and specify the rights the sponsor has to the intellectual property (IP). The Texas A&M University System maintains ownership of the intellectual property and patent rights. The sponsor may however, obtain a license to the technology to review the outcomes of the research.

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Intellectual Property Protection

Why register for a copyright?

A copyright in intellectual property law, protects original works of authorship. Copyright covers both published and unpublished works. It is not always necessary to go through the formal process of registering a copyright as copyrights automatically exist for the work at the time it is completed when marked with appropriate copyright indications, however, in some cases registering the copyright may be recommended.

How do I know if my discovery is patentable?

You should submit an invention disclosure form to Innovation Partners. Our staff will review the disclosure once formally processed and conduct applicable evaluations to determine whether the invention is considered patentable or suitable for other forms of intellectual property protection.

What is "prior art"?

Prior art in patent law is constituted by all information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality. If an invention has been described in the prior art or would have been considered obvious from what has been described in the prior art, a patent on that invention may not be valid.

Who performs a prior art search for the invention?

Innovation Partners, as part of the invention disclosure assessment processes will conduct a prior art search for disclosed technologies. It can also be helpful for the inventor to assist in this process as the inventor will have the specific expertise in their field to better identify possible prior art.

Does it cost anything to file a patent?

Filing and prosecuting patents is considered a strategic investment and is quite an expensive process. In the US, filing a provisional patent application can cost between $1,000 to $3,500 and filing a utility patent application can cost between $5,000 to $9,000 while prosecuting and obtaining an issued patent may grow closer to a total cost of $40,000 to $50,000. The fixed filing fees and the variable attorney fees are the biggest cost driver.

Furthermore, filing and obtaining patents in foreign countries will typically exceed the previously stated estimates. Usually, once a patent is issued in the US or in foreign countries, maintenance fees are required to be paid over the life of the patent to avoid the patent being considered “abandoned” and unenforceable.

Can I file a patent as an inventor?

If the intellectual property is owned by the Texas A&M System, patents must be filed through TTC in coordination with the university staff, in this case Innovation Partners, assigned to manage the IP.

The Texas A&M System contracts with many external IP firms for patent protection which allows access to patent attorneys in diverse technology areas. As the member commercialization office for the University, Innovation Partners works with inventors and outside patent counsel to review, prepare, file, and prosecute patent applications on behalf of the Texas A&M System.

What is the role of the inventor in the patenting process?

Inventors are the technical experts and are involved in this process by working through their assigned licensing manager and the patent counsel to draft patent applications and subsequent responses to patent actions upon examination in the countries in which patents are filed. Input from the technical experts is needed to file solid, high-quality patent applications.

Is a patent application confidential?

The contents of a patent application are confidential until the application is published during the course of patent prosecution.

How long does it take to obtain a patent & what is the lifespan of a patent?

The average US utility patent application is pending and in prosecution for a period of about 2-3 years before it is issued. However, inventors with inventions in the biotech fields can generally observe a longer waiting period. It should be noted that according to USPTO reported data in 2018, of the patents that are filed, approximately 56% are issued by the Patent Office. After a patent is issued, it is enforceable for 20 years from the filing date of the application that resulted in the issued patent. For more information please refer to USPTO.

What is a maintenance fee?

Maintenance fees on utility patents in the United States are due 3 1/2, 7 ½ and 11 ½ years after grant of the utility patent in order to maintain the life of the patent prior to its expiration. No maintenance fees are due while a patent application is pending, and design and plant patents are not subject to maintenance fees. Maintenance fee timelines for foreign patents vary by country.

What happens when a patent expires?

After a patent expires, anyone may make, use, offer for sale, sell or import the invention without permission of the patent owner, provided that subject matter is not covered by an unexpired patent. Certain pharmaceutical patents may be extended as provided by law.

What is infringement of a patent & what should I do if I believe that a patent related to my invention disclosure is being infringed upon?

Patent infringement is the act of unauthorized selling, manufacturing, offering to sell, importing or using in-force patented invention without the permission of a patented owner. Permission can sometimes be granted in the form of a license.

You should contact your licensing manager at Innovation Partners to discuss any concerns about infringement. They will work within the Texas A&M System so the appropriate steps can be taken to investigate and address any concerns.

Where can I learn more about intellectual property?

For more information about intellectual property you may contact Innovation Partners staff or visit the World Intellectual Property Organization’s website at https://www.wipo.int/portal/en/index.html.

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Marketing & Licensing

How is my invention marketed & where are potential licensees found?

Marketing strategies vary by the technology, inventors, collaborators, and the market. This work is rarely carried out in a consistent systematic way; however, Innovation Partners staff conduct a variety of activities to identify and engage licensees for Texas A&M University inventions that are ready to be licensed. The marketing process tends to be most effective when the inventor(s) and Licensing Manager approach this as a partnership and have a cohesive marketing plan.

Depending on various factors mentioned above, leverage our external industry connections to locate licensees best suited to carry the technology forward. It is always possible that existing or previous industry partners will be interested in licensing the invention. Our market assessments are also proven to be helpful tools in identifying potential licensees who might be the best fit. In addition, inventors’ publications and presentations can be used as a marketing tool through review and coordination with the Innovation Partners office.

How much inventor involvement is there in the licensing of technology?

Inventors should work closely with the licensing manager updating them on their inventions progress and development. Often times inventors will need to be involved in the marketing of their invention as well as helping to find potential licensees.

How is a business chosen to be a licensee?

Innovation Partners, in coordination with TTC, considers factors including, but not limited to: company size, company structure, geological location, product development focus, relevant market share/capacity, relationship with inventor, level interest in the technology, licensing experience, reputation, etc.

Can I decide what company will license the invention I developed?

Innovation Partners will do their best to find a licensee that is the best fit to commercialize the innovation. An inventor is encouraged to assist Innovation Partners in identifying a potential licensee, however, as the intellectual property is owned by the Texas A&M System, licensing decisions are collectively approved in cooperation with Innovation Partners and the Texas A&M System.

What can I expect to gain if the IP is licensed?

Considerations of a license agreement can include equity share in a company, monetary income such as a licensing fee, royalties based on product/service sales, and sponsored research grants to support further development.

What is the relationship between an inventor and a licensee, and how much of my time will it require?

If the inventor is active in collaborating with the licensee, the invention often times has a greater chance of becoming successful in the commercialization process. The involvement of the inventor can be crucial for the technology to succeed in the marketplace.

Can there be more than one licensee?

There can be more than one licensee if the invention is licensed non-exclusively. In most cases, if the invention is licensed exclusively then there cannot be more than one licensee, apart from certain carve outs in exclusive rights that can be made for fields of use, territories, etc.

How long does the licensing process take?

Depending on the technology, the licensing process can take months or years to complete. Factors to consider in the licensing process are the stage of development the technology is in, the current market for the technology, and the existing competitors the technology will face.

Who conducts license negotiations?

According to the Texas A&M System Policy 17.01, Innovation Partners and other member commercialization offices have the primary responsibility and authority, with assistance from the System of Office of General Counsel (OGC), for negotiating with third parties having an interest in using, developing or otherwise commercializing intellectual property resulting from works for hire and member-owned trademarks. For more information see Texas A&M System Regulation 17.01.03.

Can equity be included in a license?

Yes. In many cases when a startup company is formed around a technology, equity can be included in a license agreement in addition to or in lieu of an upfront fee, and/or royalty income.

What will happen to my invention if the licensee is unsuccessful and the agreement terminates?

Upon notice of a license termination, Innovation Partners will assess the state of the development of the technology, evaluate the underlying factors leading to the termination of the license, and will work to find additional licensing opportunities to continue moving the technology forward.

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Agreements

What is a confidentiality agreement?

Non-Disclosure Agreements (NDAs) also known as Confidential Disclosure Agreements (CDAs) are legal contracts between at least two parties that outlines confidential material, knowledge, or information that the parties wish to share with one another for certain purposes, but wish to restrict access to.

When are non-disclosure agreements necessary?

In general, an NDA should be executed before sharing any information the University or the inventor would not want to become public or used, except for the limited purpose for which that information has been disclosed to the other party. An inventor should contact their Licensing Manager if they believe an NDA is necessary in discussions with other entities to protect the intellectual property.

Can I sign a non-disclosure agreement on behalf of the University?

Only an authorized signatory of the university may bind the institution to the terms in a legal
Document pertaining to Texas A&M System. Contact your Licensing Manager if you believe an NDA is appropriate to protect the technology and they will work with the external party to sign an agreement that is mutually beneficial to both parties.

What should be done if an NDA is received from an outside party?

In most cases, the Texas A&M System prefers that NDAs originate on OGC-approved agreements especially in the case of discussions that involve Texas A&M System intellectual property. However, should an NDA be received from an outside party pertaining to discussions around intellectual property, inventors should contact their assigned Licensing Manager to discuss the arrangement and next steps to proceed.

What is a license agreement?

A license agreement is a written contract between parties, in which the owner of intellectual property (in this case, the Texas A&M University System) permits another party to use that property under a specific set of parameters. A license agreement typically involves a licensor and a licensee. A license agreement gives a licensee the ability to use A&M’s rights to intellectual property in order to develop that technology for commercialization.

What is the difference between an exclusive and non-exclusive license agreement?

Exclusive License Agreement: The license is limited to a specific field. In an exclusive license, the licensor agrees not to grant other licenses to other licensees that have the same rights.

 

Non-Exclusive License Agreement: Grants the licensee the right to use the intellectual property, but means that the licensor remains free to exploit the same intellectual property and to allow any number of other licensees to also exploit the same intellectual property.

How long does it take to execute a license agreement?

It can take weeks to a year to execute a license agreement. This is primarily because each license is unique and case specific. The specific terms of the license are negotiated and mutually agreed upon by both Innovation Partners and the company seeking the license.

What is a Material Transfer Agreement (MTA)?

An MTA is a document used by scientists and their institutions to transfer materials. It allows university researchers to provide research materials to an outside university or institution while still protecting the intellectual property rights on the research materials.

Do all transfers of material out of TAMU require an MTA?

While Innovation Partners staff are consulted on matters concerning Texas A&M University intellectual property terms, the initiation, handling, negotiations, and execution of these agreements for Texas A&M University units is managed by the Texas A&M University Division of Research. Please visit the Division of Research website for more information.

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Licensing Revenue Distributions

What are licensing revenues and how are they distributed?

Licensing revenues include proceeds in the form of license fees, other considerations, and royalties paid by the licensee to the university. TTC receives licensing revenues and distributes any proceeds in accordance with Texas A&M System Policy 17.01. These proceeds are shared with the inventors listed for the technology in the form of personal income. In addition, Innovation Partners distributes royalties to the inventor’s College, Department, and the Provost/President’s Office.

How is the inventor’s portion of royalties distributed if there are multiple inventors?

In cases where multiple inventors exist for an invention, the inventors’ share of royalties is distributed according to the percent contribution of each inventor as agreed upon by the inventors at the time of disclosure.

What are the tax implications of any revenues I receive from the University?

License royalties from inventions are generally reported as “other income” on tax form 1099-MISC. For further questions on this topic, we recommend you consult your tax advisor or specialist.

How is equity from a license distributed?

Proceeds from the sale of equity negotiated as part of a license are distributed by Texas A&M Technology Commercialization (TTC) in accordance with the distribution percentages as outlined in the Texas A&M System Regulations. For more information see Texas A&M System Regulation 17.01.04.

Does an inventor still receive royalty distributions if they are no longer working at TAMU?

Inventors will continue to receive their personal share of royalty distributions if they are no longer employed with Texas A&M University as long as contact information is kept current with Texas A&M Technology Commercialization (TTC). The Texas A&M System will cease processing distributions if a royalty payment is returned until the appropriate contact information is provided.

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New Ventures/Startup Companies

What is a startup and why create one?

A “startup” is a newly formed business focused on developing and marketing new product(s) or services based on a particular technology. There are many reasons why it could be beneficial to form a startup company, including as a possible path to commercialization for early stage technologies.

Do I need permission to set up a company?

There are a few key Texas A&M employment policies to consider when thinking of setting up your own company and because of potential conflict of interest and conflict of commitment concerns, it is always prudent to inform your Department Head before forming your own company. There is also a need to have any “outside employment or consulting” approved by your College and Department prior to engaging in such activity.

What is the role of an inventor in a startup company?

Inventors may play various roles in a startup – sometimes as CEO/President until a full-time CEO is found, but also as the Chief Technology or Science Officer, or Director of the company. If not part of the company, inventors often serve as technology consultants, as well as advisors for the development of technology. As the startup company grows, additional time and investment may be required of the inventor and his/her role could change.

As a faculty or staff member, would the university allow me to start a company and continue my position at A&M?

Generally, yes, as a Texas A&M University faculty or staff member the University allows an inventor to start a company and continue holding a position at Texas A&M University.

Can I license from the university a technology that I developed/invented at the University into my company?

You should consult the licensing manager assigned to manage the technology in question to explore this option as you will need the assistance of a business representative from the company to manage negotiations and licensing.

What assistance and resources are available for startups?

Please refer to the New Ventures section of the website for more information about the new ventures process and support offered by Innovation Partners.

How much time/effort is required to form and maintain a startup?

Starting a company and making it successful requires a lot of time and focused effort. That is why inventors most often need to find dedicated personnel (CEO, COO, etc.) to operate the startup, and is also why inventors are often best suited for a technical role (such as CTO) or as a technical consultant to the company. Innovation Partners can facilitate the introduction to resources to help with these activities.

What happens to future improvements to technology licensed to a start-up?

Generally, improvements to the invention will belong to the Texas A&M System and are sometimes licensed back to the company.

Does the university get shares of equity in the company?

If monetary or non-monetary support is exchanged in part or in whole for equity of an entity that is commercializing intellectual property owned by the system or in which the system has an interest, the exchange of equity must comply with System Policy 17.01, Intellectual Property Management and Commercialization, its regulations, and Texas Education Code, Chapter 153, and the equity is owned and held by the System. For more information, see Texas A&M System Regulation 17.01.06.

Can I hold a management position or sit on the Board of Directors in the startup company?

Yes. If the position will be held with a company that is licensing university technology on which you are a named inventor, please contact Innovation Partners for assistance with obtaining Board of Regents approval to serve in this capacity. There are also other employment policies and regulations to be addressed for these activities, and can include: external employment, conflict of interest and commitment disclosure, and management plans.

Can I consult for a company?

Yes, please refer to Texas A&M employment policies related to External Employment and Consulting Activities.

Do I still receive royalties on inventions that are licensed to my company?

Inventors receive royalties in accordance with Texas A&M System Policy 17.01 and its Regulations.

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For Industry and Business Partners

I am not part of the TAMU community. Can Innovation Partners help me with my innovation?

No. Innovation Partners only assists with and manages System-owned intellectual property developed within the Texas A&M University member.

How do I find a TAMU startup to partner with and/or invest in?

To find a TAMU startup to partner with and/or invest in, you may contact Innovation Partners. Our office will help match you with a startup that best fits your industry and expertise.

How much does it cost to license a TAMU innovation?

Each innovation is unique and the costs of a license can vary depending on the technology. For information about licensing technology managed by Innovation Partners it is best to speak with a licensing manager.

Are paid consultants also needed by university startups?

Many startups use paid consultants in lieu of full-time employees for a variety of special tasks such as regulatory approvals, finance, legal and HR requirements. If you are interested in providing these services to companies within our portfolio, please contact us.

My company would like to sponsor research at TAMU, how do we get started?

Industry sponsored research is spurred by many possible avenues but you are welcome to contact Innovation Partners so that we can help facilitate introductions to appropriate academic/research partners and Texas A&M Sponsored Research Services.

What are the advantages of licensing a technology from A&M?

As one of the world’s leading research institutions, Texas A&M University is at the forefront in making significant contributions to scholarship and discovery. Texas A&M ranked in the top twenty of the National Science Foundation’s Higher Education Research and Development survey, based on expenditures of more than $922 million in fiscal year 2018, so potential commercial partners can be assured that the technologies generated by Texas A&M University faculty and staff are of the highest caliber.

How do I know if a technology is still available for licensing?

To determine if a published technology is available for licensing, it is best to contact the licensing manager assigned to manage the technology of interest or reach out to our office staff to inquire about the latest information.

What is the basic process for licensing technology from A&M?

Please refer to the Licensing Process section for more information.

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