What is an invention disclosure?
An invention disclosure is a written description of your invention. It can include bullet-point descriptions, manuscripts, drawings, or photos. Anything in writing can serve as an invention disclosure as long as it describes the essential features of your invention. The written invention disclosure is the first step in documenting your idea and submitting it to our office for possible patent protection.
When should intellectual property be disclosed to UTEP OTC?
Inventions should be disclosed to OTC as soon as it is developed and before any public disclosure (oral or written). It is never too early to discuss your potential invention with us.
How do I submit my invention disclosure to the Office of Technology Commercialization?
All UTEP inventions are submitted to us through our online system called Sophia. If you have a Sophia Account, please sign in here
to submit your invention disclosure. If you do not have an account, please click here
to request access to Sophia.
OTC will email you within 48 hours with a Sophia user name, temporary password, and instructions to submit your invention disclosure.
What if the invention was created in collaboration with someone at another research institution or company?
That’s great! The invention may be jointly owned by UTEP and the other institution or company. Each inventor must disclose the invention to his or her home institution or company. Please list all inventors and their home institution or company when disclosing your invention. OTC will work with the other institution or company to create an agreement that will determine who will take the lead in patenting and licensing the invention.
If I have published my invention can I still patent?
It depends. A publication is considered a public disclosure of your invention. You have one year from the date of public disclosure to file a patent application in the U.S. You lose all foreign patent rights immediately with public disclosure. Other types of public disclosures include: poster presentations, conference presentations, selling a product based on your invention, description of your invention on a website, etc. Keep in in mind that the U.S. is now a first-to-file country. With public disclosure, someone may be inspired to file your idea with the USPTO before you. Whoever files first are presumed to the inventor. Please contact OTC before you publish or publically disclosure your invention.
How do I know if my discovery is an invention?
OTC will discuss it with you prior to disclosing your invention. You are encouraged to submit an Invention disclosure for all inventions and developments that you feel may solve a significant problem, have commercial value, and could be developed into products. If you are in doubt, contact OTC to discuss your ideas and strategies for commercialization.
Who owns the patents created at UTEP?
The UT System Board of Regents. All UTEP employees and anyone using UTEP facilities to develop their invention must assign ownership of that invention to the UT System Board of Regents. OTC provides tremendous value in exchange for inventors assigning ownership to UT System. Inventors receive 50% of revenue if the technology is licensed, free marketing materials drafted by OTC, and free contract negotiation services for contracts related to the patent application. Further, OTC pays all patent fees for inventions assigned to the Board of Regents and developed at UTEP. We seek full reimbursement of patent fees from licensees.
What is the patent filing process at UTEP?
The first patent application OTC files with the USPTO is a provisional patent application. A provisional is valid for one year and holds your place in line at the USPTO. A provisional is not examined, it is not read, and it never issues as a patent. A filed provisional application gets inventors a filing date for the invention.
Within that one year period, OTC will conduct a triage search for similar ideas, along with a market analysis. Inventors are encouraged to gather more data to support their invention during the one year period, and work together with OTC. We will help determine if a market exists for the technology, whether valuable products could be developed, and locate industry contacts to find potential licensees for the technology.
A U.S. non-provisional patent application would need to be filed no later than one year after the provisional is filed. The non-provisional is a highly-detailed document that fully describes the invention according to complex U.S. Patent Laws. OTC selects UT System-approved outside patent counsel to draft all patent applications. Inventors are copied on all correspondence with our patent lawyers and are kept informed during the entire process. The non-provisional patent process (known as prosecution) can typically take anywhere from 2-5 years. A patent application is never guaranteed to issue as a patent.
International patents will not be filed on all inventions. We will work closely with inventors to determine the economic feasibility of filing international patent applications on particular technologies. Such considerations for international filings include technology type, potential product lines, foreign markets, public disclosure, OTC budget constraints, and whether a licensee is willing to pay all international patent fees.
Who pays for the patent process?
If UTEP elects to patent the invention for UTEP inventors, UTEP pays all patent costs. OTC seeks licensees to license the invention and reimburse OTC for all patent costs. Patent costs are recovered before patent revenue is distributed to inventors.
What if a company wants to learn more about my research or my patent?
Do not disclose vital information to industry or any outside party without first obtaining the protection of a Non-Disclosure Agreement (NDA). Please contact OTC to prepare and execute an NDA for you. We also recommend that you do not discuss your invention in detail with a company before we file a patent application on the invention. Also, please do not promise the company anything regarding patent ownership and licensing. OTC negotiates all licensing terms in accordance with industry standards and UT System policy.
What types of agreements does UTEP OTC negotiate and execute?
- Non-Disclosure Agreements:
(NDAs) (also referred to as: Confidential Disclosure Agreements, Proprietary Information Agreements). NDAs protect UTEP’s and a third party’s confidential information. NDAs are required before discussing invention details with a third party, such as a company. NDAs may also be needed to conduct research using a third party’s confidential information and to apply for specific types of grants. UTEP’s OTC can prepare and negotiate NDAs for UTEP employees, students, researchers, and inventors.
- Option Agreements:
Provides a period of exclusivity for a third party to evaluate a patent-pending technology. Often a third party needs some time to perform due diligence before entering into a patent license agreement to determine the viability of commercializing the UTEP technologies. Option Agreements require a fee and an outline of a third party’s obligations during the option period. Option Agreements can be incorporated into Sponsored Project Agreements to cover Project IP.
- Term Sheet (Exclusive Patent License Agreement):
Outlines the negotiable terms of a Patent License Agreement. Term sheets allow for more efficient negotiations between UTEP and third party for commercialization terms for a UTEP technology.
- Patent License Agreements (Exclusive):
Grants third parties (licensees) the right to commercialize UTEP technologies. UTEP’s patent license agreements typically stipulate that the licensee should diligently develop UTEP’s technologies for commercial use with a reasonable return for UTEP.
- Start-Up License Agreements:
Similar to a Patent License Agreement, but tailored to the needs of a new business.
- Inter-Institutional Agreements:
Needed when inventions have joint inventors from more than one institution. Thus, the patent has joint ownership. Describes the terms under which two or more institutions (generally universities) will collaborate to assess, protect, market, license, and share in the revenues received from licensing jointly-owned patents.
- Material Transfer Agreement:
Needed when material is being transferred into UTEP or out of UTEP. Materials typically include biological specimens or animal species.
- SBIR/STTR Cooperative Research Agreement:
Outlines intellectual property rights between UTEP and a third party in federally-funded SBIR/STTR award. Includes discussions of background IP, Project IP, patent licensing, and commercialization efforts.