FAQ

Frequently Asked Questions

UTEP Technologies available for licensing can be found at Flintbox. We'd be happy to have a personal discussion with you on what technology may meet your needs.
You can start the licensing discussion by contacting our office by clicking here, by phone calling at 915-747-8030, or emailing techtransfer@utep.edu
A template of our Patent License Agreements can be found in the following links: Exclusive, Start-Up Exclusive and User Guide
The Licensing Process can take anywhere from a few weeks to a few months for more complicated agreements.
UTEP’s Office of Technology Commercialization adheres to the Board of Regents Rules of the University of Texas System policies which can be found here.
When an industry partner would like time to evaluate a technology before fully committing to a Patent License agreement, an Option Agreement may be appropriate. OTC provides a time-limited exclusive option to negotiate a Patent License Agreement for a fee. When the path to market is clearer, industry partners can negotiate either a Non-Exclusive or exclusive Patent License Agreement for the technology.
Yes. We have a Start-up license agreement tailored to help new companies succeed found here.
Non-Disclosure Agreements (NDAs)
(also referred to as: Confidential Disclosure Agreements, Proprietary Information Agreements). An NDA protects UTEP and a third party confidential information. An executed NDA is 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. OTC can prepare and negotiate an NDA 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 UTEP inventions. 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 and Non-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 and Non-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. The end goal of licensing process is for the technology to be commercialized, thus OTC will not ask for terms which make it economically unfeasible for your company to market a product.
Typical licensing terms will include reimbursement of patent costs, license fee and maintenance fees, royalties on product sales and development milestones. Under limited circumstances for Start-Up companies, OTC will accept equity in lieu of license fees. A detailed explanation of the term and conditions of the license agreement can be found here.

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 (generally universities). Thus, the patent has joint ownership. Describes the terms under which two or more institutions collaborate to assess, protect, market, license, and share in the revenues received from licensing jointly-owned patents.

Material Transfer Agreements
Needed when material is being transferred in to 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.

What is a patent?
A patent gives the holder the right to exclude others from making, using, selling, offering to sell, and importing the patented invention. A patent does not provide the holder any affirmative right to practice a technology and may infringe on other’s inventions. A patent has two components – the specification and the claims. The specification includes a descriptive discussion about the invention and how to practice it. The specification provides the references and supporting material for the claims. The claims include the legal description of the invention, or the “metes and bounds” of the invention.
USPTO’s Patent Process Overview: https://www.uspto.gov/patents-getting-started/patent-process-overview#step1

Who is an inventor?
An inventor contributes to the conception of the ideas in the patent claims of a patent application. If claims are amended or deleted during patent prosecution, inventorship may change. People who are not inventors include: those who did not contribute to conception of a claim, such as a person who only finances the patent or the CEO of a company who licenses the patent. A person who only highlights a problem to be solved by the invention is not an inventor. A person who is an author on a publication that describes the invention may not be an inventor. Inventorship is a legal determination and may require assistance of a patent lawyer to determine.

What is the United States Patent and Trademark Office (USPTO)?
The USPTO a part of the U.S. Department of Commerce and administers patents and trademarks applications. The USPTO examines receives, files, and examines patents according to federal patent laws and decides whether a patent application will issue as a patent. The USPTO also issues federal trademark registrations. For more information click in the following link: https://www.uspto.gov/learning-and-resources/inventors-entrepreneurs-resources

What is a provisional patent application?
A provisional patent application begins the patent process. It is a “kitchen-sink” type of application where every possible embodiment is included. The embodiments must be enabled, or have sufficient description for someone else to practice the invention without undue hardship. The provisional is valid for one year and serves as a place holder. The USPTO receives provisional patent filings electronically, but does not read or examine the provisional. It is merely filed to be the first one to file the idea. Because the United States is a first-to-file country, the inventor who first files the invention is presumed to be the first inventor. If you have publically disclosed your invention, you have one year to file a patent application in the U.S. Public disclosure results in immediate loss of foreign patent rights.

What is a Non-provisional patent application?
A non-provisional patent application is the “full-blown” patent application that the USPTO reads and examines. A non-provisional patent application has numerous statutory requirements that particularly details an invention’s novelty and enables others to practice the invention. A typical non-provisional patent application is a drafted document, anywhere between 10-50 pages. A non-provisional reeceives the benefit of the provisional’s earlier filing date which helps inventors under the first-to-file system. A non-provisional has two sections: the specification and the claims. The specification serves as the description and background material of the invention. The claims are the legal description of the invention features. UTEP inventors work closely with UTEP outside patent counsel to draft patent applications that are both technically and legally accurate.

What is a PCT Patent Application?
A PCT Patent Application is the first step in seeking international patent protection. The Patent Cooperation Treaty (PCT) enables the patent applicant to file one application, “an international application,” in a standardized format in a designated receiving office. The PCT does not provide worldwide patent coverage, but merely starts the process to select countries for entry and examination under their patent process. In foreign countries, an inventor will lose any patent rights if he or she publicly discloses the invention prior to filing the patent application. In contrast, the United States has a one-year grace period for public disclosures by an inventor. Nationalized patent applications are examined against that country’s patent laws, not the U.S. Patent Laws. Patentability requirements differ from country-to-country.
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.

Is a patent application confidential?
The USPTO hold patent applications confidential until published by the USPTO 18 months after initial filing.

How many years will my patent last?
Issued U.S. patents are valid 20 years from your filing date. Patents expire without payment of regular maintenance fees. Maintenance fees are due 4, 8, and 12 years after patent issuance. UTEP OTC will typically not maintain a patent after 7 years unless a licensee is willing to pay these fees.

What is the Bayh-Dole Act?
The Bayh-Dole Act allows universities and other non-profit institutions to have ownership rights in discoveries resulting from federally-funded research. The universities are required to protect and commercialize the discoveries, submitting progress reports to the funding agencies. Bayh-Dole Act (Public Law 96-517) was passed in 1980 to create a uniform patent policy for all organizations accepting federal money. The Bayh-Dole Act is credited with stimulating interest in technology commercialization activities and generating increased interest in research and economic development.

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.


How does UTEP’s OTC market my technology?
OTC engages in market research to identify prospective licensees. We also examine other complementary technologies and agreements to assist our efforts. We use our website and social media to publicize inventions and make direct contacts. OTC participates in passive marketing using Flintbox to promote UTEP inventions. Most often, existing relationships between UTEP inventors and companies are useful in promoting an invention to attract licensees. Faculty publications and presentations are often excellent marketing tools as well.

How can I assist in marketing my invention?
Your active involvement can dramatically improve the chances of matching an invention to an outside company for licensing. Your research and consulting relationships are often helpful in identifying potential licensees and technology champions within companies. Once interested companies are identified, the inventor is the best person to describe the details of the invention and its technical advantages. OTC is most helpful in articulating licensing requirements for the invention. The most successful results are obtained when the inventor and OTC work together as a team to market and license the technology.

What can I expect to gain if my invention is licensed?
Inventors receive a portion of revenue from licensing.
Per UTEP policy, patent license revenues are distributed as follows:
  • 50% to Inventors.
  • 25% to College, Department, or Center
  • 25% to UTEP’s OTC
What are disbursable fees from a Patent License agreement?
Royalties, Licensee Fee Payments, Pre-paid Royalties, Running Royalties, Milestone Payments, Sublicense Payments (from UTEP Handbook of Operating Procedures, Section IV, Chapter 4, Article 4.2.4)

What are non-disbursable fees from a Patent License agreement?
Reimbursements of patent legal fees and patent filing fees. OTC gets fully reimbursed from the licensee for all patent fees.

What will happen to my invention if the Start-up Company or licensee is unsuccessful in commercializing the technology?
The license can be terminated. Licenses typically include financial payments and performance milestones that, if unmet, can result in termination of the license. This termination allows for subsequent licensing to another company. While licensees usually can terminate at will, generally, UTEP is only able to terminate if the licensee is not performing under the terms of the agreement.

Can the invention be licensed to another entity?
Yes

What are the tax implications of any revenues I receive?
License revenues are typically taxed as Form 1099 income. You should consult a tax advisor for specific advice.

What is OTC’s role in the Start-Up process?
  • OTC provides guidance to start-ups that license UTEP-developed technologies.
  • OTC provides advice to start-ups for project identification, patent portfolio management, market analysis, and industry contacts.
  • OTC works with the start-ups to draft and negotiate various commercial agreements including confidentiality, option, license, and sponsored research agreements.
  • OTC provides information on outside resource matching to connect start-ups with entrepreneurs, mentors, investors, attorneys, accountants, and start-up consultants.
  • Click the following link for more information about resources
How can outside sources help fund Start-Ups?
The most common sources of funding are:
  • Grants:
  • Small Business Innovation Research (SBIR) and Small Business Technology Transfer Research (STTR) are federal grant programs that fund research in companies with fewer than 500 employees. SBIR/STTR awards are very attractive to start-ups because they are not equity investments so the start-up does not need to offer company equity in exchange for the funding.
  • Angel Investors:
  • Angel investors are qualified individuals who invest their own personal money in the start-up. These investors usually invest in the start-up at an earlier stage than venture capital financing. Like venture capital financing, the amount of stock an angel investor receives from the start-up depends on the projected value of the company in proportion to the level of investment.
  • Venture Capitalists:
  • Venture Capitalists (VCs) are professional investors. Besides investments, VCs provide significant value to a start-up company such as shaping the company according to industry standards, providing access to its extensive network, and professional entrepreneurs to run the start-up. Some inventors may view this outcome as “losing control” of the start-up, but without external investment and support, it is difficult for the start-up to grow and commercialize the licensed inventions.
  • Industry Partners:
  • A start-up can develop a strategic partnership with a larger company. The larger company may provide a capital investment or collaborative assistance to help the start-up with product development. Partnerships are usually dependent on product stage of development and milestones. Care must be taken that these relationships are not structured in a way that will hamper future fundraising or an exit strategy for the start-up.
How to pitch to a potential investor?
  • Executive Summary:
  • At early stage of the start-up, a concise executive summary may be more important to obtain capital than a comprehensive business plan. The executive summary is a one or two page snapshot of the business plan and explains all the key aspects of the start-up profile and goals. An executive summary usually contains the following sections: the market opportunity, the technology, the investment required, and the rewards associated with the project.
    The following link provides you with an Executive Summary Sample.
  • Pitch Deck:
  • A professional pitch deck (a 15-20 minutes presentation) is vital for attracting investment. When creating a pitch presentation, it is important to tailor the presentation to the audience. A pitch presentation sent electronically contains more verbosity than a presentation than an in-person presentation. An investor pitch will have a stronger emphasis on the business aspects as compared to a pitch to a collaborator or partner, which may contain more emphasis on the technology. As a general rule of thumb, less is more, in wording and in number of slides.
    The following link provides you with a Sample Pitch Deck.
Are there any tips for success that can help inventors smoothly get through the Start-Up process?
  • IP Assignment:
  • Some inventors may feel they own the patent on which the start-up is based. However, according to the university IP policy, UTEP’s employees are required to assign their patent rights to the UT System Board of Regents. A start-up will need to negotiate patent license with OTC. The patent can be invalidated if it is not appropriately assigned. It is important to make full disclosures of the start-up plans to OTC before going too far down the road in starting the company—especially before discussions with potential investors.
  • Founder’s Agreement:
  • Forming a company is a tremendously complicated process on many different levels. It is thus essential that for the founders to understand each other’s motivation, vision, and goals before forming the partnership. A Founders’ Agreement clearly outlines the key issues regarding founders’ respective roles, relative ownership interests, and other important governance matters. It is quite likely that the founders will need to retain the services of an attorney to prepare a Founders’ Agreement.
  • Conflicts Disclosure:
  • A conflict-of-interest exists when an individual’s personal interests (e.g., equity holdings in a start-up company) are perceived to influence that person’s judgment when exercising his or her academic employment duties. UTEP requires all university employees to disclose and manage such potential conflicts (http://research.utep.edu/Default.aspx?tabid=59642). Because conflict-of-interest management can be complicated, especially if a researcher contemplates a start-up company while remaining an academic employee, it is essential that the constraints on permissible activities are well-understood.
  • Losing Control:
  • Many outside investors are not comfortable with being a mere source of capital. Investors generally prefer to be more involved in the day-to-day activities of the start-up. Also, it is inevitable that after multiple rounds of equity investment, the founders will one day become minority shareholders, thus gradually lose some control of the start-up. At various rounds of fundraising, the founders have to be prepared to answers to the questions:
    How important is the investment capital?
    Is it worth the investors’ possible control of the venture?