- If you are a member of the TTU faculty with a focus in physical sciences or if you
are a member of the TTU or TTUHSC faculty with a focus in life sciences, please contact
David Snow. Members of TTUHSC-El Paso faculty should contact Rosalinda Natividad.
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See if your idea or invention falls into one of the categories below. We recommend
that you contact our office no matter how big or small your idea might be.
Intellectual Property. Intellectual property can be protected through patents, copyrights, trademarks, and
trade secrets.
Tangible Research Property. Tangible items produced in the course of research including such items as biological
materials, engineering drawings, integrated circuit chips, computer databases, prototype
devices, circuit diagrams, and equipment. Individual items of tangible research property
may be associated with one or more intangible properties, such as inventions, copyrightable
works and trademarks. An item of tangible research property may be the product of
a single creator or a group of individuals who have collaborated on a project.
Invention. A process, method, discovery, device, plant, composition of matter, or other invention that reasonably appears to qualify for
protection under United States patent law, Chip Design Protection law or plant protection
schemes, whether or not actually patentable.
Copyrightable Work. An original work of authorship which has been fixed in any tangible medium of expression
from which it can be perceived, reproduced, or otherwise communicated, either directly
or with the aid of a machine or device, such as books,journals, software, computer programs, musical works, dramatic works, videos,multimedia products, sound recordings, pictorial and graphical works, etc.
Trademark (including service mark). A distinctive word, design, or graphic symbol, or combination word and design, that distinguishes and identifies the goods and
services of one party from those of another, such as names or symbols used in conjunction
with plant varieties or computer programs.
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- A patent is a right to exclude others from making, selling, or using the patented
invention for a limited term (20 years after June 8, 1995). A patent is essentially
a legally recognized monopoly that the government grants in exchange for a disclosure
of how to make and use an invention There are three different types of patents: design
patents, plant patents, and utility patents. Design patents protect non-functional,
novel design for an article of manufacture. Plant patents protect new and distinct
asexually reproducible plant varieties. Utility patents are the most common form of
patent protection. Utility patents protect any new, useful process, machine, manufacture
or composition of matter or any new or useful improvement thereof.
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- A patent is obtained by applying with the United States Patent and Trademark Office. The application is examined to determine whether the invention meets the requirements
of usefulness, novelty and nonobviousness. The application must provide an enabling
description of the invention so that one skilled in the relevant art could practice
the invention. The “best mode” of practicing the invention must also be disclosed.
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U.S. patent law specifies that a patent can be obtained for any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvements
thereof. To be patentable, inventions must satisfy three criteria: utility, novelty,
and non-obviousness.
Utility requires that the invention have some beneficial use. If the invention is
a machine, it must work. If the invention is a chemical, it must have a specific use.
An invention has novelty if it is new. In other words, novelty is lost if the invention
has been known or used by others in the U.S. or patented or published by others anywhere
in the world before the date of the invention. A new use of an old invention can be
novel.
Lastly, an invention must not be “obvious” to “one of ordinary skill in the art.”
Since these are subjective terms, there is frequent disagreement about the fulfillment
of this requirement, particularly between the patent applicant (typically through
a patent attorney) and the U.S. Patent and Trademark Office. This criterion must be
assessed on a case-by-case basis and expert legal opinion is essential.
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- Copyright is a form of protection provided to the authors of “original works of authorship”
including literary, dramatic, musical, artistic, and certain other intellectual works,
both published and unpublished. The copyright protects the form of expression rather
that the subject matter of the expression. A person could convey the same subject
matter of the copyrighted work in a different form of expression without infringing
the copyright. For example, copyrighted software protects the actual code, but a patented
code would protect the function of the software, preventing others from developing
their own similar code.
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- A “ballpark” estimate of total cost to obtain a U.S. patent ranges from $10,000 to
$20,000, and sometimes even higher. Costs to obtain foreign patents may be five to
ten times higher, depending on the number of countries where applications are filed.
Within the Texas Tech University System (TTUS), patenting costs are borne by the Office
of Technology Commercialization.
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If intellectual property is handled properly, significant benefits are available
to inventors and their research groups, the university, our national and local economies,
and the public. This can be accomplished when each creator of intellectual property
in the TTUS is aware of certain critical legal issues, procedures and policies.
Patents are an effective means of deriving economic value from research advancements
and for enhancing support of research activity.
A number of System inventors and their research programs currently benefit financially
from their patented and licensed technologies. Patents are often the best means of
developing and disseminating a technology for the widest good. Unless a patent exists
it is unlikely that industry will make investments in the process of developing and
commercializing a product. Without patent protection many inventions will simply “sit
on the shelf” benefiting no one. This is particularly true in technology areas that
are highly regulated by governmental agencies such as the Food and Drug Administration
(FDA), Environmental Protection Agency (EPA) and the United States Department of Agriculture
(USDA), because market entry costs are high.
Experience over the last several years indicates that patents are typically essential
as a basis for starting companies based on university inventions and discoveries.
These companies create jobs as well as financial return to inventors and their research
institutions. The process of obtaining a patent, marketing that patent and licensing
it to industry provides a highly effective means of developing meaningful interaction
between the System and industry, including the enhancement of research support opportunities
and improved employment opportunities for graduate students.
The benefits of patenting inventions are so widely held that the Federal Government
and most industrial sponsors of research now, in most cases, require that patents
on inventions made with their funding be pursued whenever feasible. Where governmental
or industrial funding is involved, there are usually reporting and patenting requirements
that must be met. Failure to do so may jeopardize future funding, not just for the
inventor, but for the entire System.
Universities have legal, policy and contractual requirements to pursue patent protection
for inventions conceived using federal and corporate funds. The issues of national
competitiveness and economic growth are more pragmatic reasons for pursuing patent
protection. For inventors, there may be a financial reward to them personally and
their research program if their invention achieves market success. Frequently, patents
are licensed to a company in return for research support so the inventor can benefit
even if the patents themselves ultimately do not lead to a commercial product. Finally,
patents are perhaps the best means of managing the conflicts that are inherent in
academic/industrial collaboration. They permit mitigation of the inventor’s potential
conflict of interest and help minimize TTUS’s and the inventor’s liability exposure.
Patents are an ideal means of constructing effective collaboration with industry and
allow R&C to ensure that industry will pursue.
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Where TTUS has an ownership interest in the intellectual property pursuant to this
policy, the following provisions will govern the distribution of royalties and other
income after TTUS has recouped all direct costs associated with the processing of
the patent or copyright application and marketing and licensing the technology.
Net royalties are to be paid according to the above schedule as the net royalties
are earned; that is, the individual will receive 50 percent of the first $100,000,
and 30 percent of all net royalties over $100,000. Funds received by the department
and college will be placed in unrestricted accounts under their control. Such funds
will not be used to substitute for funds budgeted for expenditure in the routine annual
operating budget that is approved by the Board of Regents. The TTUS Intellectual Property
provisions are located in the TTU Operating Policy and can be found in Chapter 10 of the TTUS Regents’ Rules.
| Net Royalty |
Individual |
TTUS |
Department |
Unit |
| $0-$100,000 |
50% |
30% |
10% |
10% |
| $100,001- $500,000 |
$50,000 plus 40% of amount over $100,000 |
30% |
15% |
15% |
| $500,000 -up |
$210,000 plus $30% of amount over $500,000 |
30% |
Assessed by Board of Regents |
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Submitting a disclosure of your invention to R&C is the first formal step in obtaining
proper intellectual property protection within the TTU System. Inventors are strongly
encouraged to submit invention disclosures early in their invention development process
to avoid any potential problems. Inventions conceived or first reduced to practice
by faculty or staff in furtherance of university research should be promptly disclosed
in writing to R&C.
Priority in the United States is given to the first to invent. As a result, it is
important to document the relevant dates of the invention. In the event of a dispute
between inventors, documentary evidence will help establish the first to invent. Thus,
invention disclosures and well-maintained laboratory notebooks should be utilized.
In most foreign countries, the first to file for patent protection gets priority,
and the invention disclosure is usually the first step in this process within the
TTUS.
Submit a confidential invention disclosure online here or download a Word version of the invention disclosure here.
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Inventors must be aware of certain statutory bars to patenting that are activated
by publishing a description of the invention. 35 U.S.C. 102(b) describes bars to patentability.
Publication can occur in a variety of forms: an article, thesis, electronic message,
brochure, or powerpoint presentation at a conference can all constitute publications.
Once a publication occurs, U.S. patent protection is barred if a patent application
is not filed upon the expiration of one year following publication. For foreign patents,
publication may constitute an automatic bar to patentability.
System policy strongly discourages and in certain circumstances prohibits agreements
that withhold or unduly delay publication of research results. However, R&C and the
inventor, if he or she chooses, can cooperate through appropriate timing of disclosure,
patent filing and publication to preserve commercial value and still meet any sponsor
obligations without hindering dissemination of research results.
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A primary goal of R&C’s licensing activity is to assure that System technology will
be brought to the marketplace to benefit the public. Thus, all R&C licensees are required
to diligently develop System’s technology. System technology cannot be placed “on
the shelf.” R&C grants two types of licenses, exclusive and non-exclusive. Exclusive
licenses typically require an up-front, non-refundable license fee, running royalties
(typically based on a percentage of sales) and minimum annual royalty payments. Terms
of the license are negotiated by R&C and the licensee and include a variety of factors.
Non-exclusive licenses allow for licensing to multiple parties and can be less demanding
on the licensee.
Commercialization may also occur in the form of entrepreneurship. A company formed
in order to commercialize TTUS technology usually means the inventor or a third party
secures permission in the form of a license to use the technology. A company is developed
with the help of the TTUS, economic development organizations, and venture capital.
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- Using the invention described in a claim of a valid patent without license or consent
of the owner of the patent rights. If infringing activity is discovered, the TTUS,
through the Attorney General’s office, may sue for damages arising from infringing
activity. The decision to sue is a business decision often evaluating the strength
of the patent and the infringer’s activities to determine the likelihood of winning
and the value of any judgment.
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Sponsorship of research in the System almost always comes with some “strings attached”
to any intellectual property that may result. Exceptions are gifts and unrestricted
grants. Inventors should be aware of the intellectual property clauses of their research
contracts and of the sources of their funding that produced the invention.
Any research contract between the System and a corporate sponsor has an intellectual
property clause that stipulates the rights, if any, the sponsor will have in any resulting
inventions. The rights licensed to a sponsor can range from none to rights so significant
that it essentially precludes commercial use by anyone besides the sponsor. Inventors
should consult with R&C staff as well as the staff of the Office of Research Services
to assess these situations on a case-by-case basis.
In the past, rights to some System inventions have been given, inadvertently, to several
entities due to mixed funding of projects and overlapping intellectual property rights.
This can lead to very expensive litigation, loss of research funding and the payment
of substantial damages. It is essential that inventors describe the exact nature of
the sponsorship of their inventions to R&C at the time of filing the invention disclosure.
Funds from several sources with conflicting or overlapping objectives or “deliverables”
(definable, tangible research results, i.e., intellectual property, data, specimens,
etc.) should not be commingled.
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