Texas Tech University System Homepage

Technology Commercialization 
Texas Tech University System 

Physical Address: 
Texas Tech Plaza, Suite 101
1901 University Avenue 
Lubbock, TX 79410

Mailing Address: 
Box 42007
Lubbock, TX 79409-2007

Phone: 806.742.4105

Fax: 806.742.4102

Email: otc@ttu.edu

8 a.m. - 5 p.m. Central, Monday - Friday

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Frequently Asked Questions & Patent Information

  1. Whom do I contact if I have an idea or invention?   
  2. What can be protected as intellectual property?
  3. What is a patent?
  4. How is a patent obtained?
  5. What is patentable?
  6. What is the difference between a patent and a copyright?
  7. How much does it cost to obtain a patent?
  8. Why patent a technology for Texas Tech?
  9. How are inventors rewarded?
  10. What is the first step in the patenting process?
  11. How do publications affect patentability?
  12. How is my technology commercialized?
  13. What happens when somebody infringes on my patent?
  14. How do sponsored research agreements affect intellectual property rights?
  1. 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.
  2. 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 processmethoddiscoverydeviceplant, 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,journalssoftwarecomputer programsmusical worksdramatic worksvideos,multimedia productssound recordingspictorial and graphical works, etc.

    Trademark (including service mark). A distinctive worddesign, 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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  3. 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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  4. 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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  5. 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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  6. 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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  7. 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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  8. 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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  9. 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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  10. 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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  11. 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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  12. 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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  13. 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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  14. 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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