Forms and Instructions for Reporting a Technology
Technology Report Forms:
- Technology Report Form: Patents
- Technology Report Form: Software
- Technology Report Form: Copyright
- Technology Report Form: Research Material
PLEASE READ THE FOLLOWING IMPORTANT INSTRUCTIONS PRIOR TO COMPLETING A REPORT FORM
Submit a Report Form to the Office of Technology Management (OTM)
The submission of a report form is the initial step in the intellectual property process.
STEP 1: Select the appropriate form for your disclosure.
- For potentially patentable technology (i.e. medical device, compound, a method), fill out Technology Report Form.
- For Research materials, fill out the Research Material Report Form.
- For copyrightable work (i.e. book, video, art, photo, curriculum), fill out the Copyright Report Form.
- For software or application program, please fill out the Software Report Form (if the software or application is potentially patentable, please also include a Technology Report Form).
If you are unsure, please Contact Us and we will assist you in selecting the appropriate disclosure form.
STEP 2: Completely fill out the appropriate report form (including all required attachments).
Please print the report form, have all UTHealth creators sign the form and date their signature (original signatures please, as this is a legal document).
STEP 3: Return the completed original report form to “UCT 720” via inter-departmental mail or drop it off at 7000 Fannin, Suite 720.
Please include all documents and/or papers that are relevant to your disclosure, including unpublished abstracts, manuscripts, and write-ups.
OTM will evaluate the report to determine the UT System Board of Regents’ interest in and rights to the intellectual property. This evaluation may include interviews with the inventors/creators, searches in various databases for prior art, patents or other publications, or other diligence as applicable for the type of intellectual property reported. The intellectual property is also reviewed with regard to for commercialization potential, including what existing companies are there that might be interested in licensing such intellectual property, and/or what interest is there in forming a new startup company based on such intellectual property.
Typical Evaluation Process for a Technology Report Form
OTM will make a recommendation that may include the some or all of following:
- place the report on a hold/deferred status and request additional research data/information from the inventors/creators;
- perform a preliminary patentability search through a law firm/commercial service, or in-house;
- file a patent application or copyright registration;
- pursue a research sponsorship or licensee; or,
- license/release of some or all of the rights back to the inventor, while retaining certain rights on behalf of UT.
Recommendations for Software, Copyright and other types of technologies may have similar, alternative and/or additional recommendations.
If the decision is made to file a patent application, the detailed application will be prepared by an outside patent attorney engaged by UTHealth with the assistance of the inventor and OTM.
A decision NOT to file may result in the:
- holding of the Report, with the Board of Regents retaining rights; or
- return of some or all rights in the Report to the inventor by license or assignment; or
- commercialization without securing patent rights (may be typical scenario for software, copyright materials and/or research materials)
Commercialization of the Intellectual Property
Commercialization of intellectual property involves drafting, negotiating and executing an option and/or license agreement with a third party company. UTHealth does not transfer ownership or assign its rights in the intellectual property to the company, but instead grants the company an exclusive or non-exclusive license to make, use and sell products based on the intellectual property. OTM negotiates these agreements on behalf of UTHealth, as well as any contractual documents representing the Board of Regents’ intellectual property interests developed at UTHealth, including but not limited to confidentiality agreements, option agreements, etc. OTM regularly consults with inventors/creators on terms and conditions of these agreements.
Once the intellectual property is licensed to a company, OTM monitors the license agreement for compliance regarding the obligations due the University, including collection of fees/royalties, and ensuring that any diligence milestones and/or other obligations of the company are completed in a timely manner. When OTM receives cash under a license agreement, OTM manages the distribution of those funds, both within the University as well as to the individual inventors, all in accordance with HOOP policy (and in accordance with any royalty sharing agreement if multiple inventors are involved).
If you have any questions or need further assistance, please call: 713-500-3369.