PLEASE READ PRIOR TO COMPLETING THE DISCLOSURE

The attached Invention Disclosure Form is the initial step in the Intellectual Property Process at The University of Texas Health Science Center at Houston (UTHSCH).  The following guidelines are intended to assist you in the process.

1.  Upon completion, the form should be sent to the Office of Technology Management ("OTM") for review and scheduling at a meeting of the Intellectual Property Committee ("Committee").  The Committee meets on the first Friday of the month. Disclosures should be received in OTM at least two weeks beforehand.

2.  The inventor should conduct a preliminary literature and patent search, using the World Wide Web sites set forth in the disclosure.  This information should accompany the invention disclosure form.  The inventor is encouraged to speak with OTM prior to submitting a Disclosure.

3.  After the above step is accomplished, the disclosure will be scheduled for a Committee meeting.

4.  The inventor is requested to appear before the Committee to provide a brief overview of the invention and answer questions about the invention from Committee members.  The Committee is comprised of faculty members and other representatives from the UTHSCH community.

5.  At the time of the initial review of the invention, the Committee may make one of several recommendations:
 

A. UTHSCH has an interest in the invention and such interest should be pursued either through a search and opinion or a patent application.  In extenuating circumstances such as a publication bar date, the presence of a potential licensee who has agreed to pay any legal fees or other time sensitive situations, the Committee may recommend that an application be filed without the benefit of a search and opinion.   UTHSCH selects outside council to prepare the search and opinion and to work with the inventor on the patent application.

B. UTHSCH has an interest in the invention; however sufficient data  is not available for the Committee to make an informed decision.  In this instance the inventor may be requested to continue his/her work and return before the Committee once he/she obtains the additional data or information requested by the Committee;

C. UTHSCH does not have an interest in the invention and recommends that the invention be returned to the inventor with certain conditions applied.

6.  When a search and opinion is received, the Committee will review this document oftentimes with input from the inventor and the patent attorney.  Again the Committee may make a recommendation as set forth above in 4.B or 4.C, or recommend the filing of a patent application.

7.  UTHSCH has a limited budget used in paying for the costs associated with a search and opinion, patent applications, including pending applications, and maintenance fees on existing patents.  License agreements, when negotiated, usually have such costs reimbursed to UTHSCH.

8.  The inventor should be aware that any publication or non-confidential presentation of the invention prior to the filing of a patent application may present a statutory bar and could jeopardize foreign rights.  Please consult with the OTM if a publication or presentation is planned.

9.  In the case of inventions which list two or more inventors, it is UTHSCH policy that any royalty payments due the inventors are to be shared equally unless an appropriate sharing arrangement is evidenced by a written  agreement between the parties.  An inventors agreement can be obtained from the OTM.

For assistance please contact the Office of Technology Management at 713.500.3369