FAQs

Technology commercialization is the process of taking a research-based discovery and developing it into a marketable product for commercial use. This can be accomplished through a traditional licensing arrangement or through the formation of a new startup company and involves many elements along the way, including: intellectual property (IP) evaluation and protection; assessment of the commercial market and competition; advanced development and maturation of the technology or product; financing; and regulatory strategy development.

The most important things inventors and IP creators can do to aid in the commercialization process is keep detailed notes of your work, maintain regular communication with Texas A&M Innovation related to developments in the work disclosed in your invention disclosure, and be responsive to requests for information especially related to intellectual property actions. Also, any information you may have about the market or potential licensees should be shared with Texas A&M Innovation.

The Bayh–Dole Act or Patent and Trademark Law Amendments Act (Pub. L. 96-517, December 12, 1980) is United States legislation dealing with intellectual property arising from federal government-funded research. The Bayh-Dole Act permits universities that receive federal funding, small businesses, or non-profit organizations to elect to pursue ownership of an invention, rather than obligating inventors to assign inventions to the federal government as was the case prior to Bayh-Dole. When a System employee discloses the creation of an invention derived from federally funded research, The Texas A&M University System has limited time from that date to disclose that information to the appropriate federal agency; therefore, it is crucial that all inventions are disclosed promptly and disclosures outline any federal funding mechanisms used to further the development of the technology.

No matter how early-stage you think your discovery might be, your research discoveries and new ideas could make a difference and lead to a successful commercial product or service. This is one reason why disclosing ideas/inventions is important and should be done as early as possible, but in all cases, prior to any publication. Disclosing creations of potential intellectual property to Texas A&M Innovation is also the obligation of all Texas A&M University System employees, in accordance with System Policy 17.01, and is typically a requirement of all federal, and sometimes state grants.

Please visit the Disclosure page on our website to disclose an invention online or download the appropriate form.

Under the Bayh-Dole Act and federal regulations and guidelines, the acceptance of federal grant money requires the disclosure of government rights in the invention. This includes an obligation to disclose the federal funding contribution on any invention disclosure. Further, most granting agencies require disclosure of any inventions arising from funding so including the funding information in your disclosure to Texas A&M Innovation helps ensure grant requirements are followed.

Submitted invention disclosures are first reviewed for completion of the information on the form and then forwarded to the export control office to determine if any limitations on transfers/information sharing need to be in place in compliance with federal regulation. Upon completion of the review, Texas A&M Innovation assigns a licensing manager to the project and a preliminary prior art and market analyses is performed to determine commercial potential. The assigned licensing manager will meet with the inventor to gather more background on the invention to allow for more in depth analysis and discuss recommendations on how to proceed with the disclosed invention. See Process page.

Yes. However, these activities must be timed correctly to avoid possible negative impacts to patent rights as publications are considered a public disclosure. An invention should be disclosed to Texas A&M Innovation prior to public disclosure to ensure that optimal intellectual property protections may be pursued when applicable, as public disclosures may limit the intellectual property rights able to be sought if done prior to filing for IP protection. By disclosing an invention, an inventor can consult with a Texas A&M Innovation licensing manager to determine the best protections for the invention, clarify deadlines, assist in the application process, and help create a commercialization plan.

Under Texas A&M System Regulation 17.01.01, Ownership of Intellectual Property and Tangible Research Property, the System will and does own all intellectual property conceived or developed by an IP creator:

1. as a result of activities related to an individual’s employment responsibilities with the system or a member;
2. with financial support from the system or any of its members, or financial support received from a third party that is administered by the system or a member;
3. with significant use of system and/or member resources; or
4. any combination of the foregoing.

See the referenced regulation above for descriptions of other ownership types.

If a Texas A&M System inventor collaborates with an inventor from another university, the Texas A&M University System requires an Inter-Institutional Agreement (or IIA) with the other university that outlines ownership interests in the technology, as well as ownership interests in any past, current, or future intellectual property and/or who will lead marketing and licensing efforts.

You should submit an invention disclosure form to Texas A&M Innovation. Our staff will review the disclosure once formally processed and conduct applicable evaluations to determine whether the invention is considered patentable or suitable for other forms of intellectual property protection.

Filing and prosecuting patents is considered a strategic investment and is quite an expensive process. In the US, filing a provisional patent application can cost between $1,000 to $3,500 and filing a utility patent application can cost between $5,000 to $9,000 while prosecuting and obtaining an issued patent may grow closer to a total cost of $40,000 to $50,000. The fixed filing fees and the variable attorney fees are the biggest cost driver.

Furthermore, filing and obtaining patents in foreign countries will typically exceed the previously stated estimates. Usually, once a patent is issued in the US or in foreign countries, maintenance fees are required to be paid over the life of the patent to avoid the patent being considered “abandoned” and unenforceable.

If the intellectual property is owned by the Texas A&M System, patents must be filed through Texas A&M Innovation. The Texas A&M System contracts with many external IP firms for patent protection which allows access to patent attorneys in diverse technology areas. Texas A&M Innovation works with inventors and outside patent counsel to review, prepare, file, and prosecute patent applications on behalf of the Texas A&M System.

The average US utility patent application is pending and in prosecution for a period of about 3-4 years before it is issued. However, inventors with inventions in the biotech fields can generally observe a longer waiting period. It should be noted that according to USPTO reported data in 2018, of the patents that are filed, approximately 56% are issued by the Patent Office. After a patent is issued, it is enforceable for 20 years from the filing date of the application that resulted in the issued patent. For more information please refer to USPTO.

Marketing strategies vary by the technology, inventors, collaborators, and the market. This work is rarely carried out in a consistent systematic way; however, Texas A&M Innovation staff conduct a variety of activities to identify and engage licensees for Texas A&M University System inventions that are ready to be licensed. The marketing process tends to be most effective when the inventor(s) and Licensing Manager approach this as a partnership and have a cohesive marketing plan.

Depending on various factors mentioned above, leverage our external industry connections to locate licensees best suited to carry the technology forward. It is always possible that existing or previous industry partners will be interested in licensing the invention. Our market assessments are also proven to be helpful tools in identifying potential licensees who might be the best fit. In addition, inventors’ publications and presentations can be used as a marketing tool through review and coordination with the Texas A&M Innovation office.

Considerations of a license agreement can include equity share in a company, monetary income such as a licensing fee, royalties based on product/service sales, and sponsored research grants to support further development.

According to the Texas A&M System Policy 17.01, Texas A&M Innovation has the primary responsibility and authority, with assistance from the System of Office of General Counsel (OGC), for negotiating with third parties having an interest in using, developing or otherwise commercializing intellectual property resulting from works for hire and member-owned trademarks. For more information see Texas A&M System Regulation 17.01.03.

Upon notice of a license termination, Texas A&M Innovation will assess the state of the development of the technology, evaluate the underlying factors leading to the termination of the license, and will work to find additional licensing opportunities to continue moving the technology forward.

Non-Disclosure Agreements (NDAs) also known as Confidential Disclosure Agreements (CDAs) are legal contracts between at least two parties that outlines confidential material, knowledge, or information that the parties wish to share with one another for certain purposes, but wish to restrict access to.

In general, an NDA should be executed before sharing any information the University or the inventor would not want to become public or used, except for the limited purpose for which that information has been disclosed to the other party. An inventor should contact their Licensing Manager if they believe an NDA is necessary in discussions with other entities to protect the intellectual property.

A license agreement (either exclusive or non-exclusive) is a written contract between parties, in which the owner of intellectual property (in this case, The Texas A&M University System) permits another party to use that property under a specific set of parameters. A license agreement involves a licensor and a licensee, and gives the licensee the ability to use A&M’s rights to intellectual property in order to develop that technology for commercialization.

Licensing revenues include proceeds in the form of license fees, other considerations, and royalties paid by the licensee to the institution. Texas A&M Innovation receives licensing revenues and distributes any proceeds in accordance with The Texas A&M University System Regulation, 17.01.04.

In cases where multiple inventors exist for an invention, the inventors’ share of royalties is distributed according to the agreement for distribution of licensing income as agreed upon by the inventors at the time of disclosure.

The terms spinout and startup are sometimes used interchangeably by Texas A&M Innovation when describing a company that is formed based on System-owned intellectual property. Forming a company, and licensing to it, is one commercialization strategy used by Texas A&M Innovation to bring early-stage technologies to the market.

While it is possible for anyone to form a company, Texas A&M Innovation can offer resources and advice regarding company formation and to increase the company’s chances of success. A&M faculty and staff are encouraged to reach out to our office prior to forming the company.

Inventors may play various roles in a startup, although their contribution is typically in the role of Advisor or Chief Technology/Science Officer.

Outside the company, an inventor may serve as a technology consultant. It is important to note that all faculty and staff must disclose and go through the approval process for any outside employment or consulting activity.

To find an A&M startup to partner with and/or invest in, you may contact Texas A&M Innovation. Our office will review our portfolio and help match you with a startup that best fits your industry and expertise.

Industry sponsored research is spurred by many possible avenues but you are welcome to contact Texas A&M Innovation so that we can help facilitate introductions to appropriate academic/research partners and Texas A&M Sponsored Research Services.

To determine if a published technology is available for licensing, it is best to contact the licensing manager assigned to manage the technology of interest or reach out to our office staff to inquire about the latest information.