Southwestern UT INTERNSHIPS POSTAL MAIL:

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UT Southwestern
INTERNSHIPS
The Office for Technology Development (OTD) team
of intellectual property experts provides an essential
service to the UT Southwestern research community
to promote effective and strategic partnerships in
academic labs as well as industry through agreements
related to UT Southwestern intellectual property.
POSTAL MAIL:
5323 Harry Hines Boulevard
Dallas, TX 75390-9123
EXPRESS DELIVERY:
Office for Technology Development
BioCenter at Southwestern Medical District
OTD internships offer valuable opportunities for introducing students to the biomedical technology commercialization processes at UT Southwestern.
Benefits to interns include opportunities to:
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Develop an understanding of University
intellectual property activities.
Learn how to assess new technologies.
Experience team collaboration for project work.
INTERNSHIP GOALS
2330 Inwood Road, Suite EB1.300
Dallas, TX 75235
PHONE NUMBERS:
Technology Transfer: 214-648-1888
Cooperative Research: 214-648-4459
Sponsored Research: 214-648-4459
Venture Development: 214-648-1908
Fax: 214-951-0935
EMAIL:
TechnologyDevelopment@
The goal of the OTD Internship Program is to provide
interns with basic training in licensing, negotiation, the
intellectual property process, and biomedical technology commercialization in a university setting.
utsouthwestern.edu
utsouthwestern.edu/techdev
CANDIDATE REQUIREMENTS
Internship candidates must be students or trainees of
UT Southwestern and have an interest in biomedical
technology (patent process, licensing, venture development). Candidates must have good communication
skills and be fluent in English.
Compensation is available, and interns completing the
program may earn course credit. Contact the Office for
Technology Development for more details.
Office for Technology Development
UT Southwestern Medical Center
An Introduction to the
Office for
Technology Development
TECHNOLOGY COMMERCIALIZATION
DISCLOSURE AND CONFIDENTIALITY
INTERNATIONAL PATENT PROTECTION
UT Southwestern Medical Center actively protects and
licenses intellectual property. The Office for Technology
Development (OTD) manages intellectual properties
developed at UT Southwestern. Intellectual property
(IP) encompasses inventions and literary works. Most
of UT Southwestern’s IP disclosures are in the fields
of biotechnology, pharmaceuticals, medical devices,
and others. Intellectual property developed at UT
Southwestern by UT Southwestern faculty, staff or
students is the property of the University of Texas
System Board of Regents; however, UT Southwestern
has a generous revenue sharing policy with its inventors
designed to foster development and commercialization.
More information is available in the Regents’ Rules and
Regulations.
To protect intellectual property, all UT Southwestern
employees must disclose their inventions to the University
before public disclosure. A patent application must be filed
prior to public disclosure.
International patent protection is critical for enhancing
the value of commercializable inventions. In today’s
global economy, companies need to have inventions
patented in the United States and in important foreign
markets.
THE TECHNOLOGY TRANSFER PROCESS
• A potential commercial partner is identified.
• Confidentiality Agreement is executed.
• Confidential information is shared with potential
licensee.
• Negotiation on license to the technology begins once
mutual interest is established.
• A license is executed.
• The OTD monitors progress on development.
UT Southwestern’s policy is that 50 percent of the cash
revenue from a license agreement (after recovery of
licensing and patenting costs) is distributed to the
inventor(s), 25 percent is placed in an unrestricted
laboratory account for use by the inventor(s), and 25
percent is retained by UT Southwestern.
The University also holds equity interests in a number
of start-up companies established on technologies
licensed by OTD.
Intellectual property may be disclosed through an
Intellectual Property Questionnaire on the OTD website or
through contacting the Office.
Before discussing intellectual property with anyone not
employed by UT Southwestern, it is important to establish
formal confidentiality. This is accomplished through a
signed Confidential Disclosure Agreement (CDA), a simple
and routine document negotiated regularly by the OTD.
The Office should be contacted before any information is
shared with anyone outside the University, whether they are
employed by another university, a business, or an American
or foreign government agency.
Even within the University, when intellectual property is
being discussed, confidentiality is important. The pre-publication nature of any discussion and the necessity of maintaining that pre-publication confidentiality should be stated
clearly to all involved.
BENEFITS OF DISCLOSING TO UT SOUTHWESTERN
Properly timed disclosure is enormously important and
yields many benefits, including:
• Putting colleagues and the general population in possession of scientific and medical advances.
• Compliance with reporting obligations, including private
foundations and the federal government.
• Potential financial return for the institution and inventor(s)
through licensing.
• Potential sponsorship for additional laboratory research.
• Potential research collaborations with industry.
Foreign patents are controlled by two treaties.
Almost every country in the world provides a system for
protecting inventions via patents by holding membership in two treaties called the Paris Convention and the
Patent Cooperation Treaty (PCT).
The TWO MOST IMPORTANT RULES to know about
foreign patents are that under these treaties:
• The United States patent application is filed first;
filing creates a one year period during which foreign
patent applications have to be filed—no exceptions.
• Publication prior to filing the U.S. patent application
forfeits your right to a foreign patent.
The OTD often protects patent rights by first filing U.S.
applications. The Office then seeks a licensee who will
agree to assume the legal fees for prosecuting a patent
through the lengthy and very expensive process of
getting individual foreign patents. The ability to delay
those expenses for up to 30 months can keep a patent
application alive that otherwise would have to be abandoned due to the high costs.
The standards for patentability in foreign countries are
very similar to those used in the U.S. It is important to
remember that in order to qualify for patent protection
outside the U.S., a U.S. patent application must be filed
prior to any public disclosure of the invention.
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