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: • • • 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.