Frequently Asked Questions

As the inventor, you can contact the Office of Innovation, Commercialization and Engagement (IC&E) staff to discuss your invention and will be given guidance with respect to the disclosure, evaluation, and protection processes.

The Sponsored Research Agreement should specify the intellectual property (IP) rights of the sponsor. Texas State University retains ownership of the patent rights and other intellectual property rights resulting from sponsored research. However, the sponsor may have rights to obtain a license to the defined and expected outcomes of the research.

A student can contribute to an invention. Many students work on inventions at Texas State University under a wide variety of circumstances. Texas State aggressively promotes student entrepreneurism.

Yes, but it is important to document carefully the date and conditions of use so that we can determine if this use may influence the ownership and license rights of your subsequent research results. If you wish to obtain materials from outside collaborators, an incoming Material Transfer Agreement (MTA) should be completed. If you wish to send materials to an outside collaborator, an outgoing MTA should be completed for this purpose.

An Innovation Disclosure Form (IDF) is a written description of your invention or development that is provided to the IC&E. The IDF should list all collaborating sources of support and include all of the information necessary to begin pursuing protection, marketing, and commercialization activities. The document will be treated as “University Confidential.”

You should complete an IDF whenever you feel you have discovered something unique with possible commercial value. Contact the IC&E if you wish to submit an IDF or have any questions on the process of commercialization.

After the IDF is submitted, the IC&E reviews it, and send it to outside company for analysis the market and competitive technologies to determine the invention’s commercialization potential.

The evaluation process may lead to a broadening or refinement of the invention, strategic guidance on whether to focus on licensing to an existing company or creating a new business start-up.

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office.

Patent protection, a common legal protection method, begins with the filing of a patent application with the U.S. Patent Office and, when appropriate, foreign patent offices.

Ownership depends upon the employment status of the creators of the invention and their use of Texas State University’s facilities. As a general rule, Texas State University owns inventions made by its employees while acting within the scope of their employment or using Texas State University resources.

Once a patent application has been filed, it will typically require 1-5 years and tens of thousands of dollars to issue in the United States and abroad.

The IC&E will work with an IP Committee which is responsible for recommendation.

License agreements describe the rights and responsibilities related to the use and exploitation of intellectual property developed at Texas State. The terms of the agreement may vary with each invention.

A licensee is chosen based on its ability to commercialize the technology for the benefit of the public. The amount of potential bidders typically depends upon the nature and protectability of the intellectual property.

Many licensees require the active assistance of the inventor to facilitate their commercialization efforts, at least at the early stages of development. This can range from infrequent, informal contacts to a more formal consulting relationship.

Non-Disclosure Agreements (NDAs) are often used to protect the confidentiality of an invention during evaluation by potential licensees. Material Transfer Agreements (MTAs), are used for incoming and outgoing materials at Texas State, are administered by the Research Office. Inter-Institutional Agreements describe the terms under which two or more institutions (generally two universities) will collaborate to assess, protect, market, license, and share in the revenues received from licensing jointly owned intellectual property. Option Agreements, or Option Clauses within research agreements, describe the conditions under which Texas State preserves the opportunity for a third party to negotiate a license for intellectual property. Research Agreements describe the terms under which sponsors provide research support to Texas State University.

Your role can vary depending on your interest and involvement, in the interest of the licensee in utilizing your services for various assignments, and any contractual obligations related to the license or any personal agreements.

Per Texas State University policy, the revenues from license fees and royalties minus any unreimbursed patenting and file expenses—are shared with the inventor(s). The percentage of net amount distribution is 50% to inventors.

A conflict of interest can occur when a Texas State employee, through a relationship with an outside organization, is in a position to: 1) influence the University’s business, research or other areas that may lead to direct or indirect financial gain, 2) adversely impact or influence one’s research or teaching responsibilities, or 3) provide improper advantage to others, to the disadvantage of the University. The best approach is to fully disclose your situation to your supervisor and discuss the implications for your job responsibilities.

Licenses typically include performance milestones that, if unmet, can result in termination of the license. This termination allows for subsequent licensing to another business.