For Inventors

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What & When to disclose

Inventors/researchers should submit a disclosure form to the OCIR for all inventions and copyrightable works that you feel may solve a significant problem and/or have significant commercial value. In general, an invention or work is fully conceived when you can reduce it to practice without any further innovation. If government funds were used for your research, you are required to file a prompt disclosure so the Texas State may meet its reporting requirements to the sponsoring agency. Similar requirements may exist for other sponsored projects.

The disclosure form documents the circumstances under which your invention occurred or the details of the completion of your copy-rightable work and provides the information necessary to evaluate patentability, inventor/authorship issues, commercial potential, and any obligations to research sponsors.

As an example, you may consider disclosing an invention as you prepare a proposal to take a fully conceived idea and seek funding to prove or disprove its efficacy. However, you may wish to postpone disclosing an invention that you have a general idea on solving a problem and are seeking funding to explore how to implement it.

Invention Disclosure

Prior to ANY public disclosure: Publication, Presentations, Student poster presentations, Thesis or Dissertations.

  • Notify OTC that you have a discovery by contacting Dr. Redddy Venumbaka at reddy@txstate.edu or Teresa Carey at tc18@txstate.edu
  • Complete the Disclosure Form from our website and submit form to Dr. Reddy Venumbaka or Teresa Carey. The disclosure form documents the circumstances under which your invention occurred and provides the information necessary to evaluate patentability, inventor/authorship issues, commercial potential, and any obligations to research sponsors. It also begins the process that may lead to the commercialization of your discovery.
  • Protecting the intellectual property depends on receiving a timely disclosure. Inventors/researchers should submit a disclosure form to the OTC for all inventions and copyrightable works that you feel may solve a significant problem and/or have significant commercial value. If government funds were used for your research, you are required to file a prompt disclosure so the Texas State may meet its reporting requirements to the sponsoring agency. Similar requirements may exist for other sponsored projects.
  • The disclosure to the OTC is NOT a public disclosure.
  • Respond to requests for information and documentation. Your cooperation with the OTC and our IP attorney is essential to the process.
  • Keep OTC informed of publications, talks, and interactions with companies related to your discovery.

Invention Disclosure Form

How do I get an agreement?

Contact the OTC. We will help you to determine what type of agreement is necessary. We have a set of templates that have already been approved to help the process along.

Often Sponsors will have their own templates. The agreement should be forwarded to OTC as soon as it is available. We will review the agreement and negotiate any problematic terms and conditions.

After all parties come to agreement, agreed upon changes are made and the agreement is forwarded to the appropriate sponsor representatives for signature.

ONLY the President of the university, Vice Presidents, and those with written delegated authority may sign contracts, including IP agreements.  Dr. Bill Covington and Scott Erwin may sign most contracts and agreements.

After all signatures are received, accounts are set up as needed and the project may commence.

Types of Intellectual Property

  • Copyright

    Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

  • Trademark

    Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

  • Trade Secret

    A trade secret may be any form of intellectual property that is kept secret for competitive business reasons. Trade secrets may only be protected as long as they remain secret. Because university work is done for public benefit, it is rare for a trade secret to be maintained.

  • Patent

    A patent is a property right granted by the US government that allows the owner to exclude others from using, making or offering the patented design, process or utility for sale. Patents are applied for a limited time, typically 20 years, and require public disclosure of the information.

    A patent must be filed within 1 year of first public disclosure and pass the "obviousness" test. A patent may not be granted for applications that would be an obvious step or improvement for someone skilled in the art.

    Patents can be filed for invention designs, processes or utilities (novel use). Typically, software is not patentable.

    University patent policy can be found in the TSUS Regents Rules, Section III, 10.1-6, 11.1-18.

  • Mask Works

    The United States Code (USC) defines a mask work as "a series of related images, however fixed or encoded, having or representing the predetermined, three-dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product, and in which the relation of the images to one another is such that each image has the pattern of the surface of one form of the semiconductor chip product" (17 USC § 901 (a) (2).

Consulting and Outside Employment

Consulting arrangements are governed by UPPS 04.04.06

Faculty engaging in outside activity including consulting for companies must abide by the following guidelines:

  • Obtain necessary approvals from your Chair and Dean.
  • Fill out the required form and file with Human Resources.
  • No university resources may be used. This includes your office, computer, lab facilities, and students.

Texas State University will assume no legal liability on your behalf.

Consulting Agreement

A consulting agreement is a contract between the faculty or staff member and a company. The university is not a party to a consulting agreement. A consultant usually provides advice, not actual work on the project.

University employees have an obligation to ensure that their personal activities are in compliance with university employment policies.

Faculty and staff engaging in outside employment or consulting activities must disclose any intellectual property or inventions arising from these activities.

Intellectual Property Obligations

University employees engaged in outside employment or consulting activities have an obligation to report any intellectual property developed in the course of their activity.

Texas State University will assert ownership rights only in the following circumstances:

  • The invention was developed or conceived in the course of a sponsored program or there is an obligation to an outside third party in place.
  • The development or conception of the invention was determined to be in the scope of university employment.
  • The University recognizes the difficulty of invention disclosure when consulting with some commercial business entities. When requested, OTC can sign a confidentiality agreement(non-disclosure agreement--NDA) with the company to cover disclosure of the new invention.

Lab Notebooks

Why keep a lab notebook?

The lab notebook is an important tool used to document timelines and inventor contributions when a patent is filed. A patent is granted to the inventor who was first to conceive the invention. The notebook establishes a permanent record of events that can be used to support your claims.

What should be recorded?

  • Raw data and final results of experiments
  • Drawings
  • Protocols and designs of experiments
  • Calculations on which results are based
  • Details of equipment use
  • Details of research and developmental efforts
  • Ideas generated in meeting- list who contributed to the idea
  • Dates when idea was formed and when work was started & completed
  • Plans for future experiments

How should information be recorded?

  • Use archival-quality, bound notebooks with numbered pages
  • Each project should have its own notebook or set of notebooks
  • Number each notebook in multiple-notebook projects
  • Make entries in permanent ink
  • Use consistent nomenclature
  • Enter information on the same day as the event
  • Do not skip pages or leave large empty areas
  • Write legibly
  • Draw a line through discarded entries
  • Sign and date each entry & have the entry witnessed by someone knowledgeable about the work.

How should notebooks be stored?

  • Maintain notebooks in a central location, preferably a fireproof safe or file cabinet
  • If there is a sprinkler system, plastic bags should be used.
  • Store notebooks in a cool, dry place away from damaging light, corrosive agents and organic fumes.

How long do I need to keep my notebooks?

It can take 2-6 years to obtain a patent. Patents typically run for 20 years. Notebooks need to be available for the life of the patent. Notebooks are a great help in cases of infringement and litigation.

A note about electronic records:

Electronic notebooks are held to the same requirements as hard copy notebooks. Electronic notebooks should be copied to Read-only electronic formats with a date stamp on a regular basis. All electronic documents MUST be convertible to a human-readable format. Electronic records need to be updated as the technology changes to meet these requirements.

Lab notebooks are the property of the University, not the individual.

Incentives

DATE: January 6, 2014

TO: All Faculty

FROM: Dr. Bill Covington, Associate Vice President for Research

SUBJECT: Incentive to Submit Invention Disclosures

As you know, Texas State University is a Rising Star on the entrepreneurial and commercialization horizon in Central Texas. As an incentive to help increase the entrepreneurial and commercialization efforts at Texas State, the Office of Commercialization and Industry Relations is announcing a stipend of $250 (up to a total of 10) to a lead inventor who submits an Invention Disclosure Form in the period January 2014 through August 2014 and has their Invention Disclosure recommended by the Intellectual Property (IP) Committee to file a patent application. The IP Committee will review all Invention Disclosures and make a recommendations regarding the university's interest in filing patents. Once the action to file is taken the stipend will be made to the lead inventor.

The Invention Disclosure Form can be obtained at the following link: http://www.txstate.edu/ocir/For-Inventors/Invention-Disclosure.html

If you have any questions or need any help, please feel free to contact Dr. Reddy Venumbaka at (512) 245-2672 or via e-mail at reddy@txstate.edu.


DATE: September 18, 2012

TO: All Faculty

FROM: Dr. Bill Covington, Associate Vice President for Research

SUBJECT: Incentive Award Program to Establish a Spinout Company

As many of you know Texas State has become a Rising Star on the entrepreneurial and commercialization horizon in Central Texas. A tangible example of this is the establishment of the Science, Technology, and Advanced Research (STAR) Park. The STAR Park is a 38 acre site that will host STAR One, Texas State’s first building, dedicated to the university’s research and commercialization efforts. This 20,000 square foot facility, will serve as a technology incubator/accelerator for start-up and early-stage businesses.

To increase the entrepreneurial and commercialization efforts at Texas State, we would like many of our own faculty to be occupants of STAR One with start-up and spin-out companies of their own. To help encourage these efforts, with funding from our Emerging Technology Grant, I would like to announce an incentive program at Texas State; we will award $5,000 each to up to five faculty members who establish a spinout company that receives at least $500,000 in equity investments during the duration of the ETF grant which is through 2016. The $5,000 can be used to support any university approved areas of research and commercialization, including salary, which are related to the spin-out company.

If you have any questions, please feel free to contact my office at 245-2314.

Licensing Process for Inventors(2) : Licensing Process (PDF, 231 KB)