Transcript Technology Transfer - University of Texas at El Paso

New Patent Law Changes
UTEP’s Plans to Implement
February 5, 2013
Susan Avena
Jeni Clark
Gary Williams
1
Leahy-Smith America Invents Act H.R. 1249
• Effective Date: March 16, 2013
• Key changes include first-to-file rather than first to invent
• Significant changes are also planned in the handling of Invention
Disclosures (ID) which will help facilitate the sense of timely filing
of ID AND improve the licensing process and attendant return on
licensing income.
• IPC membership will be expanded to better handle the increased
effort required to evaluate ID potential. Letters to new members
will be sent out within the next two weeks
2
Invention Disclosure Process
• Within one week after an Invention Disclosure has been submitted to The
Office of Technology Transfer a team will evaluate the idea’s potential.
This team includes:
1) The inventor(s),
2) Tech transfer rep
3) Intellectual Property Committee (IPC) member,
4) CREIE member and CREIE intern
5) Ad hoc members as appropriate
• Within 3 months the team will report back to the IPC having carried out a
patent/publication search, market research, commercialization options
and assessment of licensing potential.
• This process was developed to address the changes in the patent law
(Leahy-Smith American Inventors Act H.R. 1249 ) and to improve UTEP’s
chances to license
3
• CREIE rep
(& intern)
• Inventor(s)
• IPC
Member
Commercialization
Options
• CREIE rep
(& intern)
• Inventor(s)
• IPC
Member
Licensing
Licensing Options
Market
Research
Commercialization Options
• Inventor(s)
• Tech
Transfer
• CREIE rep
• IPC
Member
• Ad Hoc
Members
•  Team
Leader
Market Research
Invention Disclosure submission
Ideas
Patent &
Publication
Search
IPC
• CREIE rep
(& intern)
• Inventor(s)
• IPC
Member
Inteum Online Invention Disclosure Form
All invention disclosures can now be submitted online at
https://utep.ttoportal.com/
5
Inteum Online Invention Disclosure Form
• Create an Account
• Once Account is approved, you can submit and check the status of
your invention disclosure online.
6
New Patent Law Changes
UTEP’s Plans to Implement
February 5, 2013
Susan Avena
Jeni Clark
Gary Williams
7