Patents and Inventions

Principal investigator:

  • Discloses nature and background of new intellectual property to the Technology Transfer Office by filling out and signing an Invention Disclosure Form
  • Assigns new intellectual property to the University of Utah
  • Maintains written documentation of each technology
  • Assists the Technology Transfer Office with estimation of size and nature of potential markets
  • Ensures compliance with university technology transfer policy by project personnel
  • Discloses to the Technology Transfer Office relevant funding sources and any pre-existing obligations to funding sponsors or providers of proprietary materials; maintains records on same
  • Provides information on "prior art"; assists TTO in preparation and prosecution of patent applications; executes assignment to the University of Utah and other formal documents associated with patenting
  • Maintains appropriate confidentiality when dealing with intellectual property
  • Initiates Material Transfer Agreements regarding transfer of University of Utah materials to others by contacting the Technology Transfer Office and assists TTO in the processing of same
  • Completes invention portion of Continuing Grant Applications and Final Invention Report

Other research personnel:

  • Provide assistance to the Principal Investigator and the Technology Transfer Office in support of invention disclosures, assignments to the University and licensing as needed

Department/center/project financial officer:

  • Refers potential inventors to TTO

Department chair/center director:

  • Assures that project is in compliance with state, federal, sponsor and University of Utah policies and regulations regarding patents and inventions
  • Encourages inventors to disclose inventions to the Technology Transfer Office
  • Promotes compliance with the University technology transfer policies within the department/center

Deans office/designee:

  • Promotes compliance with the University technology transfer policies within the college/school

Executive administration:

  • The Vice President for Research is responsible for matters of policy regarding technology transfer and operation of the Technology Transfer Office
  • Establishes the membership of the Technology Transfer Advisory Council
  • Promotes compliance with University technology transfer policies

Conflict of Interest committee: N/A

  • The director of TTO sits on the Conflict of Interest Committee

Environmental Health and Safety, Department: N/A

Governmental Accounting and Support Services: N/A

Institutional Animal Care and Use Committee / Animal Resource Center: N/A

Institutional Review Board: N/A

Office of Internal Audit:

  • Provides information, analyses, and counsel to assist management in ethically, effectively, and efficiently fulfilling their management responsibilities
  • Examines, assesses and reports on accountability and controls
  • Reviews and evaluates the Technology Transfer Office's financial and information technology systems

Radiological Health, Department: N/A

Institutional Biosafety Committee: N/A

Office of Sponsored Projects:

  • Assures appropriate language for all proposals and awards as per University policy
  • Coordinate with Principal Investigator and TTO as required
  • Coordinates receipt of Conflict of Interest recommendations
  • Forwards potential conflict of interest disclosures to the Technology Transfer Office

Technology Transfer Office:

  • Administers University policy regarding inventions, patenting, licensing, monitoring agreements, payments to inventors and the University, and obligations to sponsoring agencies
  • Advises the VP for Research and Technology Transfer Advisory Committee on trends in University intellectual property practices and recommends policy changes for review and consideration
  • Assists in interpreting existing policy in consultation with General Counsel
  • Establishes office procedures for Licensing staff and Intellectual Property assistants that allow office to comply with University policy and sponsoring agency policies, emphasizing compliance with all Bayh-Dole requirements
  • Review and update respective procedures annually with staff and assistants for educational and compliance purposes
  • Report as requested, usually semi-annually, to the University of Utah Research Foundation Board
  • Review and evaluate invention disclosures for completeness, particularly with respect to appointments, funding sources and potential publication dates
  • Assess patentability and commercial potential of inventions, working with inventors, patent counsel, databases, and consultants, as appropriate
  • Notifies sponsoring agencies at required times during this process as per procedure
  • Carries out patenting strategy as per procedure
  • Markets inventions and negotiates licenses as per procedure
  • Reviews intellectual property clauses in sponsored research agreements upon request of Office of Sponsored Projects
  • Participates in Conflict of Interest meetings and reports per policy
  • Maintains computerized database and physical files to allow reporting, patenting, licensing and monitoring of agreements as per procedures
  • Office personnel serve on Conflict of Interest Committee
  • Interprets specific circumstances where researchers have dual relationships as creators of UU intellectual property and involvements with corporations
  • Follows process for notification of potential issues
  • Acts as a resource for University community in understanding their intellectual property responsibilities
  • Actively solicits invention disclosures through presentations and meetings with inventors
  • Prepares presentations and participates in educating University community about their responsibilities toward sponsoring agencies and the University