How Does M. D. Anderson Decide Whether or Not to Assert Rights and Seek Patent or Other Protection for my Invention?

The Office of Technology Commercialization considers evaluations made by its staff, scientific reviewers and outside patent legal counsel which center on assessment of patentability and market potential. Based on this information, OTC determines whether or not to assert rights and file a patent application or seek other protection (trademark, copyright or trade secret).

What parameters will the Office of Technology Commercialization use in their evaluation of my invention disclosure?

• Upfront assessment: Is there protectable intellectual property? Can we enforce it? Do we own the technology?
• Patentability: Does the invention meet the United States Patent and Trademark Office’s criteria for a patentable invention? (see "Do I Have a Patentable Invention?" under this heading)
• Marketability: Can we identify one or more commercial products? How far along is the invention? How big is the potential market? What competitive advantages would this new product(s) have in the marketplace?
• Encumbrances to Licensing: Do provisions of a material transfer or funding agreement (Sponsored Research Agreement, Clinical Study Agreement, etc.) govern or restrict our rights in this invention?
• Scientific Utility Reviews: Does an independent review by an expert in the field support the usefulness of the invention? Do they believe that there are significant limitations to the technology?

What are the possible outcomes of an invention disclosure evaluation?

We may choose to Assert Rights, Return Rights, or designate the file as Incomplete. An Incomplete verdict usually means that an invention is potentially promising, but falls into one of two categories: either there is no identifiable commercial product yet, or the invention at this point is conceptual with no or limited supporting data. In the case of an Incomplete designation, OTD will periodically touch base with inventors to monitor progress, and may suggest experiments that would improve patentability or increase market size. The final decisions as to the outcome for invention disclosures are made at full Office meetings, which are held approximately every two weeks.

What happens when M. D. Anderson decides to assert rights to my invention?

You will be officially notified of the decision. The Office of Technology Commercialization may request additional confirmation of the patentability of the invention from our outside legal counsel, after which a patent may be filed, depending on our counsel’s legal opinion. Once the patent is filed, we will proceed with marketing and licensing of your technology, or alternately, development of a start-up company if appropriate.

When would M. D. Anderson decide NOT to pursue obtaining a patent?

• If a patent already covers the invention or the likelihood of obtaining commercially meaningful claims is low
• If the product made from the invention will not provide enough income to justify the expense of applying for and defending a patent (i.e., that the market potential for the invention is insufficient).
• If there are significant barriers to market entry
• If the invention should be protected through other means (copyright, trademark or trade secret)
• If the data supporting the invention is not scientifically sound

What happens when M. D. Anderson does NOT assert rights to my invention?

M. D. Anderson will offer to return the rights to your invention to you, to do with as you choose. However, under UT System policy, UT System retains a 25% financial interest in your invention.

Because state law prohibits state employees from using state resources or spending state time on private matters, you would be prohibited from conducting further research and development on any invention returned to you at M. D. Anderson. In such a situation, you may request M. D. Anderson to retain all rights to your invention.

How long does it take for M. D. Anderson to decide what to do with my invention?

Under UT System policies, M. D. Anderson must decide whether or not to assert rights and seek protection in the U.S. within six (6) months after receiving a complete Invention Disclosure Report.

A more detailed look at how OTC evaluates inventions is available in the Technology Commercialization Assessment Process document.