Skip To Main Content

Technology Transfer Overview

An objective of technology transfer is to enable a commercial entity to sell a product or offer a service embodying intellectual property that was created in the course and scope of Texas A&M Engineering Experiment (TEES) employment.

You can benefit from disclosing inventions and software to the Office of Commercialization and Entrepreneurship. Those inventions or software items may be leveraged into possible sponsored research opportunities to support your lab, or they may lead to licenses that could generate personal income.

TEES uses three contractual tools to transfer intellectual property to external parties: sponsored research agreements,  licenses and option agreements.

A sponsored research agreement is a contract through which you do research (as described in the research agreement) in exchange for funds paid to TEES to support the research. A license is a contract through which TEES grants rights, either exclusively or non-exclusively, to an external party to enable that party to sell products or offer services embodying TEES’ intellectual property rights. An option agreement is a contract through which TEES grants a party the exclusive right to negotiate with TEES for a license to the optioned intellectual property during a specified time frame.

Ownership

Generally, The Texas A&M University System owns all intellectual property that you develop in the course and scope of your employment or that is developed through significant use of system resources. See System Policy 17.01 for details.

Patenting an Invention

A patent is the right to exclude others from offering to sell, selling, making, having made and importing a patented product, process, or composition of matter in the country in which the patent has been issued. In the United States, you have one year from the date of public disclosure of your invention to file a patent application directed to the invention. In most other countries, publishing the invention prior to filing a patent application directed to the invention is a bar to obtaining a patent. 

Generally, to be patentable, an invention must at least satisfy the following requirements:

  • Patentable subject matter - The invention must be directed to patentable subject matter, which includes many fields. For examples, patentable subject matter includes chemical compounds, processes for making chemical compounds, computer hardware, machines and robots.  In some cases, algorithms constitute patentable subject matter. The U.S. Supreme Court through its decision in Alice Corp. v. CLS Bank introduced uncertainty into the patentability of algorithms.  However, the United States Patent and Trademark Office (USTPO) and the lower courts have provided additional guidance on the patentability of algorithms in the years since Alice was decided.  For more on this topic and to see examples of algorithmic patents that were deemed to constitute patentable subject matter, please see the United States Patent and Trademark Office website quick reference sheet. For examples of patent ineligible subject matter, please see the chart of subject matter eligibility court decisions.
  • Novelty - The invention must be novel, which means that there is no single prior art reference that discloses each and every element of a claim of a patent application. 
  • Non-obviousness or inventiveness - The invention must be non-obvious to a person of ordinary skill in the art at the time that the invention is filed or must have features that are inventive over the prior art.
  • Enablement - A patent application must include sufficient detail for a person of ordinary skill in the art to make and use the claimed invention without undue experimentation.
  • Best mode - An inventor is required, at the time of an invention’s filing, to disclose the best way to implement the invention of which the inventor is aware at the time of the invention’s filing.  The requirement is motivated by the purpose of the patent system, which is to obligate inventors to fully disclose inventions rather than to maintain certain parts of the invention as a trade secret.  The patent system operates based on and requires full disclosure of implementational details of which the inventor is aware at the time of an invention’s filing.

Software

We encourage disclosures of software.  To disclose software, please use the Software Disclosure Form.

While your disclosed algorithm might be patentable if the algorithm satisfies the patentability requirements described above, the source code that implements the algorithm is copyrightable if it is an original work of authorship.  A copyright protects the original expression of an idea, but not the idea itself.  In the context of software, the copyright inheres in originally written source code, which is a particular expression of the algorithm.  A copyright arises the moment a work of authorship is affixed in a tangible medium of expression.  Thus, when you write source code and save the source code onto a memory, a copyright automatically inheres in the source code. Copyrights can be registered in the United States Library of Congress, but registration is not required.  Rather, registration enables a copyright owner to seek certain statutory damages for copyright infringement that would be unavailable if the copyright is not registered.

In addition to source code, a copyright might inhere in certain aspects of a graphical user interface (GUI) if the GUI has original elements.  For example, your software might have logos that constitute original expression or the GUI might have a “look and feel” that is original.  In this manner, the GUI might have copyrightable components.

When disclosing software, please identify any components that you have included which you did not author.  If those components are open source components, they are subject to various open source licenses.  Accordingly, incorporation of such open source components in a larger software package requires strict compliance with the terms and conditions of the license governing each open source component.  Thus, it is essential that you identify each open source component that you have incorporated into your source code and the licenses governing those open source components.

TEES IP Policies

As a member of The Texas A&M University System, TEES is subject to System Policy 17.01.