Patent Support Review and Evaluation

In an effort to support continued growth in commercialization and technology endeavors by Principal Investigators, The School of Public Health (SPH) reviews patent investment requests to determine overall commercialization potential.  SPH utilizes a multi-step process to ensure input from faculty across all disciplines as well as administration to support those investments that have a high probability of a positive return on investment in the future.

Procedure

  1. Investigators interested in pursuing a patent contact the Office of Technology and Commercialization at TAMU and complete required forms and disclosures.
  2. Provisional Patents:  Subject to non-disclosure and confidentiality requirements, investigator submits request for Provisional Patent to the SPH Research Office for review.  The SPH Associate Dean and Academic Business Administrator shall forward the request and their recommendation for funding to the SPH Dean and SPH Assistant Dean for Finance and Administration who make the final decision for funding.  Provisional patents are short term (12 months) and filed prior to filing for full Utility Patents. Provisional patents allow investigators to apply the term “patent pending” to the invention.  The SPH Research Office shall inform the SPH Committee about requests for funding of Provisional Patents.
  3. Design Patent:  Subject to non-disclosure and confidentiality requirements, investigator submits request for Design Patent to the SPH Research Office for review.  The SPH Associate Dean and Academic Business Administrator shall forward the request and their recommendation for funding to the SPH Dean and SPH Assistant Dean for Finance and Administration who make the final decision for funding. Design patents, if granted by the United States Patents and Trademark Office are for 20 years and are used specifically to identify unique and ornamental provisions of a characteristic or design element that is readily identified in the art.  Filing a design patent allows investigators to apply the term “US Patent Pending” to the invention for marketing and licensing purposes.  A minimum of 6 views and a perspective drawing are required for submission.  The SPH Research Office shall inform the SPH Committee about requests for funding of Design Patents.
  4. Utility Patent:  SPH Utility Patent investment requests are submitted by the investigator to the Research Committee for review, consideration, and recommendation:

    1. To the extent allowable under applicable non-disclosure requirements, investigators pursuing patent support are asked to provide a presentation to the Research Committee to include the criteria as outlined below.
    2. The Research Committee considers the following review criteria in determining the overall commercial potential of the technology.
      1.  Investigator’s assessment
      2.  Financial
        1. Overall risk
        2. Potential return on investment
        3. Potential investors
        4. Product demand
        5. Anticipated costs
        6. Other resource requirements
        7. SPH resource availability
      3. Legal Assessment
        1. Can product be patented?
        2. Ease/difficulty of patent protection/copyright/trademark
      4. Market Assessment
        1. Competition
        2. Market share/market growth
        3. Product attributes
        4. Selling price
        5. Market partners/allies
        6. Marketability
        7. Channels of distribution
      5. Investigator
        1. Experience/Expertise
        2. Entrepreneurial experience (limited/extensive)
        3. Business network
        4. External support
        5. Collaborators
      6. Technology
        1. Strengths/weaknesses
        2. Complexity
        3. Stage of development (idea, prototype)
        4. Uniqueness of product, process, or technology
      7. Operations
        1. Skills required to produce
        2. Systems required to produce
      8. Timeline for commercialization (1-2 years; 3-5 years; 5-10 years; >10 years)
      9.  OTC review/recommendations
  5. The Research Committee recommendations are presented to the Executive Committee for review/consideration and recommendations regarding funding support.

1 This policy is pursuant to HSC Guideline 17.02.01.Z1.01. Management of Technology Commercialization through Patents and Licensure of Intellectual Properties and is not intended to contradict HSC Guideline 15.01.01.Z1.03 Freedom to Publish Research Results.
3rd Read_5-28-2010-Approved by Research Committee 6/1/2010, approved 2nd read by EC 7-6-2010; Revised approved 1st read by Research Committee 11/17/2010. First read of revised version by EC on 12/21/2010. Second read and approval of revised version with further revisions added by EC on 1/18/11.