Frequently Asked Questions
WHAT SHOULD I DO IF A COMPANY APPROACHES ME WITH A RESEARCH IDEA?
Contact the Director of Technology Development, who will help negotiate a research agreement contract with the company. The Director of Technology Development or the Associate Dean for Research at Texas A&M College of Dentistry will assist with budgetary issues, the research design, and any IACUC or IRB issues.
WHAT SHOULD I DO IF I WANT TO TEST A SPECIFIC COMPANY’S DENTAL OR DENTAL HYGIENE PRODUCT?
Contact the Director of Technology Development, who will help you prepare a material transfer agreement (MTA) with the company. The Director of Technology Development or the Associate Dean for Research at the College will help you with budgetary issues, the research design, and any IACUC or IRB issues.
WHAT SHOULD I DO IF I THINK I HAVE A GOOD IDEA/TECHNOLOGY FOR DEVELOPMENT AND TESTING?
A faculty member who comes up with new idea/invention for a product or technology should meet with the Director of Technology Development. The Director of Technology Development will help put together a disclosure, in agreement with the faculty member/Director of Technology and the department chair. A within-component assessment will be done to establish whether the disclosure should move forward (see flow chart of technology development at the College of Dentistry). If the in-house assessment is that the disclosure should be submitted to the Office of Technology and Commercialization (OTC), the disclosure will be forwarded to the OTC by the Director of Technology Development.
- Idea/Invention: Conception of a new drug, drug combination, device or system for treating patients; conception of a novel technique, system or process for conducting research
- Product/Technology: Physical device; drug; software
- Disclosure: Document fully describing the new invention, its novelty, and applicability. Also describes similar pre-existing inventions, and any publications using similar technologies. Lists timing of all discussions, meetings, publications, presentations relating to the disclosed invention.
WHAT HAPPENS TO MY DISCLOSURE ONCE IT IS ROUTED TO THE OFFICE OF TECHNOLOGY COMMERCIALIZATION AT TAMUS?
After initial screening, disclosure may be submitted by the OTC to an attorney for a patentability opinion (costs about $1,500). See flow chart of events from initial idea to full patent. Based on a favorable patentability opinion, the OTC will do a market assessment (done in-house by the OTC at no cost to the component). Based on a favorable market assessment, the OTC will make a recommendation to the component to file a provisional patent (costs are about $1,500-2,000). This opinion will include the potential for progress within the 1-year provisional patent period, and the pros and cons of waiting to file the provisional patent (for example: early stage inventions may benefit from further development with SBIR/STTR grants before filing a provisional patent).
If the department agrees with filing a provisional patent, it will be liable for the costs, and will be liable for the costs of a full patent application that must be filed after 1 year (patentability is not usually threatened with expiry of a provisional patent). These costs vary from $10,000 and up.
If the department declines to file a provisional patent, the OTC will generally pass the ownership of the invention back to the faculty member.
- Patentability Opinion: A legal opinion based on a search of patent office database, listing all pre-existing patents related to the invention, and any obstacles to filing a successful patent based on the new invention.
- Market Assessment: A legal/commercial assessment of the commercial potential of the invention, based on market share (competing products and percent of market being targeted) and commercial viability (cost assessment of product development costs, manufacturing costs and fair market value).
- Provisional Patent: A legal document providing a date of official disclosure. Does not guarantee successful filing of a full patent. Provides short-term protection for a patentable idea while it is being disclosed to other commercial entities.
HOW DO I RAISE MONEY OR GET A GRANT TO TEST MY IDEA?
The Director of Technology Development will help you apply for in-house grants from the OVPRGS or the College Associate Dean for Research, and/or with applications for SBIR/STTR grants. Grants can also be obtained through research agreements with outside corporations that may be interested in licensing the technology.
WHAT ARE INDIRECT COSTS ON A GRANT?
Indirect costs (IDCs) are also referred to as Facilities and Administrative (F&A) costs and are paid to the institution. The F&A fee covers costs for maintaining the building, for utilities, dental chairs, support personnel etc. the College of Dentistry has a negotiated indirect cost rate with the federal government of 45.5%. For example, if NIH awards a $1,000,000.00 grant for total direct costs (cost to run the study) to an investigator, they also grant an added 45.5% or $455,000.00 as an F&A fee to the institution. Many companies balk at paying F&A fees. However, it is possible to jeopardize our negotiated contract with the federal government, and risk a reduction in the 45.5% cost rate if the College accepts grants from for-profit entities with lower than 45.5% IDCs. Therefore, it is imperative to inform companies of the negotiated federal F&A rate, and to negotiate as close a rate to that as the company will bear. It is suggested that the Director of Technology Development or the Associate Dean for Research at the College of Dentistry be consulted prior to discussing grant budgets and indirect costs with companies wanting to fund projects.
HOW DOES MY PARTICIPATION OR LACK OF PARTICIPATION IN TECHNOLOGY DEVELOPMENT AFFECT MY TENURE OR PROMOTION AT COLLEGE OF DENTISTRY?
The TAMHSC guideline 12.01.99.Z1.01 on tenure and promotion clearly states that technology development is a criterion that will count positively toward tenure or promotion. Faculty members who do not become involved in the technology development arena, either by choice or happenstance will not be negatively evaluated for the absence of participation.
WHAT IS THE PROFIT-SHARING POLICY FOR TECHNOLOGIES DEVELOPED BY FACULTY AT COLLEGE OF DENTISTRY?
After commercialization and development costs have been defrayed, 25% of System revenues will devolve to the OTC (see flow chart of revenue-sharing policy at the College of Dentistry). Half of the remaining revenues will devolve to the inventor, and the other half devolves to the College of Dentistry. Remaining revenues are distributed according to assumed risk within the school. An example is given in the chart, in which the TDO assumes a 20% risk and the department assumes 80% risk for development costs.
DOES THE COLLEGE OF DENTISTRY OWN EVERY INVENTION I CREATE?
The Board of Regents of the Texas A&M University System owns rights to inventions created by employees where one of the following is true:
- the invention is related to the College of Dentistry employment duties,
- the invention was made using the College of Dentistry or any TAMUS facilities, or
- the invention was created on the College of Dentistry time.
If you invent something unrelated to your College of Dentistry employment on your free time and using your facilities, then the College of Dentistry will not claim ownership to that invention.
The College of Dentistry owns the rights to inventions created under non-federal grants issued to the College unless the granting organization specifically retains ownership of inventions via the grant agreement.
Ownership of inventions created under a Sponsored Research Agreement, Lab Study Agreement, Clinical Study Agreement, or Material Transfer Agreement is dictated by the language in the Agreement. Therefore, it is critical to inform the College of Dentistry Technology Development Office of these Agreements when an invention is disclosed.
WHAT HAPPENS IF I INVENTED WITH NIH (OR ANOTHER AGENCY'S) FUNDS?
The College of Dentistry owns the rights to inventions created under federal grants issued to the College. Additionally, the United States government also has certain rights to inventions created under federal grants. The College of Dentistry must inform the NIH of your invention within two months of the invention's disclosure. Within one year of the invention's disclosure, the College of Dentistry must inform the NIH if it elects to retain title to the invention.
WHAT IF MY CO-INVENTORS ARE EMPLOYED BY DIFFERENT ENTITIES?
The College of Dentistry will work with the entities that employ co-inventors to formulate a Joint Ownership Agreement whereby the entities agree to share or delegate costs, revenues, and commercialization opportunities for that invention.