TxIS

Texas Institute of Science
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The Way it Works

Innovations

TxIS’ IP Tech-Transfer Division works on the following principles:

  • Identify an unprotected, unpublished, laboratory level innovation, and provide
    • commercial evaluation,
    • global prior art and prior publication search,
    • financing to complete it,
    • legal protection, and
    • commercialization (sales or license) services.
  • The Institute’s business is to successfully augment the university Tech-Transfer Department’s function providing services that the Department does not have.
  • TxIS works in close cooperation with inventors/professor and can provide them with substantial revenue by commercializing their IP.

Frequently Asked Questions

Q: Does TxIS work on IP issues through the university or directly with the professor?

A: Directly with the professor.

Q: Why?

A: Because as much as we can regulate the project opportunities we provide, we cannot regulate the IPs that are submitted to us on-line. In addition, different countries and universities have different regulations with regard to IP export. It is the university’s job to make sure that the professors only submit IPs that meet university and government regulatory requirements.

Q: How does TxIS pay the university and the professor after commercializing the IP?

A: Based upon the earlier Technology Transfer Agreement (TTA), signed by all parties, including the professor, TxIS pays the university and the professor separately.

Q: What if the university does not want to pay the professor, or wants to pay only a few percent?

A: TxIS will not sign the TTA in the first place. TxIS signs the TTA only if all parties are satisfied with the agreement.

Q: How do I know that you did not sell my IP for $10 million and you told me $1 million?

A: There are many reasons, but the most important is that TxIS's reputation and continuing business relationships depend on strict adherence to honest and open agreements.

Q: Who owns the right of the IP?

A: There is a section in the TTA where this question will be negotiated, but TxIS most probably will not sign the TTA if the IP will not be owned by the client, or at least owned everywhere in the world except the university’s home country.

TxIS’ IP Tech-Transfer Division works with the following flow chart

IP Program

Notes:

TVA: After submitting the IP to TxIS, the Institute will carefully examine it using mainly the “Is it commercially valuable?” criteria. Upon establishing viability, TxIS must receive a Technology Viability Analysis, a thorough description explaining the IP and its novelty. At this phase, TxIS does not need details of the actual know-how. Laboratory data of the result and a description are sufficient. Although there is a strict NDA on TxIS' IP Submission Form restricting TxIS from disclosing any part of the IP to third party, should the inventor want TxIS sign a separate NDA before submitting the TVA, TxIS will do that.

TAA: TxIS will invest a significant amount commercial, legal and technology evaluation effort into the IP only if the Institute receives the exclusive right (for a finite period of time) to further process the IP. Therefore, TxIS requires all parties to sign the Technology Assignment Agreement.

TRA: Should the submitted IP not be patentable, but is still commercially viable technology, TxIS will sign a Technology Representation Agreement with the inventor.

TTA: Upon establishing that

  • The IP is commercially valuable,
  • TxIS believes that the Professor is capable of completing the IP to proof of concept,
  • Time lines, financing, deliverables, IP ownership, payments are established, and
  • All parties agree to sign the Technology Transfer Agreement,
TxIS and all interested parties will execute the TTA.

PROFESSORS' INTERESTED IN WORKING WITH TxIS can:

  • Request our assistance to preview an idea in order to establish whether it is worth pursuing;
  • Send potential areas of inquiry with questions such as, “If I can solve the listed problems, can you help me finance it?”
  • Send White Papers containing new research areas they are thinking about pursuing;
  • Submit to TxIS their innovations and inventions for review at any stage of development.

NOTES

There are a few notes worth sharing with universities and professors.
  • TxIS' historical data shows a 4%-6% ratio between submitted IPs and ready-to- commercialize Packages.
  • The Institute received several 100 IPs in 2009. We expect this number will double in every year over the next three years.
  • In order to generate the required revenue for TxIS, the Institute needs to commercialize 10-15 IPs annually.
  • Because of the high number of submitted IPs and a low number of IPs necessary to generate the revenue for the Institute, TxIS will only work with professors who:
    • Cooperate in responding to TxIS’ requests in timely fashion;
    • Make sure that his/her university cooperates as well;
    • Ask for financing only for the development and not for up-front profit;
    • Understand his/her country’s dual technology law and holds himself/herself responsible to follow that law; and
    • Understand and agree that the IP’s ownership will belong to TxIS' client.