Intellectual Property: UPPS
No. 01.04.26
Inventions, Discoveries and Patents (IDP) Issue No. 1
Effective Date: 02/03/2012
Review: July 1 E3Y
01. POLICY STATEMENTS
01.01 Texas State University recognizes that
research and scholarship by its faculty, staff, and students will result in
inventions, discoveries, and other intellectual creations with potential
societal benefit and market value. These include biological and other
proprietary materials, plants, computer software, trade secrets, medical
treatments, devices, pharmaceuticals, phrases, graphic designs, manuscripts,
and musical, artistic and literary works. This policy seeks to protect the
interests of individual inventors, researchers, creators, and the university
while also ensuring that the Texas State community and society benefit from
fair and full dissemination of knowledge and innovation. In all cases, affected
individuals answer to individual or university obligations under grants,
contracts, and research agreements with governmental agencies or sponsors.
01.02 This
policy applies prospectively to all persons employed by Texas State, to all
students of Texas State, and to anyone using Texas State facilities or under
the supervision of Texas State personnel. Texas State expects its employees,
faculty, staff, and students to be aware of and abide by the university’s
policies related to intellectual property. The prior established policy shall
govern all intellectual property disclosures made prior to this policy’s date.
01.03 This policy intends to foster the traditional freedoms of the Texas State
faculty, staff, and students in matters of publication and invention, through a
fair and reasonable balance of equities and interests among creators, sponsors,
and Texas State. This policy strives to outline the rights and interests of
faculty, staff, and students in intellectual materials created while they are
affiliated with Texas State. This policy focuses primarily on
inventions, discoveries, patents, and intellectual property that may prove
patentable (collectively referred to as IDP). Except
where otherwise specified herein, the ownership and usage rights related to
copyrighted works, trademarks, and trade secrets are more fully addressed in Chapter
III, Section 11, of the Rules and Regulations of The Texas State University
System and in university policies with a focus
on those particular forms of intellectual property.
Texas
State’s IDP policies are derived primarily from the Texas State University
System (TSUS) Patent Policy, more specifically Chapter
III, Section 12, of the Rules and Regulations of The Texas State University
System. The TSUS Patent Policy is incorporated
into this policy by reference and shall govern if any provisions of this policy
are found to be in conflict. Key provisions of the TSUS Patent Policy are outlined
in Section 03. below.
02. DEFINITIONS
02.01 For the purposes of
this policy, the following definitions apply:
a. Creator:
An individual subject to this policy, who invents, discovers, authors, or
otherwise develops intellectual property as defined below.
b. Invention: A process, method,
discovery, device, plant, composition of matter, or other invention that
reasonably appears to qualify for protection under United States patent law,
Chip Design Protection law or plant protection schemes, whether or not actually
patentable. A
single inventor or a group of collaborating inventors can produce an invention.
c. Copyrighted Work: An original work of
authorship fixed in a tangible medium of expression from which others can
perceive, reproduce, or otherwise communicate it, either directly or with a
machine or device, including books, journals, software, computer programs,
musical works, dramatic works, videos, multimedia products, sound recordings,
and pictorial and graphical works. A single author or a group of collaborating
individuals may produce a tangible research item.
d. Trademark (including Service Mark): A distinctive word, design, or graphic symbol, or
combination word and design that distinguishes and identifies the goods and
services of one party from those of another, such as the university’s logo and
tagline (see also UPPS No. 01.04.11, Guidelines for Use of Texas State Logo, System Statement,
Board of Regents List, and Equal Opportunity Statement).
e. Tangible Research Property: Tangible items produced in the course of research including
such items as biological materials, engineering drawings, integrated circuit
chips, computer databases, prototype devices, circuit diagrams, and equipment. Individual items of
tangible research property may connect with one or more intangible inventions
or discoveries. A single creator or a group of collaborating inventors can
produce an item of tangible research property.
f. Intellectual Property: A term referring to a number of distinct forms
of property that result from intellectual thought or activity, and for which a
set of exclusive rights are recognized. Under intellectual property law,
owners receive certain exclusive rights to the intellectual property they own,
such as musical, literary, and artistic works; discoveries and inventions; and
words, phrases, symbols, and designs.
g. Intellectual Property Committee (IP Committee): A standing committee appointed as directed in Chapter III,
Section 12.8, Rules
and Regulations of The Texas State University System. The committee provides a forum for discussion of Texas
State policies and procedures related to commercialization of inventions,
discoveries, and patents (IDP). The committee reviews inventions and discoveries
made by university faculty, staff and students and makes recommendations to the
university president regarding the university’s ownership interest. At the president’s
request, provides advice and recommendations regarding the handling of IDP
commercialization opportunities and technology transfer disputes.
h. Office of Commercialization and Industry Relations (OCIR): The Texas State organizational unit charged with promoting
the transfer of Texas State technologies for society’s use and benefit while
generating unrestricted income to support research and education. The OCIR is
responsible for administration and implementation of Texas State’s IDP program,
and for assisting and advising Texas State faculty, staff and students regarding
commercialization issues.
i. Software: In recent years, the
United States Patent and Trademark Office has granted patents to software
meeting certain technical and legal criteria. When Texas State has an ownership
interest in copyrighted software with patentable subject matter, and it chooses
to seek patent protection for the software, it will manage this software as an
invention under this policy.
03. KEY PROVISIONS OF THE TSUS PATENT POLICY
AND MORE
03.01 Ownership. In
general, IDP and tangible research property made with the use of Texas State
facilities or during the course of regularly assigned duties of the faculty and
staff shall become the property of Texas State. Individuals subject to this
policy shall, upon request, assign all applicable IDP and tangible research
property to Texas State, except that owned by third parties pursuant to
sponsored research agreements and that which results from independent work or
approved consulting activities not utilizing Texas State facilities.
03.02 Personal
Time and Resources. Faculty, staff, or students generally own the IDP and
tangible research property developed in their personal time and without the
significant use of university equipment or work force support, except in the
case of conflict with any applicable agreement. In this context, the university
defines “significant use” as usage beyond that routinely provided to other
faculty, staff, and students for purposes not specifically dedicated to
research.
03.03 Government-Sponsored
Research. The terms of the grants or contracts specified by the government
sponsor or by applicable law may control patents arising from
government-sponsored research. In the absence of such terms or when patent
rights are waived by the sponsor, patent rights arising from government-sponsored
research are controlled by the TSUS Patent Policy.
03.04 Non-government
Sponsored Research. Texas State must ensure the public interest is best
served by the manner in which it applies its facilities and workforce.
Likewise, it must also consider the legitimate interests of private sponsors.
The university normally reserves the right to ownership of IDP arising out of
research funded in whole or in part by grants or contracts with private
sponsors. However, upon request, the university may negotiate special
provisions that grant patent ownership to the private sponsor. In such cases,
the university should:
a.
retain the
right to use the IDP for its own research, educational, and services purposes
without the payment of royalty fees;
b.
require the
sponsor to use due diligence in the commercial use of the IDP; and
c.
retain the
right to freely publish the results of its research after a reasonable period
necessary to protect the rights of the parties and to allow for the filing of a
patent application.
03.05 IDP
Disclosure. Creators of IDP have a duty to promptly disclose their IDP to
the IP Committee in writing. Certainty about patentability is not a requirement
for disclosure. The duty to disclose arises as soon as the creator has reason
to believe, based on the creator’s own knowledge or upon information supplied
by others, that the invention or discovery may be patentable.
Creators
must use the disclosure form prescribed by and available from the OCIR to make
disclosures. Creators shall cooperate with Texas State and the OCIR in
protecting intellectual property rights in the IDP. Creators shall execute such
declarations, assignments, or other documents as necessary in the course of
invention evaluation, patent prosecution, or protection of patent rights to
insure the Texas State holds title to these inventions.
03.06 Waiver
of Interest. The IP Committee will review all disclosures and offer
recommendations to the president regarding Texas State’s ownership interest in
the IDP, if any, and how the university might exploit that ownership interest. If,
after reviewing the IP Committee recommendation, the president decides that
Texas State should not assert and exploit its ownership interest in the
disclosed IDP, the IP Committee shall promptly notify the creator of that
decision, and that the creator is free to independently pursue, obtain, or
exploit a patent for that IDP.
Prior
to any waiver of interest, the OCIR shall evaluate the third party rights to
the IDP and take appropriate steps to ensure compliance with contractual
obligations and state and federal law.
Texas
State shall reserve the right to share in any revenues derived from IDP that has
been released to the creator. The release letter shall state the university
share but it may never exceed 3% of net revenue. Texas State shall reserve the
right to use IDP previously released to the creator for educational and future
research purposes.
03.07 IDP Administration. In asserting and
exploiting Texas State’s IDP ownership interest, the OCIR shall make
determinations as to:
a.
the
potential value of the IDP to Texas State;
b.
the rights
and equities of the creator, Texas State and any third parties; and
c.
the required
actions to maximize the benefits of any IDP to the public, Texas State, and the
creator.
The
OCIR is authorized to negotiate management, licensing, and royalty agreements
with reputable individuals, agencies or firms. Management services may include
evaluation of IDP disclosures, filing of patent applications, and patent licensing
and management.
03.08 Royalties
and Other Proceeds. When Texas State elects to protect IDP in its name, it
shall award to the creator a reasonable share (as defined below) of the net
proceeds from royalties or other income or value after deduction of the
directly assignable costs of patenting, marketing, licensing and protection of
intellectual property rights.
a. Texas
State shall deduct the administrative and patent management costs prior to
royalty distribution. Such costs include those associated with the patenting,
licensing, and protection of patent rights.
b. In
most instances, Texas State will distribute the net royalties or other net
income received under a formula of 50% to the creator and 50% to Texas State.
Any distribution that grants the creator more than 50% shall require approval
of the president and Board of Regents (as specified in Section 12. (14) 3 of
the TSUS Rules and Regulations).
c. In
the event of multiple creators, the creators will first determine the proper
distribution of the 50% creator’s share. If they cannot agree, all creators
will share the royalties evenly.
d. The
associate vice president for Research shall retain Texas State’s 50% for use in
furthering research and commercialization activities.
e. In
the event that a creator contributes a personal work to Texas State, the
university must execute a written agreement. The terms of the agreement shall
include a statement governing the division of royalties between Texas State and
the creator.
f.
In cases of
extramural funding, the funding agreement’s terms shall govern the division of
royalties resulting from commercialization of materials. In the event that the
funding agreement vests royalty rights in Texas State and does not provide a
royalty share for the creator, the creator will receive the same proportionate
share due if the work received intramural funding. Such a royalty payment to
the creator, however, may not violate the terms of the funding agreement. Such
share shall receive a proportion of whatever share is Texas State- owned under
the funding agreement’s term and this policy.
04. PROCEDURES
REGARDING COMMERCIALIZATION AGREEMENTS WITH PRIVATE ENTITIES
04.01 The
following guidelines shall apply to agreements with private entities including
those formed primarily for developing or commercializing intellectual property
created at Texas State subject to the terms of sponsored research agreements
that led to the intellectual property’s creation:
a.
No entity shall receive the exclusive
rights to the development or commercialization of all intellectual property
created at Texas State.
b.
Exclusive agreements
are permitted, especially when conditions would otherwise prevent the IDP from
reaching the marketplace of the public benefit. If an entity receives the exclusive
rights with respect to a particular invention, product, process or intellectual
property item, the agreement should provide that such rights will revert to
Texas State if the entity fails to diligently develop and commercialize the IDP
within a specified time period that is appropriate to the circumstances. The
president must approve an exclusive license that exceeds five years.
c.
An entity that receives exclusive
rights to develop or commercialize patentable inventions and discoveries must
reimburse Texas State for expenses the university incurred in obtaining a
patent. If the university does not hold a patent, the entity must prosecute and
bear the expense of obtaining patent protection for Texas State’s benefit and,
in either event, the entity must take all actions necessary, including
litigation, to protect and preserve such patented rights from infringement.
d.
The agreement must protect and
indemnify Texas State and its officers and employees from all liability arising
from the development, marketing, or use of the IDP.
e.
The agreement should
minimize any restrictions on use for research and teaching purposes and the
publication rights of researchers.
f.
If the entity fails to develop and
commercialize the IDP, the entity will return all rights in Texas State’s IDP
so that the university may offer these rights to another entity.
g.
The entity must comply with all
applicable federal, state, and local laws and regulations, particularly those
concerning use of animals, biological materials and necessary testing, human
subject protection and approval by the Federal Drug Administration or other
relevant federal or state agency.
h.
The entity must
maintain the confidentiality of any unpatented inventions or know‐how.
i.
An entity that grants
a license or sublicense to some other entity for IDP that is in whole or in
part derived from or based on that which is licensed to the entity by Texas
State, should be required to share with Texas State: at least 40% of any
royalty received by the entity and at least 40% of any equity position to which
the entity may be entitled. A licensed entity that participates in
additional research and development of new inventions and discoveries may be
entitled to a reduction in the above share percentage per recommendation by the
director of OCIR and approval of the president. Such participation means
specifically: sponsoring the additional research at Texas State, bundling Texas
State IDP with the entity’s existing IDP to form joint IDP, or a specified
product development period of over one year with mutually agreed upon
milestones.
j.
License agreements should contain
other provisions that the OCIR and the TSUS general counsel determine are in
Texas State’s best interest.
k.
The director is
authorized to negotiate and execute license agreements.
05. PROCEDURES
FOR REPORTING TO THE STATE OF TEXAS
05.01 In compliance with Texas
Education Code §51.912, the Board of
Regents must file a report identifying all employees who have an equity interest
in or serve as employees, officers, or members of the board of directors of
business entities that have agreements with Texas State relating to the
research, development, licensing or exploitation of intellectual property in
which Texas State has an ownership interest. The OCIR will submit the report
through the associate vice president for Research in accordance with the
requirements of Texas Education
Code §51.005. The board office
will obtain the signature of the chair of the board and will transmit the
report to the Governor’s Office and other required entities.
06. PROCEDURES FOR APPROVAL OF EMPLOYEE
PARTICIPATION IN BUSINESS ENTITIES
06.01 Any
Texas State employee who wishes to participate as an employee, officer or
member of the board of directors of a business entity that has agreements with
Texas State relating to the research, development, licensing or exploitation of
IDP in which Texas State has an ownership interest, must request authorization
from the OCIR. The OCIR will forward the request and OCIR’s recommendation to
the associate vice president for Research for approval.
06.02 Texas State Participation in Business
Entities. When requested and authorized by the Board of Regents, an
employee may serve on behalf of the Board, as a member of the board of
directors or other governing board of a business entity that has an agreement
with Texas State relating to the research, development, licensing, or
exploitation of Texas State IDP.
06.03 The following related policies apply:
a. UPPS No. 01.04.02, Ethics Policy
b. UPPS No. 02.02.07, Researcher Conflicts of Interest in Research and
Sponsored Program Activities
c. UPPS No. 04.04.06, Additional State Employment and Outside Employment
and Activities
07. ASSIGNMENT AND PROTECTION
PROCEDURES
07.01 Creators
shall execute appropriate assignment or other documents required to set forth
effectively the ownership and rights to IDP and tangible research property. The
OCIR prescribes and provides assignment agreements.
07.02 The OCIR, in
collaboration with the IP Committee, will determine whether Texas
State desires to commit funding to obtain protection for the inventions and
discoveries, and shall so notify the creators of the decision. In many cases,
before making a final decision, the OCIR will identify one or more licensees
who will bear the cost of obtaining patent protection.
07.03 In those
instances where the creator perceives that delay would jeopardize obtaining the
appropriate protection for the inventions and discoveries, the creator may
request that Texas State expedite its decision. If Texas State has not acted
within six months after a request to expedite, and the creator has cooperated
in good faith, Texas State will release its rights and Section 03.06 shall apply.
08. OBLIGATIONS TO SPONSORS
08.01 The OCIR, in cooperation with the
Office of Sponsored Programs, shall coordinate reporting requirements and other
obligations to research sponsors regarding IDP or economically significant
tangible research property developed under a research contract or grant,
including obligations to the United States government under 37CFR Part 401.
09. AVOIDANCE
OF CONFLICTS
09.01 Any
employee subject to this policy shall report in writing to the OCIR, or its
designee, the name of any business entity as referred to therein in which the
person has an interest or for which the person serves as a director, officer,
or employee and shall be responsible for submitting a revised written report
upon any change in the interest or position held by such person in such
business entity. The OCIR (or designee) will collect these reports. Upon Board
of Regents approval, the OCIR will submit the report to the governor and
legislature as Texas Education Code §51.912 requires.
09.02 Prior to
signing any consulting agreement that deals with patent rights, trade secrets,
or the like, where any Texas State time, facilities, materials, or other
resources are involved, Texas State personnel and students must bring the
proposed agreement to the attention of the OCIR and either obtain a waiver of
Texas State rights or otherwise modify the consulting agreement to conform with
this policy.
10. EQUITY
INTERESTS
10.01 Owned by
Texas State. In agreements with business entities relating to rights in IDP
owned by Texas State, Texas State may receive equity interests as partial or
total compensation for the rights conveyed. Texas State will exercise all due
diligence to ascertain the fair market value of any equity offered by privately
held companies prior to acceptance.
10.02 Owned by
an Employee. In accordance with Texas Education Code §51.912, and subject
to review and approval by the president, employees of Texas State who conceive,
create, discover, invent, or develop IDP may hold an equity interest in a
business entity that has an agreement with Texas State relating to the
research, development, licensing or exploration of that IDP. Texas State may,
but shall not be obligated to, negotiate an equity interest on behalf of any
employee as a part of an agreement between Texas State and a business entity
relating to IDP conceived, created, discovered, invented, or developed by the
employee and owned by Texas State.
10.03 Dividend
income and income from the sale or disposition of equity interests held by Texas
State pursuant to agreements relating to IDP shall belong to Texas State and
shall be distributed in accordance with the provisions of this policy. Dividend
income and income from the sale or disposition of an equity interest held by a
Texas State employee pursuant to an agreement between Texas State and a
business entity relating to rights in IDP conceived, created, discovered,
invented, or developed by such employee shall belong to the employee.
11. REVIEWERS OF THIS UPPS
11.01 Reviewers of
this UPPS include the following:
Position Date
Associate Vice President for July 1 E3Y
Research and Federal Relations
Director
of Commercialization July
1 E3Y
And Chair
of the Intellectual Property
Committee
12. CERTIFICATION STATEMENT
This UPPS has been approved
by the following individuals in their official capacities and represents Texas
State policy and procedure from the date of this document until superseded.
Associate Vice President for Research and
Federal Relations; senior reviewer of this UPPS
Provost and Vice President for Academic
Affairs
President