Handbook of Operating Procedures > Series 200 General Policies and Procedures > 2.3.2 Intellectual Property Policy and Guidelines

2.3.2 Intellectual Property Policy and Guidelines

Disclaimer

The intellectual property of the University of Texas at Tyler (“University”) is governed by Regents' Rules which supersede any policy or procedure described in this document. A copy of The University of Texas System (“UT System”) Intellectual Property Policy is currently available at: https://utsystem.edu/board-of-regents/rules/90101-intellectual-property.

A. Purpose

The purpose of this policy is to serve the public good, promote partnerships with the private sector, encourage innovation, promote the engagement of faculty, staff, and students in research, and foster economic development. 

B. Persons Affected

1. All personnel employed by UT Tyler
2. Anyone (including students) who use institutional facilities under the supervision of university personnel.
3. Candidates for baccalaureate, master's and doctoral degrees, and
4.  Postdoctoral and predoctoral fellows, provided that such intellectual property:
   1. is created by an employee within the course or scope of employment; or
   2. is created on UT Tyler time, with the use of UT Tyler facilities or state resources; or
   3. results from research conducted within System that is supported by Federal funds or third party sponsorship; or
   4. is commissioned by System or a member institution of System:
      1. pursuant to a signed contract through which intellectual property is created by (a) an employee, student, or other individual commissioned, required, or hired specifically to produce such intellectual property by System or any of its member institutions and (b) an employee or student as part of an institutional project, or
      2. that fits within one of the nine categories of works considered "works made for hire" under copyright law.

This policy shall not apply to, and Board shall not assert ownership rights in, intellectual property that is:

1. faculty authored, a scholarly work, an art work, a musical composition or a dramatic or non-dramatic literary work related to the faculty member's professional field, regardless of the medium of expression, unless such work is commissioned by or produced as a work for hire by System or UT Tyler. A work that is not subject to the provisions of Section II.A above is owned by the creator. Additionally, a scholarly work that is protected by copyright (defined as "an original work of authorship fixed in a tangible medium of expression") protects a person's unique way of expressing something, but does not protect the underlying ideas or facts. More information about System's Copyright Policy regarding distance learning, course packs, and copyrighted scholarly works is available at: https://www.utsystem.edu/offices/general-counsel/intellectual-property#copyrights;https://www.utsystem.edu/board-of-regents/rules/90101-intellectual-property (Regents' Rules 90101).
2. unrelated to an individual's employment responsibility and is developed on the individual's own time and without UT Tyler support or the use of UT Tyler facilities. Such property is owned by the creator, or
3. returned or released to the inventor in accordance with this Policy.

C. Definitions

Not applicable.

D. Policy and Procedures

Philosophy and Objectives: While the discovery of patentable processes or inventions and the creation of other intellectual property is not the primary objective of the University, it is the objective of the University to provide an Intellectual Property Policy that will encourage the development of inventions and other intellectual creations for the best interest of the public, the creator, and the research sponsor, if any, and that will permit the timely protection and disclosure of such intellectual property whether by development and commercialization after securing available protection for the creation, by publication, or both. The policy is further intended to protect the respective interests of all concerned by ensuring that the benefits of such property accrue to the public, to the inventor, to the UT System and to the sponsors of specific research in varying degrees of protection, monetary return and recognition, as circumstances justify or require.

1. Responsibility and Obligation of Faculty and Staff
   1. The intellectual property policy applies to all personnel employed by UT Tyler and to anyone (including students) who use institutional facilities under the supervision of university personnel. A copy of this policy will be provided to faculty and staff upon employment.
   2. It will be the responsibility and obligation of UT Tyler faculty and staff to disclose all creative ideas, inventions, discoveries, trade secrets, technology, scientific or technological developments, processes, and products including but not limited to software and video productions (“Inventions”) with potential for commercial exploitation to the University Intellectual Property Advisory Committee ("IPAC") regardless of the source of support. The Invention that may result shall be brought to the attention of the IPAC immediately after it has taken form, and before any publication, to ensure the intellectual property rights of both individual(s), if applicable, and the University are not diminished.
2. Determination of Rights, Privileges and Ownership. 
   IPAC will consider all disclosures of Inventions created by any employee and help to administer patent and copyright policies and secure appropriate rights.
   1. IPAC will make recommendations as to the degree of university sponsorship, if any, as well as ownership rights and privileges.
   2. IPAC will recommend changes in the distribution of proceeds derived from intellectual property if the equities so require.
   3. The contributors or inventors have the responsibility to provide IPAC in writing and in reasonable detail, the information necessary to make such a recommendation concerning rights and ownership.
   4. IPAC will develop a formal procedure for reporting inventions as well as the disposition of claims and the exploitation of such creative endeavors in accordance with the UT Board and System general guidelines, policies and regulations.
   5. Any determinations made by IPAC will be subject to the approval of the President of UT Tyler.
   6. The President shall appoint the Institutional IPAC on an annual basis.
   7. Any intellectual property which is related to the University employee's individual employment responsibility, or results from activities performed on the University’s time or with support of state funds, or from using the University’s facilities shall be submitted to the IPAC for review. This initial disclosure shall be on the form approved by the IPAC for this purpose.
   8. The Chair of the IPAC shall distribute this to all duly appointed members of the committee and call a meeting of the committee to discuss the intellectual property. The inventor shall be asked to present a description of the invention along with a projection of its potential for commercialization. The members of the committee shall vote on whether the University should assert and exploit its interest in the intellectual property.
   9. The Chair of the IPAC shall prepare a report summarizing the discussions of the committee and the result of the vote that will be submitted to the President along with the initial disclosure form.
   10. The President should notify the IPAC of his/her decision on how, when and where the intellectual property is to be protected.
   11. If the President decides to patent or seek other available protection for such intellectual property, it may proceed through an appropriate private firm or attorney to obtain protection and manage the intellectual property, and will be coordinated by the Chair of the IPAC.
3. Classification of Intellectual Property by Source of Support.  
   The following three categories of determining ownership of intellectual property are set forth in Regents’ Rules and Regulations.
   1. Intellectual property that is unrelated to the individual's employment responsibility and has been developed as a result of the individual's efforts on his or her own time with no UT Tyler support or use of its facilities.
   2. Intellectual property that is related to the individual's employment responsibility, or has resulted either from activities performed by the individual on UT Tyler time, or with support by state funds, or from using UT Tyler facilities.
   3. Intellectual property that has resulted from research supported by a grant or contract with the Federal Government or an agency thereof, a nonprofit or for-profit nongovernmental entity or by a private gift to UT Tyler.
4. Intellectual Property Rights and Obligations
   1. Intellectual property unrelated to the individual's employment responsibility that is developed on an individual's own time and without UT Tyler support or use of UT Tyler facilities (see D.1) is the exclusive property of the creator and UT Tyler has no interest in any such property and no claim to any profits resulting there from. Should the creator choose to offer the creation to UT Tyler, the IPAC shall recommend to the President whether UT Tyler (and the UT System) should support and finance a patent application or other available protective measures and manage the development and commercialization of the property. If the President so recommends and the creation is accepted for management by the UT System, the procedures to be followed and the rights of the parties shall be those set out in Rule 90103 of the Regents’ Rules and Regulations.
   2. Intellectual property either related to the individual's employment responsibility, or resulting from activities performed on UT Tyler time, or with support by state funds, or from using UT Tyler facilities is subject to ownership by the University of Texas Board. (see D.2) The rights to intellectual property and patents must be assigned to the Board of Regents of the UT System, and to the Federal Government if federal funds were used to develop the invention.
      1. Before intellectual property is disclosed either to the public or for commercial purposes, and before publishing same, the creator shall submit a reasonably complete and detailed disclosure of such intellectual property to the President of UT Tyler through the IPAC, for determination of the UT System's interest.
      2. If the President recommends that UT Tyler not assert and exploit its interest and that recommendation is approved by the Office of General Counsel, the creator shall be notified within one hundred eighty (180) days of the date of submission that he or she is free to obtain and exploit a patent or other intellectual property protection in his or her own right.
      3. With respect to intellectual property in which UT Tyler asserts an interest (see D.1 and D.2), the Office of General Counsel in consultation with the President (based upon a recommendation from the IPAC) shall decide how, when, and where the intellectual property is to be protected.
         1. If UT Tyler decides to patent or seek other available protection for intellectual property which falls into D.1 and/or D.2, it may proceed either through its own efforts or those of an appropriate private firm or attorney to obtain protection and manage the intellectual property. Under appropriate circumstances, and with the consent of the Vice Chancellor and General Counsel and the approval of the Attorney General, UT Tyler may arrange to have services to obtain protection for intellectual property performed by a local outside attorney on a case-by-case basis. If the President decides to patent or seek other available protection for such intellectual property, it may proceed through an appropriate private firm or attorney to obtain protection and manage the intellectual property, and will be coordinated by the Chair of the IPAC.
         2. It shall be mandatory for all employees, academic and nonacademic, to assign the rights to intellectual property and patents to the Board when such creations fall within category D.2. All costs will be paid by the University. Responsibility for payments will reside with the sponsoring administrative area.
         3.  In those instances where the rights in intellectual property are licensed to third parties, the costs of licensing and obtaining a patent or other protection for the property shall first be recaptured from any royalties received and the remainder of such royalty income (including license fees, prepaid royalties and minimum royalties) shall be divided as follows: 50% to creators (when there are multiple creators to be split in such proportion as agreed by the creators at the time of initial disclosure or, in the absence of such an agreement, in equal proportions); 50% to UT Tyler to be utilized in the Administrative area where the intellectual property was created.
         4. When multiple individuals are involved in any project, the fixed percentages of the proceeds designated to the "creative individual" will be distributed in a manner agreed upon by the individuals involved. The percent of the proceeds attributable to the collaborative departments and colleges will be equal to that assigned to the creative individuals. In cases where a clear decision cannot be reached regarding the degree of project participation by the individuals, departments and schools involved, IPAC will serve as an arbitrator.
         5. The fixed percentages of the proceeds allocated to the University should be distributed among the departments of the faculty/staff member(s), the school of the faculty/staff member(s) and the University administration in equal shares (1/3 each). In general, proceeds assigned to the University will be employed in a manner to encourage future research and other appropriate endeavors.
         6. Intellectual property resulting from research supported by a grant or contract with the Federal Government, or an agency thereof, with a nonprofit or for-profit nongovernmental entity, or by a private gift or grant to UT Tyler shall be subject to ownership by the Board. (See 90101, Sec. 12 Regents’ Rules and Regulations.) The rights to intellectual property and patents must be assigned to the Board of Regents of the UT System, and to the Federal Government if federal funds were used to develop the invention.
5. Equity Interests
   In agreements with business entities relating to rights in intellectual property owned by the Board, UT Tyler may receive equity interests as partial or total compensation for the rights conveyed. In any such instance, the component institution where the intellectual property was created may elect, at its option and with the concurrence of the Chancellor, to share an equity interest with the creator(s) in the same manner as royalties are shared pursuant to Subdivision E.2.c.
   1. Consistent with 90101, Sec. 13 of the Regents’ Rules and Regulations, and subject to review and approval by the President of UT Tyler, the appropriate Executive Vice Chancellor, the Chancellor and the Board, employees of UT Tyler who conceive, create, discover, invent or develop intellectual property may hold an equity interest in a business entity that has an agreement with UT Tyler relating to the research, development, licensing or exploitation of that intellectual property.
   2. The University may negotiate, but shall not be obligated to negotiate, an equity interest on behalf of any employee as a part of an agreement between UT Tyler and a business entity relating to intellectual property conceived, created, discovered, invented, or developed by the employee and owned by the Board.
   3. Dividend income and income from the sale or disposition of equity interests held by the Board pursuant to agreements relating to intellectual property shall belong to UT Tyler and shall be distributed in accordance with the provisions of Section I.
   4. Dividend income and income from the sale or disposition of an equity interest held by a UT Tyler employee pursuant to an agreement between the UT Tyler and a business entity relating to rights in intellectual property conceived, created, discovered, invented or developed by such employee shall belong to the employee.
6. Business Participation
   1. Any UT Tyler employee who conceives, creates, discovers, invents or develops intellectual property shall not serve as a member of the board of directors or other governing board or as an officer or an employee (other than as a consultant) of a business entity that has an agreement with the University relating to the research, development, licensing, or exploitation of that intellectual property without prior review and approval by the President, the Chancellor and the Board.
   2. When requested and authorized by the Board, 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 the UT Tyler relating to the research, development, licensing or exploitation of intellectual property.
7. Reporting
   Any employee covered by F.2, G.1 or G.2 shall report in writing to the President and the IPAC the name of any business entity 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. These reports shall be forwarded to the Vice Chancellor and General Counsel by October 1 of each year for filing with the Board as required by Section 51.912, Texas Education Code and inclusion in the annual financial report sent to the State officials listed in Section 51.005, Texas Education Code.
8. Approval of and Execution of Legal Documents Relating to Rights in Intellectual Property
   Agreements that grant an interest in Board intellectual property may be executed and delivered in accordance with the provisions of 90101, Sec. 15 of the Regents’ Rules and Regulations, following any required review by the Office of General Counsel.
   1. Any document altering substantially the basic intellectual property policy of UT Tyler as set out in the preceding Sections and other policies and guidelines that may be adopted by the Board shall have the advance approval of the President, the appropriate Executive Vice Chancellor, the Chancellor, and the Board as an agenda item. Such an alteration in a sponsored research agreement shall not be considered substantial and the agreement may be executed and delivered as set forth in Subsection I.1 if, in the judgment of the President and with the concurrence of the appropriate Executive Vice Chancellor, the benefits from the level of funding for the proposed research and/or other consideration from the sponsor outweigh any potential disadvantage that may result from the policy deviation.
   2. The Chancellor, the appropriate Executive Vice Chancellor, the Vice Chancellor and General Counsel or the authorized representative of UTIMCO may execute, on behalf of the Board, legal documents relating to the Board's rights in intellectual property, including, but not limited to, declarations, affidavits, powers of attorney, disclaimers, and other such documents relating to patent applications and patents; applications, declarations, affidavits, affidavits of use, powers of attorney, and other such documents relating to trademarks; and other documents approved pursuant to Subsections I.1 or I.2. The President or designee may execute, on behalf of the Board, institutional applications for registration or recordation of transfers of ownership and other such documents relating to copyrights.
9. Income from Intellectual Property
   The portion of the net income UT Tyler retains from royalties and any other intellectual property-related income shall be used by the University where the income-producing creation originated for research and other purposes approved by the Board in accordance with standard budgetary policies. At the option of UT Tyler, such income may be accumulated in an endowment fund with the income to be distributed to the component institution for such purposes as may be approved by the Board.
   1. With the prior written approval of the President of UT Tyler, future royalties payable to a faculty member pursuant to Subdivision E.2.c may be assigned to UT Tyler by the faculty member and designated for use in research to be conducted by such faculty member.
10. All other applicable policies of the Board of Regents of the University of Texas will be adhered to with respect to sponsored program agreements, licensing agreements, management and marketing of intellectual property and the reporting of business participation.

E. Responsibilities

Not applicable. 

F. Review

The Divisional Head for this policy is the President. This policy shall be reviewed every five years or sooner if necessary by the President, in consultation with the Senior Vice President for Research and the Associate Vice President for Research.