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Handbook of Operating Procedures
Chapter 10 - Research
Publication Date: November 6, 2015
Responsible Executive: VP for Research


10.15 Management, Use and Commercialization of UTSA Intellectual Property


I. POLICY STATEMENT


The policy on Management, Use and Commercialization of Intellectual Property (IP) is intended to enable The University of Texas at San Antonio (UTSA) to serve the public good, promote partnerships with the private sector, encourage innovation, and promote the engagement of faculty, staff and students in Research and entrepreneurship, and foster economic development. The Board of Regents (Board) of The University of Texas System (UT System) recognize the high importance of discovery commercialization as a core mission of UT System Institutions and that UTSA will only attract industrial support of Research if timely and efficient processes exist to manage IP. UTSA supports IP creation, protection, management and commercialization within an environment that ensures the highest quality, integrity and freedom of academic activity, teaching and Research.

The fundamental principles that guide this policy are:

  1. Successful deployment of IP, , whether through sponsored Research, licensing or other types of transactions or arrangements, allows for a dissemination of knowledge and technology that is in the broad public benefit and comports with the mission of UTSA;
  2. Sponsored Research is very important to the vitality and competitiveness of UTSA, the State of Texas and the United States of America. UTSA shall 1) encourage and strengthen university-industry partnerships, 2) protect and manage IP created from these partnerships efficiently and expeditiously and 3) remain understanding, flexible and open to accommodate the varied circumstances and needs of potential industry sponsors in light of UTSA’s growing Research enterprise;
  3. UTSA expects that when industry is underwriting sponsored Research, industry commences negotiations with the expectation of: 1) speed in the execution of critical agreements, 2) clear financial outcomes, and 3) the right to ownership of IP resulting from the work.
  4. Sponsored Research is strongly integrated with the educational mission at UTSA, but must not curtail publication and Research rights, impinge upon the dissemination of Research results including student theses and dissertations, or diminish the environment of academic freedom and Research integrity;
  5. The primary Research-related duties of the faculty at UTSA are to teach, study, investigate, discover, create, disseminate, grow professionally and infuse new knowledge into their classes, teachings, and fields of discovery;
  6. Commercialization of technology and IP enhances the reputation of UTSA and can be considered as one of the elements in the annual performance and tenure review process of faculty; and
  7. Compliance with all applicable federal laws and regulations, the Texas Constitutional and all other applicable laws and regulations of the State of Texas is required.

II. RATIONALE


The IP rules of UT System are found in Series 90000 of the UT System Board of Regents' Rules and Regulations and establish the basic rules relating to IP at UTSA. However, these rules give UTSA some flexibility and authority to establish and administer policies and procedures for dealing with IP matters at the University level. This policy sets out those areas where UTSA may take control of or make decisions relating to IP covered by this policy. The Vice President for Research (VPR) is responsible for the administration of this policy.


III. SCOPE


This policy shall apply to IP created by Covered Creators.


IV. WEBSITE ADDRESS FOR THIS POLICY


http://www.utsa.edu/hop/chapter10/10-15test.html


V. RELATED STATUTES, POLICIES, REQUIREMENTS OR STANDARDS


UTSA or UT System Policies or the Board of Regents’ Rules & Regulations

  1. UT System Board of Regents' Rule 60101, Acceptance and Administration of Gifts
  2. UT System Board of Regents' Rule 60102, Fees for Endowment Administration and Management
  3. UT System Board of Regents' Rule 60202, Endowed Academic Positions
  4. UT System Board of Regents' Rule 70201, Investment Policies
  5. UT System policy UTS138, Gift Acceptance Procedures
  6. UT System policy UTS117, Endowment Compliance Plan Systemwide Standards and Guidelines
  7. UTSA Handbook of Operating Procedures policy 9.23, Procedures Governing Private Gift Solicitation, Acceptance, and Management

Other Policies & Standards

  1. Management, Investment and Expenditure of Institutional Funds (Texas Property Code, Chapter 163)

VI. CONTACTS


If you have any questions about HOP policy 10.15, Management, Use and Commercialization of UTSA Intellectual Property, contact the following office:

Office of Commercialization and Innovation (OCI) in the Office of the VPR
210-458-6963
http://research.utsa.edu/commercialization


VII. DEFINITIONS


Copyrights: Copyright protects the expression of an idea, not the idea itself. The expression must be fixed in a tangible medium such as handwriting, set in type, or recorded on storage media. Copyright covers the expression in literary or musical works, dramatic works, pantomimes and choreographic works, pictorial and graphic works, computer programs, class lecture notes and slides, video or motion pictures, sound recording, photographs, architectural works, and sculpture.

  1. The owner of the copyrighted work has the exclusive right to control copying, adaptations, and distribution of copies, public performances and public displays.
  2. In the "fair use doctrine," others may use a copyrighted work in limited ways for criticism, comment, news reporting, teaching, scholarship or Research without infringing. For further information see Copyright and Fair Use Guidelines at UTSA. http://libguides.utsa.edu/copyright

Covered Creators: Individuals subject to this policy consist of the following:

  1. UTSA employees, including Research student employees who develop the IP as part of their employment using UTSA resources; or
  2. Anyone developing IP as a result of receiving and using UTSA funding or participating in a Sponsored Program administered by UTSA.

Intellectual Property: Property that derives from the work of the mind or intellect regardless of whether subject to protection under patent, trademark, copyright, or other laws. For purposes of this policy, intellectual property (IP) includes, but is not limited to, any invention, creation, discovery, know-how, trade secret, technology, scientific or technological development, Research data, work of authorship, and computer software. Especially when considering its use and protection, IP is, and can be subdivided into four basic categories: patents, trade secrets, copyright, and trademarks.

Patent: A U.S. patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted (while foreign patents are a set of exclusive rights granted by a foreign sovereign state). Patentable subject matter includes processes, machines, manufacture and compositions of matter. A patent protects an idea and its implementation. A patent does not necessarily provide the holder any affirmative right to practice a technology since it may fall under a broader patent owned by others. Instead, it provides the right to exclude others from practicing the invention. Patent claims are the legal definition of an inventor’s protectable invention.

Research: A systematic investigation, study, or experiment designed to develop or contribute to generalizable knowledge. This term encompasses basic and applied Research and product development, and includes both funded and unfunded projects.

Sponsored Program: An activity conducted in Research, instruction, training, or public service as a result of a formal written agreement (such as a grant, contract, or cooperative agreement), typically obtained as a result of a formal application and approval process. These activities can be funded either externally by government, industry, or private sponsors; or, internally by UTSA.

Trade Secret: A trade secret is information, including a formula, pattern, compilation, program, device, method, technique, process, financial data, or list of actual or potential customers or suppliers, that: (A) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and (B) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Texas Uniform Trade Secrets Act, Texas Civil Practice and Remedies Code, Title 6, Sec. 134.001 (6). State laws govern trade secret protection and most (such as TUTSA, cited above) are based upon some form of the Uniform Trade Secrets Act. The theft or unauthorized dissemination of a trade secret is an unlawful act in every state.

Trademark: A trademark is a word, name, symbol or device used by someone to identify their goods or services and distinguish them from others and to indicate the source of goods or services.


VIII. RESPONSIBILITIES


  1. Covered Creators
    1. Completes a Technology Disclosure Form (TDF) and submits it according to the procedures defined by the Office of Commercialization and Innovation (OCI);
    2. Protects IP he/she develops by not disclosing it, publishing it, or using it commercially until after it is disclosed to the OCI and after any question of ownership has been determined and decisions are made regarding its protection;
    3. Does not perform Research for third parties without first establishing appropriate agreements to protect any UTSA IP;
    4. Participates in IP review, ownership determination, if needed, and the protection and commercialization process as necessary;
    5. Responds promptly to all notifications and requests from OCI necessary for the preparation, prosecution and commercialization of the IP, as the inventor is the key component to most IP creation, protection, and commercialization.
  2. Office of Commercialization and Innovation
    1. Manages and implements procedures for IP disclosure, ownership determination, protection, and commercialization processes, including the maintenance of a technology disclosure database;
    2. Confers with Covered Creator(s) on ownership issues and on the management and commercialization of the IP they created;
    3. Makes recommendations on how, when and where IP owned by the Board/UTSA is to be protected and commercialized or how, when and where it is in the best interest of the Board/UTSA to not assert rights to the IP;
    4. In the event that UTSA does not pursue IP protection and/or commercialization, recommends what rights that UTSA may retain in IP to be released to the Covered Creator(s) and what limitations, conditions and obligations will be imposed on the Creator(s) relating to the released IP;
    5. For IP created under a federal grant or contract, discloses, files and obtains patent ownership from the federal government and complies with the Bayh-Dole Act;
    6. Oversees operational matters associated with UTSA incubation facilities and negotiates and administers the incubation licenses, including coordination with companies in the UTSA incubators;
    7. Markets IP and seeks licensees;
    8. Works with Covered Creator(s) in forming start-up companies around IP created by the Covered Creator(s);
    9. Negotiates terms and conditions for license agreements; and
    10. Distributes royalty income as established in the OCI operating procedures.
  3. Chief Commercialization Officer (CCO), or other individual delegated authority from the President
    1. Makes recommendations on how, when and where IP owned by the Board is to be protected and commercialized or how, when and where it is in the best interest of the Board/UTSA to not assert rights to the IP; and
    2. Recommends approval of negotiated terms and conditions for license agreements.
  4. Office of the Vice President for Research or other individual delegated authority from the President
    1. The VPR is authorized by the president to make the final decisions on: (a) IP ownership; (b) whether to release Board/UTSA IP to its Covered Creator(s) and on the terms and conditions of any such release; (c) entering into any IP agreement that deviates substantially from the basic IP Rule of UT System as set out in the Board’s Rules (see Regents’ Rules 90101); (d) accepting equity interests in a faculty-owned company in addition to or in lieu of UTSA’s 50% of the royalty income (see Section IX. E.); and (e) how, when and where Board/UTSA IP is to be commercialized.
  5. President or his/her other designee(s)
    1. President may delegate, to another designee, and/or may retain the authority to make the final decisions on: (a) IP ownership; (b) whether to release Board/UTSA IP to its Covered Creator(s) and on the terms and conditions of any such release; (c) entering into any IP agreement that deviates substantially from the basic IP Rule of UT System as set out in the Board’s Rules (see Regents’ Rules 90101); (d) accepting equity interests in a faculty-owned company in addition to or in lieu of UTSA’s 50% of the licensing income (see Section IX. E.); and (e) how, when and where Board/UTSA IP is to be commercialized.

IX. PROCEDURES


  1. Covered Creator(s) Ownership of IP - The Covered Creator(s) owns and the Board and UTSA will not assert an interest in the following:
    1. Copyright rights to
      1. Scholarly or educational materials, class content, art works, musical compositions and dramatic and nondramatic literary works authored by a Covered Creator(s) and related to his/her academic or professional field (hereinafter referred to collectively as “Scholarly Works”), provided it was not commissioned by UTSA as a work for hire or as in Institutional Project; or
      2. Original software whose content consists of Scholarly Works or that is integral to the presentation of such Scholarly Work(s).
    2. The Covered Creator(s) can also own IP if the president or his/her designee determines that all of the following conditions exist:
      1. the IP is unrelated to the Covered Creator's employment responsibilities to UTSA;
      2. the IP has been developed by a Covered Creator's efforts on his/her own time; and
      3. the IP was developed with no UTSA or UT System support and with no UTSA or UT System funds, resources, or facilities.
  2. Student Ownership of IP - All IP created by students is considered the sole property of the students, unless one of the following conditions is met:
    1. The student is also an employee and the IP is developed within the scope of his/her employment, in which case the student will observe the normal rules governing employees as Covered Creators;
    2. The student works on an institutional project or under a work-for-hire contract in which case the contract must specify the intended IP ownership;
    3. The student chooses to participate in Research which results in the creation of IP that has been committed to a governmental, philanthropic or corporate sponsor; or
    4. The student is working on a project in which a faculty member, advisor, or other UTSA employee is also an inventor, in which case federal rules of joint inventorship will apply.

  3. Board/UTSA Ownership of IP - The Board, on behalf of UTSA, automatically owns IP created by Covered Creators as described below, except for the rights Covered Creators hold to IP described in Section IX. A. and B. Covered Creators must and do hereby assign their rights in such Board-owned IP to the Board.
    1. The Board owns all IP related to a Covered Creator’s employment responsibilities to UTSA, except for the IP described in Section IX. A. and B. above.
    2. The Board owns all IP resulting:
      1. from participation in UTSA Research or a Sponsored Program:
        1. that is supported by a grant or a contract (including subcontracts or subawards of a prime grant or contract) with the government (federal, state and/or local) or an agency thereof, or with a non-profit or for-profit nongovernmental entity;
        2. that is supported by a private gift to UT System or UTSA;
        3. that is not governed by an agreement providing for a different ownership of the resulting IP that was properly approved by UTSA’s president or his/her designee and complies with Regents’ Rule 90101,and may require review at UT System.
      2. from activities including, without limitation, those associated with unfunded Research that were performed with the use of UTSA resources or facilities or with the support of UTSA.
  4. Identifying and Protecting Board/UTSA IP:
    1. Patentable IP:
      1. In the event of the creation of IP potentially subject to ownership by the Board on behalf of UTSA, the Covered Creator(s) who created or invented the IP will complete a Technology Disclosure Form (TDF) and submit it according to the procedures defined by the OCI. Such disclosure must occur before the Covered Creator(s) publishes the IP, uses it for commercial purposes, or discloses it to the public generally or to any party outside of UT System if they wish to ensure its protection.
        1. Failure to disclose in a timely manner will place the Covered Creator(s) and the Board/UTSA at risk for losing all rights to the IP, including the royalty interests shared by the Covered Creator(s) and the Board/UTSA as described in Section E. 7., below.
        2. Additionally, Covered Creators are strongly encouraged to disclose all patentable IP, even if created during a consulting job in the summer (for faculty with a 9-month appointment) or on their own time. If a Covered Creator(s) determines that he/she owns the IP and UTSA later concludes that it is actually owned by the Board/UTSA, the Covered Creator(s) may be subject to disciplinary action up to and including termination.
        3. Communicating regularly and promptly with the Covered Creator, OCI staff will gather the facts needed for a determination of whether the Covered Creator(s) owns the patentable IP (see Regents Rule 90101, cited in sections A, B and C, above)
      2. If UTSA determines the IP should be legally protected, the Covered Creator(s) will be notified and involved in the process; however, the president or his/her designee decides how, when and where the IP is to be protected and commercialized in accordance with the mission of UTSA.
      3. If the CCO recommends that UTSA elect not to assert the Board’s interest in the IP and such recommendation is approved by the president or his/her designee(s), the Covered Creator(s) and UT System’s Office of General Counsel will be notified by the CCO and the Covered Creator(s) will be offered the opportunity to have the IP released to him/her pursuant to this policy and Regents Rule 9010.
      4. Neither the facilities nor the resources of UT System or UTSA may be used to further develop or commercialize IP that: (a) have been determined to be owned by the Covered Creator; or (b) have been released to a Covered Creator(s) unless UTSA retains an interest in the IP under the terms of the release and UTSA’s president or his/her designee approves the use of such facilities or resources.
      5. If UTSA releases the IP to the Covered Creator(s) and the Covered Creator(s) elects not to pursue an interest in the released IP, the IP is considered abandoned.
    2. Trademarks & Copyrights - The OCI shall seek trademark and copyright protections for Board-owned trademarks and copyrights in accordance with applicable law. OCI and System OGC will provide information to assist employees and students on how to pursue copyright for materials that they own IP rights to under Section IX. A and B.
  5. Commercializing and Using Board/UTSA IP:
    1. Any Covered Creator(s) who creates IP that is owned by the Board/UTSA, except those working under a Sponsored Program agreement that provides otherwise, may have a role in the determination of how it is to be made public, whether by publication or by development and commercialization after securing available protection for the creation or both.
    2. OCI will provide review and management services for Board/UTSA inventions as well as other IP owned by the Board/UTSA, through its own staff, a related organization, or by other means.
    3. New commercialization ventures started by UTSA or involving UTSA IP or Research labs are eligible for incubation as a means to accelerate technology transfer. The OCI oversees operational matters associated with UTSA incubation facilities and negotiates and administers the incubation licenses, including coordination with companies in the UTSA incubators.
    4. The Covered Creator(s) may be allowed to be involved in commercialization ventures and he/she may be allowed to license inventions he/she created. Procedures for such licensing are maintained by the OCI. The Covered Creator(s) will file or update a conflict of interest disclosure so that it reflects the licensing activity. Such disclosure will be vetted and acted upon by the Committee on Conflict of Interest under its processes and procedures, which vetting and action will ensure the integrity of UTSA Research and academics.
    5. Proof-of-concept development shall be encouraged for translating potential high-value ideas into technology demonstrators. These demonstrators will serve to accelerate the technology licensing and commercialization process.
    6. The UTSA technology licensing process shall enable companies to seek and license Board/UTSA intellectual property for commercialization purposes.
    7. Unless an agreement related to a Sponsored Program provides otherwise, after licensing and patent costs incurred on behalf of the Board/UTSA IP have been reimbursed to UTSA by a licensee, UTSA and the inventor(s) will share the income from licensing revenues on a 50:50 basis as follows:
      1. 50% to UTSA OCI to be distributed as per OCI procedures; and
      2. 50% to be distributed between the inventor(s).

    At the discretion of the president or his/her designee(s), UTSA may accept equity interests in a company in addition to or in lieu of UTSA’s royalty income.

  6. Special Provisions relating to Consulting and other Outside Employment
    1. If UTSA faculty or staff engage in consulting or other outside employment for an entity (for purposes of this subsection, the “Company”) and such consulting services or outside employment may result in the creation of any IP, then the UTSA faculty or staff member (for purposes of this subsection, the “Consultant”) should add the following provision to his/her consulting or employment contract:
      Pre-Existing and Controlling Obligations of UTSA faculty & staff members
      1. As a member of the faculty or staff of The University of Texas at San Antonio (“UTSA”), a public university of The University of Texas System (the “UT System”), Consultant (a) has a pre-existing obligation to assign and has assigned rights in certain intellectual property he or she creates to the Board of Regents of the UT System (the “Board”) and (b) is also obligated to follow applicable federal and state law and applicable rules, regulations, and policies of the Board, the UT System and UTSA (the law and rules, regulations and policies collectively the “Governing Regulations”).

      2. The Governing Regulations may change from time to time and cover topicsincluding, but not limited to, ownership of intellectual property, managing conflicts of interest or commitment, and use of state resources. UTSA Handbook of Operating Procedures, Section 10.15 (UTSA Inventor’s Handbook) is a good source for some of the Governing Regulations.

      3. Company acknowledges that this consulting or employment agreement is subject to the Governing Regulations, and that if a provision in this agreement conflicts with the Governing Regulations, the Governing Regulations will control.

    2. Consultant has a pre-existing obligation to assign, and has assigned to UTSA all of Consultant's rights in IP as described in Section IX.C. above. Therefore, no agreement between Company and Consultant can:
      1. grant Company any rights in any publication, invention, discovery, improvement or other IP, whether or not publishable, patentable, or copyrightable that is subject to Consultant's obligations to UTSA; or
      2. provide Company a priority or advantage, whether by purported license or otherwise, to any proprietary information or IP of UTSA.
    3. Consultant and/or Company should disclose to UTSA’s OCI, in confidence, all IP created either solely or jointly by Consultant as a result of his/her agreement with Company in order to provide UTSA an opportunity to assess, together with Consultant and/or Company, whether the invention is subject to the provisions of section 2, immediately above.
    4. Neither Company nor Consultant may use UTSA facilities, personnel other than Consultant, funding, Research or other confidential data, or other UTSA resources (including, without limitation, human subjects from the UTSA community) for consulting or employment activities. Use of such facilities, personnel, funding, data or resources may be authorized only pursuant to an institutional Sponsored Program agreement between Company and UTSA.
    5. Consultant shall not accept any funding from Company for Consultant’s professional activities at UTSA, such as lab support or principal investigator sponsored Research duties, unless Company and UTSA have entered into a Sponsored Program agreement and Consultant has fully disclosed and resolved any conflict of interest in accordance with UTSA’s and UT System’s policies on conflicts of interest.



X. SPECIAL INSTRUCTIONS FOR INITIAL IMPLEMENTATION


None


XI. FORMS AND TOOLS/ONLINE PROCESSES


  1. Intellectual Property Training
  2. Intellectual Property & Commercialization Process
  3. Royalty Sharing
  4. Technology Disclosure Form

XII. APPENDIX


None