Chapter 2 - Faculty and Academics
Publication Date: April 27, 2000
Responsible Executive: VP for Research
2.27 UTSA Intellectual Property
The intellectual property policy of The University of Texas System (UT System) is found in Part Two, Chapter XII of the UT System Board of Regents' Rules and Regulations. That policy delegates to each component institution the responsibility for establishing and administering policies and procedures for dealing with intellectual property developed at the component institution, including the development of sponsored research contracts that contain intellectual property provisions.
- General Statement
The President is responsible for the administration of the intellectual property policy of The University of Texas at San Antonio (UTSA). The UTSA Intellectual Property Advisory Committee, composed of faculty and administrative personnel, is appointed by the President. The committee advises on general matters of intellectual property policy and, as requested, reviews and makes recommendations on whether the University should assert its interest in certain intellectual property. Support services for the administration of the intellectual property policy are provided by the Vice President for Business Affairs (VPBA).
- Intellectual Property Defined
- Patents: A patent, as well as a copyright or trademark, is an agreement between the United States Government and the inventor, and is a fundamental right provided by the United States Constitution. A patent protects an idea and its implementation.
- Trade Secret: A trade secret is any formula, pattern, device, process, tool, mechanism, compound, etc., of value to its owner which is not protected by a patent and is not known or accessible to others. State laws govern trade secret protection and every state makes a theft or unauthorized dissemination of a trade secret an unlawful act.
- Copyrights: Copyright protects the expression of an idea, not the idea itself, in contrast to a patent, which protects an idea and its implementation. The expression must be in some retrievable form such as handwriting, set in type, recorded on magnetic tape or other storage medium. Copyright covers the expression in literary or musical works, computer programs, video or motion pictures, sound recording, photographs, and sculpture.
- The owner of the copyrighted work has the exclusive right to control copying, adaptations, and distribution of copies, public performances and public displays.
- 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.
- Trademark: A trademark is a word, name, symbol or device used by someone to identify their goods and distinguish them from others.
- Classification of Intellectual Property
Intellectual property is classified into one of three categories based upon the source of support.
- The intellectual property is unrelated to the individual's employment responsibility and has been developed as a result of an individual's efforts on his or her own time with no University and System support and no use of University and System facilities.
- The intellectual property is related to the individual's employment responsibility or has resulted either from activities performed by the individual on University time or with the support of state funds or from use of University and System facilities.
- The intellectual property has been developed as a result of research supported by a grant or a contract from:
- the federal government or associate agency;
- a non-profit or for-profit nongovernmental entity; or
- a private gift to the System.
- General Policy
- This policy shall apply to persons employed by the U.T. System and UTSA, to anyone using System and UTSA facilities under the supervision of System and University personnel, to undergraduates, to candidates for masters and doctoral degrees, and to postdoctoral and predoctoral fellows.
- Except for intellectual property included in sections 3 and 4 below, this policy shall apply to and the Board of Regents and UTSA may assert ownership in intellectual property of all types (including, but not limited to, any invention, discovery, trade secret, technology, scientific or technological development, and computer software) regardless of whether subject to protection under patent, trademark, copyright, or other laws.
- The Board of Regents and UTSA will not assert an interest in scholarly or educational materials, art works, musical compositions and dramatic and nondramatic literary works related to the author's academic or professional field and authored by students, faculty, and nonfaculty researchers. The Board retains certain rights in these works as set forth in the Policy and Guidelines for Management and Marketing of Copyrighted Works. The Board normally shall assert ownership in software as an invention; however, original software which is content covered by this section or that is integral to the presentation of such content, shall be owned as described in this section.
- The Board shall have sole ownership of all intellectual property that it commissions or that is produced as a work for hire for the University or System. Except as may be provided in a written agreement approved by the President of UTSA and the Chancellor, the provision in the Regent's Rules and Regulations, Part Two, Chapter XII, subsection 5.23 relating to division of royalties shall not apply to intellectual property owned solely by the Board pursuant to this section.
- Any person who creates intellectual property that is subject to this policy, other than on government or other sponsored research project where grant agreements provide otherwise, should have a major role in the ultimate determination of how it is to be made public, whether by publication, by development and commercialization after securing available protection for the creation or both.
- The System, with the cooperation of UTSA, will provide review and management services for patentable inventions as well as other intellectual property either by its own staff, through a related foundation, or by other means. When legal assistance is needed at UTSA regarding intellectual property, contact the Office of the Vice President for Business Affairs (VPBA) who will coordinate with the Office of General Counsel (OGC) for legal advice.
It is the basic policy of the System that intellectual property be developed to serve the public interest. This objective will require development and commercialization by exclusive licensing, but the public interest may best be promoted by the granting of nonexclusive licenses for the period of the patent. These determinations will be made in accordance with the administrative procedures in this policy and in the Regent's Rules and Regulations and with the approval of the Board.
Neither the facilities nor the resources of System or UTSA may be used to:
create, develop or commercialize intellectual properties unrelated to an individual's employment responsibilities; or,
further develop or commercialize intellectual properties that have been released to an inventor, except that the President of UTSA and the appropriate Executive Vice Chancellor or Vice Chancellor may approve where System retains an interest under the terms of the release.
- Internal Procedures at UTSA Regarding Intellectual Property
- The faculty/staff member will complete a confidential disclosure of the intellectual property (IP) on the form provided by the VPBA office.
- The IP form is submitted to the UTSA Intellectual Property and Advisory Committee and VPBA. After its review, the Committee will submit its recommendation to proceed to the Provost (if IP concerns a faculty member) and VPBA.
- The VPBA, after receiving the Provost's recommendation, will confer with the President and make a decision whether to proceed with the process.
- If UTSA wants to pursue the patent application, VPBA will recommend that it retain outside legal counsel for a patentability search, with OGC's approval.
- OGC will contact outside legal counsel to complete a patent search.
- When the patent search is completed, outside legal counsel will verbally share the results with the inventor and VPBA.
- If VPBA recommends to proceed with the patent application process, UTSA will work with outside legal counsel on the application process.
- Other Policy Provisions
Additional policy provisions on intellectual property as they relate to property rights and obligations, royalty allocation, equity interests, business participation, reporting, legal documents relating to intellectual property and income are found in Regent's Rules and Regulations, Part Two, Chapter XII, Sections 3-11.