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This Policy Statement answers
fundamental questions about intellectual property, such as What is it?
To whom does this Policy apply? Who owns intellectual property created
by System employees and under what circumstances must the owner share
royalties? It will also answer other questions like How does System identify
and evaluate intellectual property? May System employees own equity interests
in companies that commercialize Board intellectual property? Who is responsible
for obtaining patent protection? Who must approve license agreements?
If you have a question about intellectual property that is not answered
here, you may refer to the Official Policy in Series 90000: Intellectual Property of the Regents' Rules or contact the Intellectual Property Section at the U.T. System Office of General Counsel.
What
is intellectual property subject to this Policy?
This Policy covers all types
of intellectual property. The following examples are not exhaustive: the
Policy applies to other types not listed here, regardless of whether they
may be protected by patent, copyright, trademark, trade secret or other
law.
- Inventions
- Discoveries
- Trade secrets
- Trade and service marks
- Writings
- Art works
- Musical compositions and
performances
- Software
- Literary works
- Architecture
To whom does
this Policy apply?
- All System employees
- Anyone using System facilities
under the supervision of System personnel
- Undergraduate and graduate
students
- Postdoctoral fellows
- Medical or other residents
working at non-System facilities
Ownership:
The Starting Point
This is the starting point
for understanding this Policy: The Board owns the intellectual property
created by its employees under the conditions stated below.
When does
the Board own employee-created intellectual property?
Any one of these circumstances
will result in Board ownership:
- If intellectual property
is created by an employee within the scope of employment; or
- If intellectual property
is created on System time, with the use of System facilities or state
financial support; or
- If intellectual property
is commissioned by the System or a component institution -
- If intellectual property
results from research supported by Federal funds or third party sponsorship.
When does
an employee own intellectual property?
- If it is unrelated to the
employee's job responsibilities and the employee made
no more than incidental use of System resources; or
- If it is an invention that
has been released to the inventor in accordance with this Policy; or
- If the intellectual property
is embodied in a professional-, faculty-, researcher- or student-authored
scholarly, educational (i.e. course materials), artistic, musical, literary
or architectural work in the author's field of expertise (from here
on, a "scholarly work"), even though such a work may be within
the scope of employment and even if System resources were used -
- UNLESS
it is a scholarly work (i) created by someone who was specifically
hired or required to create it or (ii) commissioned by the System
or a component institution of System, in either of which cases,
Board, not the creator, will own the intellectual property.
Who are professionals
and researchers?
The use of the terms "professionals"
and "researchers," together with faculty members and students,
is intended to encompass all those individuals who routinely create scholarly
works.
For example, if a library administrator
writes a book about Texas History, her field of expertise, the Board will
not assert ownership of the book. Similarly, if an employee of one of
our health institutions who does not have students writes a scholarly
journal article, the Board will not assert ownership of the work even
though the author is not a "faculty" member.
In the case of educational
materials that involve significant institutional resource contributions,
the Board retains rights, for example, to use the work and to recover
its investment. And in some cases, (see below) the Board may be a joint
author and owner of such works.
What
is considered to be within the scope of my employment?
Works related to an employee's
job responsibilities, even if he or she is not specifically requested
to create them, will belong to the University as works-for-hire. A copyright
work is related to your job responsibilities if it is the kind of work
you are employed to do and you do it, at least in part, for your use at
work, or for use by fellow employees, your employer or your employer's
clients. The work should be performed substantially at work using work
facilities, but your use of personal time or other facilities to create
the work will not change its basic nature if it is related to your job
as described above. Works that have nothing to do with job duties will
remain the property of the employee, so long as he or she makes no more
than incidental use of University facilities.
For example, if your job is
"Safety Engineer," a software program that you create on your
own initiative to run on each employee's computer to show a graphic of
their nearest fire exits is related to your job duties and will belong
to the University, even if no one asked you to create it and you did some
of the programming at home on your own computer. A program that you create
that does not relate to your job, that neither you nor others use at work,
and that you created on your own time would belong to you.
How do I know
if I have been "specifically hired or required to create" a
work?
In some cases this will be
clear from your job description. For example, faculty members are required
by their institutions to create certain materials for use by their departments.
In other cases a faculty member may be hired to create specific materials,
such as online course materials for a specific class or department. In
such a case, Board will own the copyright in the materials and any other
resulting intellectual property.
There are several ways to clarify
circumstances that are confusing or are exceptions to the more general
rules.
- Component institutions may
designate required materials in their Handbooks of Operating Procedures,
or elsewhere.
- Professionals, faculty members,
researchers or students employed to create specific intellectual property,
or hired to create intellectual property generally, should review and
sign a single-page acknowledgment to clarify ownership
of the works they create. The acknowledgment also applies to other employees
who are hired to create intellectual property and to whom the royalty
sharing provisions may not apply as discussed below.
- In general, it's always
better to ask questions about the ownership of intellectual property
before its creation to avoid misunderstandings.
May a work
be jointly owned by an employee and the Board?
This is very likely to be the
case for works protected by copyright such as multimedia courseware products
and distance learning materials. Anyone who contributes the kind of expression
protected by the law is a joint author if the contribution is intended
to be part of an integrated whole. The University's employees who work
as programmers, graphic artists, video technicians, script writers, etc.,
create just this kind of expression. When added to a faculty member's
contribution, the result is a jointly-authored work, owned by the University
and the faculty member. There can be other author-owners as well. The
article, Who Owns What? explains this
more thoroughly.
When must
the owner of intellectual property share royalties or other benefits from
commercialization?
In the vast majority of cases,
the owner, whether Board or an employee, will retain all royalties or
other benefits from any commercialization of intellectual property. These
are the exceptions:
- An employee owner must share
benefits with the Board
- from commercializing
a Board invention released to him or her; or
- if the work embodying
the intellectual property required significant resource contributions
from System or a component to create or develop the intellectual
property. In this case, the parties should execute an agreement
regarding the sharing arrangement before starting the project that
will result in creation of the intellectual property.
- Board will share royalties
from commercialization of intellectual property it owns if the work
is an invention, discovery, trade secret, trade or service mark, or
software, regardless of how protected
- UNLESS
the employee creator was hired specifically or required to create
the intellectual property or the work was commissioned by System
or a component institution of System, in either of which cases the
royalty-sharing provisions of this Policy shall not apply and the
owner shall retain all benefits from commercialization.
What should
I do if I think I have created intellectual property subject to the Policy?
As noted above, intellectual
property includes works protected by copyright, patent, trade secret
and other laws, but we do not handle all intellectual property in the
same way. Scholarly works are handled differently from inventions, discoveries
and ideas because our concerns about protecting them are different, as
explained below.
Inventions:
The Board will normally own all inventions created by employees within
the scope of their employment and must be sure that it can legally protect
the invention if it hopes to license it. Since publication of the idea
embodied in the invention bars the filing of a patent application in every
country in the world except the United States, and starts a one-year clock
running on the right to file a patent application in the United States,
publication is a very important event - one the Board would like to know
about before it happens! Because of these concerns,
the Policy requires that inventors disclose their inventions to their
component institutions' Intellectual Property Advisory Committees well
before they have submitted any information about the invention for publication,
made any public disclosure or even a private disclosure to a commercial
entity.
Each component institution
may establish guidelines for this process of disclosure, review and evaluation
of inventions. Check your institution's Handbook of Operating Procedures.
The Intellectual Property Advisory Committee reviews disclosures to decide
whether the Board should assert its interest in an invention or release
the invention to the inventor. Sometimes this process may take some time,
so that occasionally, the inventor may wish to file a patent application
while the Committee's review is proceeding. If the institution authorizes
such a patent application and the Board decides later to assert its interest,
the inventor will be reimbursed for patent expenses.
Scholarly works:
Scholarly works are owned by their authors if the author is a professional,
faculty member, a non-faculty researcher or a student. Their scholarly
works do not have to be disclosed to or reviewed by the institution. Scholarly
works are usually protected by copyright rather than patent. Copyright
protects works of authorship from the moment of their fixation in a tangible
medium of expression, that is, instantly and automatically. As a result,
the rigorous institutional review given to possibly patentable inventions
is unnecessary to protect an interest in copyright works.
Our main concerns with scholarly
works owned by professionals, faculty, non-faculty researchers and students
are to allocate and recover resources that may be contributed to the creation
of such works. If a project involves the use of significant institution
resources, the creator and the institution should
agree before the project begins on use of facilities, allocation of
rights to use the work, and recovery of expenses and/or sharing of benefits
from commercialization of the work.
Who secures
patent or other legal protection?
If intellectual property belongs
to the Board, System will secure patent or trademark protection. Copyrights
are usually handled at the component institution as they do not require
a lot of time or expense. Individuals who own a copyright work or invention
must secure protection themselves, at their own expense.
Who may take
an equity interest in or serve as an officer, director or employee of
a company that commercializes Board intellectual property?
Although the Board is free
to take an equity interest in a licensee as partial or full consideration
for the license of Board intellectual property, it could be a conflict
of interest for an employee of System or a component institution to also
be an employee, officer, director or stockholder in a corporation or other
business entity that licenses Board intellectual property. Because of
this possible conflict of interest, our State laws provide a special procedure
for considering whether in a particular case, conflict is likely. System
or component institution employees may hold equity interests in licensees
or be employees, officers or directors only after approval by the chief
administrative officer of the component institution, the Executive Vice
Chancellor for Health Affairs or the Vice Chancellor for Academic Affairs,
the Chancellor, and Board.
Approval and
Execution of Documents
Patent, technology and software
license agreements and other agreements that convey an interest in Board
intellectual property are reviewed by the Office of General Counsel and
executed by the component institutions. The Executive Vice Chancellor or designee's approval is only required
for agreements that involve amounts of money greater than $1,000,000.
The University of Texas System
Intellectual Property Policy contains two provisions that do not apply if the individual who created the
property was required or hired specifically to create it, but there may
be times when it is unclear to either the employee, the employer or both,
whether an employee was required or hired to create intellectual property.
The purpose of this acknowledgment is to help identify individuals who
have been required or hired to create intellectual property, discuss the
application of the Rules with them, and record that they understand how
the Rules will apply.
There are two circumstances
likely to cause confusion:
- Professional, faculty, researcher
or student employees required or hired specifically to create the kinds
of works they would normally own under Series: 90101 - General Rules for Intellectual Property (scholarly, educational,
artistic, musical, literary or architectural works).
- Any employee required or
hired specifically to create the kinds of works for which royalty-sharing
incentives are usually provided under Series 90102: Property Rights and Obligations (inventions, discoveries,
trade secrets, trade and service marks, and software).
University may discuss and
execute this acknowledgment with these two types of employees and any
other employees in similar circumstances where confusion may be likely.
I am being required/hired to
create works embodying intellectual property. The ownership of and benefit
from such intellectual property is governed by the University of Texas
System Intellectual Property Policy, the Plain English Version of which
I have read and understand.
I understand that any intellectual
property I will create that is within the scope of my employment is a
work for hire and the Board will own such intellectual property
pursuant to Series: 90101 - General Rules for Intellectual Property.
Further, since I am being hired specifically to create intellectual property,
the royalty-sharing provisions of the Intellectual Property Policy shall
not apply to my works and the Board will retain all proceeds
from any commercialization of the works I create, also in accordance with Series: 90101 - General Rules for Intellectual Property.
_________________________
Signature
_________________________
Printed Name
_________________________
Title
_________________________
Witness
_________________________
Date
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