Faculty Handbook
1. Philosophy. University research often results in the discovery or invention of new technology, although invention for commercial purposes is not the duty of anyone engaged in university research. However, when such inventions are developed, the University desires that both society and the University utilize them to the greatest possible benefit. Research and scholarly activities also may lead to the publication of copyrightable material, and the University seeks to ensure that any such material in which the University has an equity interest is utilized in a manner consistent with the public interest. Accordingly, when appropriate, the University will protect its intellectual property rights in technology and use diligent efforts to make productive use of that technology for the good of the public, the inventor, and the university. When this result is best achieved by the attraction of private risk capital, by the licensing of intellectual property rights to private industry, or by licensing copyrightable material, the University may realize income. However, financial return is secondary and incidental to the public service aspect of developing the technology for public use.
2. Definitions. The following terms are important for purposes of expressing the University's policy on intel1ectual property:
a. "Business participation" means the participation of a person (as defined below) in any activity whose purpose is the commercial development or exploitation of intellectual property developed by that person and owned by the University. Such participation includes, but is not limited to, equity interest, a consulting relationship, service on a board of directors or similar body, royalty interest, stock ownership, or any similar relationship.,br> b. "Commissioned project" means, with respect to copyrightable material, a project in which a principal objective is the creation of copyrightable material and in which the University provides funds or resource beyond normal University support, office space, access to libraries, laboratories, or studios, and faculty development leave unrelated to the project to be normal University support.
c. "Copyrightable material" means any original work of authorship subject to copyright protection under Title 17 of the United States Code, as it now exists or as it may be amended.
d. "Intellectual property rights" means those rights of ownership recognized by law in intellectual creations, including but not limited to, patents, know-how, trade secrets, and copyrights.
e. "Inventor" means any person (as defined below) who discovers or invents technology (also as defined below).
f. "Net income" means gross revenue derived by the University directly as a result of the transfer of technology, less directly assignable expenses attributable to protecting intellectual property and effecting the transfer of the technology for public use.
g. "Person" means any student attending an institution under the governance of the Board of Regents of the University of Houston System, whether part-time or full-time, and any employee, whether faculty or staff and whether part-time or full-time.
h. "President" means the President or any such person as the President might designate to carry out the functions of this policy.
i. "Technology" means discoveries, innovations, or inventions that are subject to protection of the patent laws of the United States, and other intellectual property rights in such discoveries, innovations, or inventions, whether or not patentable, including, but not limited to, know-how, trade secrets, and computer software.
j. "University" means the Board of Regents of the University of Houston System and the institutions under its jurisdiction, individually and collectively.
k. "University research" means all research conducted in the course and scope of an inventor's employment with the University, including work on a research agreement with an external sponsor, or research conducted by any other person involving University resources.
1. Policy.
a. The University owns all intellectual property rights in technology which is conceived or reduced to practice by any person engaged in University research or otherwise in the course and scope of the person's employment, subject only to the following exceptions:
i. In rare circumstances, the University may, in a contract for sponsored research, agree that the sponsor or other parties will own the intellectual property rights in the technology resulting from such research.
ii. The University may accept research agreements which, under statutory law, vest intellectual property rights in the technology resulting from such research in an agency of government.
iii. The University may, after consideration as required by this policy, waive intellectual property rights in technology in favor of the inventor. In the event the University fails to seek patent protection of the technology within six months after disclosure of the technology to the University by the inventor, the University will be deemed to have waived its rights in favor of the inventor.
b. Every person participating in University research shall execute a patent agreement, a copy of which is attached to this policy.
2. Disclosure of Technology. Carefully planned methods of transferring University-owned technology will best accomplish the University's objectives stated in the "Philosophy" paragraph of this Policy. However, the University can only accomplish those objectives if inventors promptly disclose technology. Premature publication of information pertaining to discoveries and inventions or delayed prosecution of patent protection can seriously damage the University's ability to obtain patent protection. Therefore, if a person conceives or reduces to practice any technology, that person must disclose such technology to the University as soon as practicable after the date of first conception or discovery. Certain research agreements may require disclosure, and in such a case, a person shall disclose technology in accordance with the agreement. To make a proper disclosure, the inventor must prepare, sign, and date a patent disclosure in the form promulgated by the University. The inventor must also include drawings, sketches, and other pertinent data to show the principle of the technology.
3. Patent Assignment and Execution of Documents. Whether or not a person makes a disclosure as described in paragraph 2 above, a person shall execute patent assignments or any other documents required for the acquisition and protection of University-owned intellectual property rights, including those documents necessary to enable the University to fulfill requirements imposed by agreement or by law.
4. Intellectual Property Committee. The University President shall appoint a standing Intellectual Property Committee. In addition to the responsibilities described in paragraph 5 below, this committee will advise and recommend to the President:
a. Guidelines and procedures for implementation of this policy;
b. Proposed amendments to this policy; and,
c. Such other matters as the president directs.
5. Action after Disclosure.
a. The Intellectual Property Committee shall review the technology and recommend to the President that the University adopt one of the following actions with respect to the technology:
i. That the University institute action to acquire patent protection, and if so, whether to pursue such action itself or to refer the technology to a patent management agency. In either case, the committee shall also recommend a division of net income between the inventor and the University.
ii. That the University transfer intellectual property rights in the technology to the research sponsor if such transfer is required by a research agreement.
iii. That the University waive ownership in the intellectual property rights in the technology in favor of the inventor and release the inventor from further responsibilities with respect to the technology.
b. After reviewing the committee's recommendation and such other technical consultation as is appropriate under the circumstances, the President will determine the Uuniversity's course of action with respect to the technology.
6. Equity Considerations.
a. The University recognizes that an equity in technology remains with the inventor, and the net income derived from a transfer of the technology will be shared between the University and the inventor.
b. Unless the Intellectual Property Committee recommends, and the President and Chancellor adopt, a different distribution warranted by the circumstances, the total net income derived from the transfer of technology shall be distributed as follows:
i. Of the first $100,000, 50 percent to the inventor and 50 percent to the University.
ii. Of the next $100,000, 40 percent to the inventor and 60 percent to the University.
iii. Of the next $100,000, 30 percent to the inventor and 70 percent to the University.
iv. Of all other net income in excess of $300,000, 25 percent to the inventor and 75 percent to the university.
7. Publications. Premature publication of information pertaining to technology could seriously damage the University's ability to obtain patent protection in foreign countries. Accordingly, an inventor may not seek publication of any information pertaining to disclosed technology until the earlier of (1) 90 days after disclosure is made in accordance with section 2 above, or (2) the University grants permission for such publication. This requirement is intended only to affect the timing for publication of research findings and shall not be used to infringe the academic freedom of any person.
1. Policy
a. The terms of a sponsored research or other agreement may determine the ownership of all copyrightable material which a person creates in the course of or pursuant to such an agreement. If the agreement does not contain terms relating to the ownership of copyrightable material, the following provisions of this policy will govern ownership of the material.
b. Only a commissioned project shall be a "work made for hire", and accordingly, the University shall own all copyrightable material which a person creates as a commissioned project. If a question arises as to whether a person created copyrightable material pursuant to a commissioned project, the Intellectual Property Committee, after investigation into the appropriate facts, shall formulate a recommendation for consideration by the president. In cases of a commissioned project, the person who created the copyrightable material shall execute an assignment to the university in any copyrights or registration that may obtain.
c. The author or creator of all other copyrightable material not governed by the preceding two paragraphs shall own such material notwithstanding any employment relationship with the University.
2. Equity Consideration.
a. The University recognizes that, in cases in which the person who created copyrightable material assigns rights to the University, an equity in the material remains with the creator, and in such cases, unless the Intellectual Property Committee recommends, and the President and Chancellor adopt, a different distribution warranted by the circumstances, the total net income derived from the copyrightable material shall be distributed as follows:
i. Of the first $100,000, 50 percent to the inventor and 50 percent to the University.
ii. Of the next $100,000, 40 percent to the inventor and 60 percent to the University.
iii. Of the next $100,000, 30 percent to the inventor and 70 percent to the University.
iv. Of all other net income in excess of $300,000, 25 percent to the inventor and 75 percent to the university.
b. In determining net income, the University shall deduct from gross royalty or other income documented expenses such as production costs, subventions, and litigation which may be incurred in enforcing or defending the copyright or in the licensing of the copyrightable material. The University will credit to the creator prior to income distribution any documented nonreimbursed expenses incurred in the course of developing the copyrighted material.
1. Policy
a. The University recognizes that a person may have an opportunity to participate in the commercial development of University-owned intellectual property developed by the person. The University does not discourage a person from engaging in business participation, but such participation must conform to University policy and state and federal laws.
b. In particular, a person shall not engage in business participation if such participation would violate Board of Regents' Policy 07.09, article 6252-9b, Texas Revised Civil Statues, section 51.912, Texas Education Code, or any other state or federal law or regulation which controls such participation.
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