Research: #1 in the 8 steps of technology commercialization

Inventorship is not the same as ownership. The Board of Regents of The University of Texas owns intellectual property or inventions if any of these circumstances is true:

  • The intellectual property or invention was created by an employee (faculty, researcher, staff, or student employee) within the scope of employment.
  • It was created on university time, with the use of university facilities or state financial support.
  • It was commissioned by the university pursuant to a signed contract, or it fits within one of the nine categories of works considered “works made for hire” under copyright law.
  • It resulted from research supported by federal funds or third-party sponsorship.

As set forth in Regents’ Rules, Series 90000, each inventor assigns his or her rights in the intellectual property created under any of these circumstances to the Board of Regents.

Special rules apply to copyright interests of scholarly or educational materials, artworks, musical compositions, and literary works related to the author’s academic or professional field. Per Regents’ Rules, Rule 90101, Part 2, Section 4, the Board of Regents will not assert an ownership interest in the copyright of such works (subject to certain exclusions such as work-for-hire and institutional projects). The Board encourages these creators to manage their copyrights.

Yes, both undergraduate and graduate students work on inventions at UT Austin under a wide variety of circumstances. With regards to ownership, policy for student research is the same as for any other UT inventor.

Ownership depends upon the employment status of the creators of the invention, their use of university facilities, and any agreement that may be in place between the university and the creator or his or her employer. It is possible for an invention to be jointly owned by the Board of Regents and a third party.

If the invention was created under a sponsored research or consulting agreement with a company, OTC will review that contract to determine ownership and other rights associated with the contract. If the technology is jointly owned with another company, OTC will work with the company to determine the appropriate patenting and licensing strategy.

Should the technology be jointly owned with another academic institution, the university will usually enter into an Inter-Institutional Agreement that provides for one of the institutions to take the lead in protecting the invention, licensing it, and allocating patent expenses and licensing revenues.

Ownership rights for contributions made by scientists visiting the university will be governed by the Visiting Scientist Agreement between the university and the scientist or the scientist’s employer. The Visiting Scientist Agreement will generally grant the university ownership of the invention.

Yes. However, the ability to get legal protection for university inventions may be affected if publication occurs prior to filing a patent application. Accordingly, for inventions that may have commercial potential, inventors are encouraged to submit an invention disclosure at least 60 days in advance of a publication (presentation, lecture, poster, abstract, website description, research proposal submission, doctoral dissertation/master’s thesis, publication, or other public presentation).

The sponsor’s rights are determined by the sponsored research agreement, subcontract, or other agreement that governs the relationship. Sponsored research agreements are administered by the Office of Sponsored Projects or the Office of Industry Engagement. While the university usually retains ownership of the inventions resulting from sponsored research, industrial sponsors are generally allowed a limited time to negotiate a license to those inventions. Upon receipt of an invention disclosure that indicates industry sponsorship, OTC reports the invention to the identified sponsors.

Affiliates’ rights are dictated by the terms of the industrial affiliate program and any related agreements. If the funding is provided into a gift account, then UT policy is that the industry affiliate will not receive any rights to the inventions in consideration for that funding. In certain other circumstances, industry affiliates may be granted non-exclusive rights to the research results.

The Bayh-Dole Act requires the university to protect and commercialize the discoveries, submit progress reports to the funding agency, give preference to small businesses that demonstrate sufficient capability, and share any resulting revenues with the inventors. If the university does not choose to commercialize the invention, the government can patent the invention.

Under Bayh-Dole, the federal government is granted the right to use any invention resulting from federal funding for government purposes. OTC will report inventions to identified funding agencies.

Yes, but in either case a Material Transfer Agreement (MTA) must be in place prior to the transfer. MTAs are handled by the Office of Sponsored Projects.

Not necessarily. Inventions developed by a UT Austin employee under a bona fide outside employment or consulting agreement with a third party do not belong to the Board of Regents, as long as such consulting:

  • Is properly authorized under UT Austin outside-employment rules
  • Does not use any of the following:
    • UT Austin funding or resources (other than incidental use)
    • Intellectual property of UT Austin or UT System (unless authorized to do so under a bona fide license to such third party)
    • Any of UT Austin’s staff, students, postdoctoral fellows, or predoctoral fellows

The University of Texas takes conflict of interest seriously. Before engaging in outside employment with a potential for conflict of interest, consult the Regents’ Rules and applicable state laws. The “Research” section of the UT Austin website has a comprehensive list of conflict of interest guidelines.

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