UT Southwestern recognizes that through appropriate intellectual property management and technology transfer arrangements, the results of research can be made available for the good of the public at large and, in some instances, assist the state in commercial development and expanding its economic base.
In accordance with the policies of the UT Board of Regents and UT Southwestern, intellectual properties are exploited and faculty and staff inventors are eligible for financial rewards resulting from the licensing of intellectual properties.
The UT System Intellectual Property Policy is found in the Regents' Rules, Part Two, Chapter XII. Other UT System guidelines are found in the document entitled Policy and Guidelines Relating to Intellectual Property License Agreements With Private Entities.
UT Southwestern's policies and actions with regard to intellectual property are consistent with the Regents’ Rules and guidelines. Copies are available in the Office of Legal Affairs or Office of Technology Development.
2.12.1 Intellectual properties invented or developed by UT Southwestern faculty, staff, and students are owned by the UT System Board of Regents (Board), and as such, are assigned by the inventor(s) to the Board.
184.108.40.206 Faculty, staff, and students are required to disclose intellectual properties prior to public disclosure by filing a completed Intellectual Property Questionnaire, a copy of which is available from the Office of Technology Development, the campus office responsible for managing intellectual properties developed at UT Southwestern. UT Southwestern Handbook of Operating Procedure January 1998 Chapter 2 General Administrative Policies and Procedures
1. The Regents' Rules and this policy apply to all persons employed by UT Southwestern, to anyone using the facilities under supervision of UT Southwestern personnel, to undergraduates, to candidates for master’s and doctoral degrees, and to postdoctoral and predoctoral fellows.
2. The Board and UT Southwestern may assert ownership in intellectual property of all types (including, but not limited to, any invention, discovery, trade secret, technology, scientific or technological development, computer software, and audio and video works) regardless of whether subject to protection under patent, trademark, copyright, or other laws.
3. The Board and UT Southwestern shall 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, regardless of the medium of expression, as follows:
a. For students, professionals, faculty, and research authors: The Board and UT Southwestern shall not assert ownership of works covered by this section authored by students, professionals, faculty, and nonfaculty researchers. The Board and UT Southwestern encourages these authors to carefully manage their copyrights. The Board and UT Southwestern retains certain rights in these works as set forth in the Policy and Guidelines for Management and Marketing of Copyrighted Works;.
b. For software: The Board and UT Southwestern normally shall assert ownership in software as an invention; however, original software which is content covered by the above, or that is integral to the presentation of such content, shall be owned in accordance with that subsection.
4. Notwithstanding the provisions above, the Board and UT Southwestern shall have sole ownership of all intellectual property created by an employee who was hired specifically or required to produce it or commissioned by the Board and UT Southwestern. Except as may be provided otherwise in a written agreement approved by the president of UT Southwestern and the Chancellor, the provisions of 220.127.116.11 (3) of this Handbook, relating to the division of royalties shall not apply to intellectual property owned solely by the Board and UT Southwestern pursuant to this section.
18.104.22.168 The technology development staff reviews each disclosed invention and determines a strategy with regard to the intellectual property to maximize commercial potential and protect the University’s and the inventor(s)’s interests.
22.214.171.124 Upon a positive decision by the president, UT Southwestern will bear the expenses of protecting intellectual property by filing one or more United States and foreign patent applications, working through the Office of Legal Affairs with outside intellectual property counsel approved by the Texas Attorney General's Office in consultation with UT System and UT Southwestern Handbook of Operating Procedure January 1998 Chapter 2 General Administrative Policies and Procedures UT Southwestern. Faculty and staff must assist throughout this process to ensure getting the strongest protection possible.
It is the intent of UT Southwestern to transfer certain of its intellectual properties, invented or developed by UT Southwestern faculty, to commercial entities by license agreements. License agreements are negotiated by the technology development staff with the input and cooperation of the faculty and the Office of Legal Affairs. Final decisions rest with UT Southwestern.
126.96.36.199 Both exclusive and nonexclusive licenses may be granted, depending on the unique needs of the specific technology.
188.8.131.52 License agreements may yield a variety of different financial payments, which may include up-front license fees, milestone payments, minimum annual royalties, royalties, and equity.
184.108.40.206 Any arrangements with commercial entities must not undermine UT Southwestern's basic missions and must be carried out in a manner that does not place UT Southwestern or its faculty, staff, or students in a position of having or appearing to have a conflict of interest.
In addition, all license agreements must provide appropriate protection for UT Southwestern and its faculty, staff, and students. These protections include, but are not limited to, indemnification, restriction on use of name, grant-backs, limiting any restrictions on research and publication, and confidentiality.
2.12.3 Policy on Distribution of Royalties and Other Income Generated by Intellectual Property
1. Under the UT System Intellectual Property Policy (Regents' Rules, Part Two, Chapter XII, Subsection 5.23), UT Southwestern may distribute to the inventors up to 50 percent of royalty and other income generated from the commercialization of a technology after recovering costs of obtaining a patent or other appropriate intellectual property protection and licensing expenses.
UT Southwestern's policy sets forth the manner in which this income shall be distributed. This policy is subject to the current Regents' Rules.
2. UT Southwestern will deduct both the out-of-pocket (external) expenses of patenting and licensing and the actual internal costs incurred by the institution to provide intellectual property management and technology transfer services for the licensed intellectual property or properties from royalty and other income derived from the licensing of an intellectual property.
In UT Southwestern Handbook of Operating Procedure January 1998 Chapter 2 General Administrative Policies and Procedures addition, UT Southwestern may withhold a portion of the royalty and other income in order to meet future expected expense obligations based on reasonable revenue and expense projections. The remaining amount is the disbursable balance for each intellectual property.
Any royalty or other income withheld for payment of future expenses that are in fact not used for that purpose will be added to the disbursable balance. The payment of all disbursable balances held by UT Southwestern shall be approved on a case-by-case basis by the vice president(s) for legal affairs and technology development.
3. After deduction of these expenses and costs, UT Southwestern will distribute disbursable balances according to the following disbursement guidelines:
- 50 percent Inventor(s)
- 25 percent Inventor(s) laboratory
- 25 percent UT Southwestern
In the event that the generating laboratory no longer exists at UT Southwestern, all such laboratory income shall accrue to the institution.
4. UT Southwestern's retained 25 percent may be used by the institution for research, including the provision of intellectual property management and technology development services.
5. In a circumstance wherein a licensed technology was created by two or more persons, UT Southwestern shall distribute the inventor's share of income gained through each license according to the express written agreement of its inventors. Such agreement should clearly state in terms of percentages (or other similar manner) an income-sharing agreement mutually agreed upon by the named inventors. This information should be transmitted as a written agreement signed by all named inventors to the Office of the Vice President for Technology Development.
6. In the case of a license to a single entity of multiple technologies with multiple inventors, the inventors should provide the Office of Vice President for Technology Development with a similar written income sharing agreement. This agreement should clearly state in terms of percentages (or other similar manner) the income-sharing mutually agreed upon by the named inventors.
7. Inventors may change the terms of an income-sharing agreement at any time before March 1 of each year. Any change should be communicated in writing via a new income-sharing agreement signed by all named inventors and transmitted to the Office of Vice President for Technology Development.
8. In the event that two or more inventors are entitled to share income from the licensing of intellectual property and they cannot agree on an appropriate sharing arrangement, all such disputes shall be settled according to Chapter XII, subsection 5.35 of the Regents' Rules. UT Southwestern Handbook of Operating Procedure January 1998 Chapter 2. General Administrative Policies and Procedures
220.127.116.11 In the event that a licensed technology is jointly owned by the UT Southwestern and one or more other institutions, UT Southwestern will seek to recover its actual costs associated with providing intellectual property management and technology transfer services from total revenues under this policy.
18.104.22.168 Distribution of the inventor's share of income (and the inventor's laboratory share) shall be carried out once per year. Such disbursements shall be made within sixty days of April 1 of each year.
22.214.171.124 This policy became effective on June 1, 1996. All royalty or other income received by UT Southwestern after that date is subject to this policy.
2.12.4 Policy on Income Generated From the Sale or Licensing of Tangible By-Products of Research
126.96.36.199 Definition A tangible by-product of research is defined as any material generated by UT Southwestern research having the following characteristics:
1. The material is not covered by an issued patent or pending patent application
2. The license or sale agreement provides for the transfer of a specific quantity of material
1. Tangible by-products of research include, but are not limited to purified proteins or enzymes, cell-free extracts, monoclonal antibodies, or polyclonal antibodies.
2. Tangible by-products shall not include software, proprietary methodologies, reproducible expression vectors (including cloned genes), hybridoma cell lines, or transgenic animals.
In accordance with the Regents’ Rules, UT Southwestern shall deduct its out-of-pocket expenses associated with income derived from the sale, licensing, or other disposition of the tangible by-product of research. After deducting such expenses, UT Southwestern may recover the actual costs incurred by UT Southwestern to provide intellectual property management and technology transfer services for the licensed intellectual property.
No income generated through the commercialization of tangible by-products of research shall accrue to any employee of UT Southwestern. UT Southwestern Handbook of Operating Procedure January 1998 Chapter 2 General Administrative Policies and Procedures
After deduction of such expenses and costs, UT Southwestern will distribute income according to the following guidelines:
1. 100 percent to the generating laboratory up to a cumulative $10,000 in any disbursement year (ends March 31); then 75 percent to the generating laboratory, and 25 percent to UT Southwestern
2. If the generating laboratory is no longer at UT Southwestern, all income shall accrue to UT Southwestern
The handling of disbursements shall be in accordance with UT Southwestern’s Policy on Distribution of Royalties or other Generated income by UT Southwestern Intellectual Property.
188.8.131.52 Responsibilities of the Office for Technology Development
1. Negotiating all agreements exploiting intellectual property owned by Board for and on behalf of UT Southwestern
2. All income shall be deposited through the Office for Technology Development, where accounts relating to income and expense will be kept
3. Final determination of the application of this policy to specific technologies shall be made by the Vice President for Technology Development and Executive Vice President for Business Affairs.