|Policy Name:||Intellectual Property (Continued)|
|Date Passed:||12/02/1987; Amended 02/15/2006|
|Last Reviewed:||March 2009|
|Review Next:||March 2011|
The Texas Woman's University
Policy on Intellectual Property
Part 4 - Commercial Development
It has long been acknowledged that the primary functions of a university are education, research, and public service. It is in the context of public service that TWU supports efforts directed toward bringing the fruits of TWU research to public use and benefit.
In many cases, mere publication of research results will be sufficient to transfer TWU research to the public. In other cases, it is necessary to encourage industry, by the granting of license rights, to invest its resources to develop products and processes for use by the public.
4.1.1 Commercialization - General
The ADR may pursue the licensing of technology selected for commercial development by the IPC. This pursuit may consist of researching the market for the technology, identifying third parties to commercialize it, entering into discussions with potential licensees, developing a business plan, negotiating appropriate licenses or other agreements, monitoring progress, and distribution royalties to the inventors/authors in accordance with TWU royalty policy. When it is appropriate to do so, TWU may accept an equity position in lieu of cash royalties.
4.1.2 Inventor/Author Assistance
With a few exception, the support and cooperation of the inventor/author is critical to licensing success.
4.1.3 Inventor/Author Owned Intellectual Property
TWU faculty, staff, and students who wish to pursue the development of their independently owned technology may offer such intellectual property to TWU by submitting an Intellectual Property Disclosure Form. The IPC will evaluate the commercial potential and determine whether or not the technology will be accepted for licensing. Acceptance for licensing by the IPC will involve assignment of the technology to TWU under an Assignment/Royalty Sharing Agreement.
Faculty, staff, and students are equally free to choose some other mechanism for commercializing their independently owned intellectual property, but prior to such commercialization shall make sure that the technology does not fall under the terms of a sponsored research or other agreement, constitute a work-for-hire, or result from significant use of funds or facilities administered by TWU. If any of these conditions might apply, the inventor/author shall request from the IPC an appropriate license to exercise such rights or a waiver of TWU's rights as set forth in this PART 4.
Once an Intellectual Property Disclosure Form disclosing an invention is submitted, the IPC typically will meet with the inventor(s) as a first step in evaluation. In many cases, contact with industry will be made a part of the evaluation process.
If the IPC concludes that the intellectual property has a good possibility of being licensed and that potential royalty returns are sufficient to justify patenting and licensing expenses, an Assignment/Royalty Sharing Agreement will be executed with the inventor(s) and commercialization will proceed as described in this PART 4.
4.2.2 Sponsored Programs
If the invention arose from a sponsored research project, the ADR will file for a patent and negotiate an appropriate license consistent with the terms of the contract, provided that royalty terms justify the expense or that funds for filing have been provided under the research agreement.
4.2.3 Waiver of TWU Rights
When it has the discretion to do so, TWU may (if requested by the inventor) "stand aside" in those situations when it would enhance the transfer of technology to the public, when it is consistent with TWU's obligations to third parties, and when it does not involve a conflict of interest as set forth below. By "standing aside," TWU agrees not to exercise its contractual rights to the technology, clearing the way for the TWU inventor to seek ownership.
In the case of federal agency sponsorship, the inventor may directly petition the agency for a release of rights to himself or herself. However, federal research agreements are generally subject to a uniform patent law which provides that universities take title to resulting inventions subject to certain obligations concerning exploitation in the public interest, federal approval of any assignment of ownership, preferences for licensing, the retention by the federal government of certain license rights, and march-in rights. Decisions by federal sponsors to permit individual inventors to acquire ownership are generally made on a case-by-case basis with the federal government retaining for itself those rights previously discussed.
In the case of industrial sponsorship, TWU will seek approval of the sponsor prior to releasing its ownership rights in favor of the inventor.
4.2.4 Licensing of TWU Rights to Inventors
TWU faculty, staff, and student inventors may also request a license to commercially develop their TWU-owned inventions when such licensing would enhance the transfer of the technology, when it is consistent with TWU's obligation to third parties, and when it does not involve a conflict of interest.
4.2.5 Conflict of Interest of Commitment
Any of the following factors may signify a conflict of interest which will be taken into account prior to waiving or licensing TWU's rights to inventors under this Section 4.2 or to authors under Section 4.3: (1) an adverse impact upon TWU's educational responsibility to its students; (2) an undue influence on the inventor's/author's employment commitment to TWU in terms of time or direction of effort; or (3) a detrimental effect on TWU's obligation to serve the needs of the general public. In order to minimize conflicts of interest, TWU will not accept equity in a start-up company as royalty if the inventor/author also holds an equity or founder's stock position.
4.3.1 Commercialization by the IPC
Copyrightable works owned by TWU are normally licensed through the IPC except where other arrangements are made in accordance with this policy. Copyrightable material not owned by TWU also may be licensed through the IPC when submitted under an Intellectual Property Disclosure Form to the IPC by its author and accepted for licensing.
Computer software in which TWU acquires rights may be either patented or copyrighted and made available by TWU for commercial purposes through the IPC under various forms of copyright or patent licenses. Authors will share in royalties earned from licensing as further set forth in this policy.
This policy does not define commercialization and ownership rights with regard to video works produced through use of TWU facilities or those which may be specially commissioned by a department or laboratory within TWU. Video works developed pursuant to an agreement will be subject to the terms of that agreement. The disposition of rights.
4.3.2 Waiver of TWU Rights to Authors
The authors may, with the agreement of their department head or laboratory director and of all their coauthors, request that TWU (through the IPC) waive any ownership or other rights it acquires or may elect to acquire under a sponsored research or other agreement to the authors. The waiver of rights under this section shall be subject to TWU's Conflict of Interest and Commitment policies under Section 4.2.5.
Federal research agreements presently vary widely with respect to rights in copyrightable technical data and computer software; but, in general, the universities have the right to copyright and to control distribution of most materials. Several major agencies retain a large degree of control over computer software and will relinquish control only under limited circumstances.
Industrial or commercial sponsors who acquire exclusive licenses to software usually will not release rights to authors. However, under most sponsored research agreements, software normally is licensed on a nonexclusive basis (in which case a nonexclusive license to the authors is not necessarily precluded).
Ownership of unobligated software (such as that developed with TWU internal funds), upon the request of its authors and with the necessary approvals as provided in this policy, may be waived to the authors in those cases where effective technology transfer and the public interest would be served TWU may, where it is deemed necessary, place qualifications on such waivers, such as a right for TWU use of the software, royalty sharing, and march-in rights.
4.3 3 Other Forms of Author Control
Where consistent with TWU's obligations to third parties, TWU faculty, staff, and student authors (with the agreement of their laboratory director or department head and all of their co-authors) may request a license from the IPC to commercially develop their TWU-owned works, may request to have the works openly distributed through royalty-free licenses, or may request that the works be placed into the public domain.
Authors may request that otherwise copyrightable works, including computer software, be placed in the public domain if such action will promote widespread use or, for example, as means to establish a new standard such as a computer operating system.
In responding to a request for public domaining, TWU will weigh the advantages of improved access, the complexity of the work and whether it is ready for effective public use, whether its quality can be maintained, and the authors' reasons for seeking this mode of dissemination.
Licensing to Authors
Authors may request control of the copyrighted material through a grant of commercial license rights.
Consistent with the public interest, TWU may grant the request for author control but with the option for TWU to retain title to the work, the right to use it for internal purposes, a right to the payment of appropriate royalties, and the right to withdraw such rights and controls in three years if the authors have not achieved effective dissemination as agreed. In addition, such arrangements will be subject to TWU's Conflict of Interest and Commitment policies as stated in Section 4.2.5.
When requests are related to major projects that typically involve multiple authors and long development periods, the most effective course for dissemination will require discussion and special negotiation with the IPC.
TWU will respond to author requests made under this policy within 90 days. However, in those cases where the world (generally software) is not sufficiently developed to allow proper assessment, TWU may require additional development prior to responding to an author request.
4.4 Trade and Service Marks
Trade and service marks owned by TWU are to be licensed through the IPC.
4.5 Tangible Research Property
It is TWU policy that any commercial distribution of TWU-owned TRP be handled only through the IPC unless arrangements are made for independent development by the inventors/authors. Software should be submitted to the IPC in the same fashion as a patentable invention, for which the first step is preparation and submission of an Intellectual Property Disclosure Form.
If TRP developed by TWU as a result of research activities is to be distributed to outside users for commercial purposes, the distribution agreement must contain provisions negotiated by the IPC covering the terms under which the property may be used, limits on TWU's liability for the TRP or products derived therefrom, and other conventional license agreement terms, including those relating to any intangible property rights (such as patents) which also may be associated with the use of the tangible property.
4.6 Royalty Distribution - General
Royalty income received during the preceding TWU fiscal year for a technology license shall be distributed once annually as follows:
- Deduct 15% from Gross Royalty Income. This deduction is directed toward covering the expenses of the Office of Research and Grants Administration.
- Deduct out-of-pocket costs and, in some cases, a reserve, to arrive at Adjusted Royalty Income. Out-of-pocket costs are direct assemble expenses to a specific case such as patent filing, prosecution and maintenance fees, and specific marketing costs. When out-of-pocket costs in the next TWU fiscal year are forecast and future income unlikely, a reserve may be deducted. Any excess reserve shall be promptly distributed after forecast costs are paid.
- Distribute 50% of the Adjusted Royalty Income to the inventors/authors.
- Distribute 50% of the Adjusted Royalty Income to TWU for the support of research and other intellectual pursuits.
4.7 Technology Royalties - Special Cases
In some cases, distribution of royalties to individuals will be impractical or inappropriate, such as where the material was developed as a laboratory project or where the authors/inventors are not easily identifiable. The IPC, in consultation with the principal investigator (or laboratory director/department head if not under a sponsored agreement) will review the circumstances of development when such situations have been identified. If not allocated to individuals, the authors'/inventors' share may be allocated to a research or educational account in the laboratory/department where the material was developed. In any situation when royalty distribution to individuals is not recommended, it is subject to the approval of the Vice President for Academic Affairs.
4.8 Equity and Management Participation in Business Entities
If TWU forms or becomes an equity owner in a company or other separate business entity that utilizes the technology created at TWU, TWU and the inventor/author each will hold 50% of the voting rights in stock or other evidence of ownership received or owned as a result of the TWU and inventor/author technology interest. TWU and the inventor/author each will have a 50% right to management participation in the entity equity interest, subject to the restriction that neither party may sell, lease, or assign such equity interest in a separate business or management participation right without the prior written consent of the other party.
Part 2--TWU Policy Statements
Part 3--Technology Evaluation, Protection, and Dissemination
Part 4--Commercial Development
Part 5--Faculty, Student, Staff, and Visitor Obligation
Part 6--Administration and Appendices
page last updated 11/25/2013 10:23 AM