Intellectual Property Policy on Discoveries and Patents for Their Protection and Commercialization

Each campus of the university shall be responsible for managing the protection and commercialization of University Discoveries made by Included Persons that are assigned to that campus and, as such, shall each establish a policy that addresses how the campus will protect and commercialize University Discoveries made by Included Persons that are assigned to that campus.

Each such campus policy shall be drafted to encourage and reward its Discoverers to participate in commercialization activities that make Discoveries available for widespread use and benefit.

Each campus chancellor of the university shall appoint a member of the campus’ staff to serve as the Principal Technology Transfer Officer for that campus, to perform such duties and responsibilities as it shall prescribe in accordance with Regent Policy 5.I and this policy, and shall establish a Technology Transfer Office or shall delegate the technology transfer function to another campus’ Technology Transfer Office that will be responsible for the protection and commercialization of Discoveries made on that campus.

Each campus chancellor of the university shall delegate signature authority for any agreements involving University Discoveries and Intellectual Property related to a University Discovery to the Principal Technology Transfer Officer and their designees. Should a university employee not possessing such Delegated Authority sign an assignment of or other grant of rights to Intellectual Property related to any University Discovery or an agreement seeking to bind the university, such agreement is null and void.

1. Disclosure
   
   Included Persons shall disclose any Discovery made by that Included Person in accordance with the applicable policies and procedures established by that Included Person’s campus. For the avoidance of doubt, Included Persons shall disclose Discoveries made with or for external research, business, and/or other third-party collaborators or partners or made pursuant to external professional and business activities.
    
2. Sponsored Programs, Corporate, and Third-Party Obligations 
   
   Included Persons shall inform their external research, business, and/or other third-party collaborators or partners of the terms and conditions of this policy. Further, Included Persons shall not enter into contractual agreements that might substantially affect rights to Discoveries or Intellectual Property related to Discoveries created with those collaborators without prior approval from their campus Principal Technology Transfer Officer or their designee.
    
3. Other Reporting Requirements 
   
   It is the responsibility of Included Persons to provide their campus Technology Transfer Office with current contact information and to provide the address to which the Discoverer's apportionment of Net Receipts should be sent.  As further set forth in Section H below, if the campus Technology Transfer Office is unable to find a Discoverer, or the Discoverer’s estate, to provide the Discoverer’s share of Net Receipts for a period of 24 months, such share of Net Receipts shall revert to the campus Technology Transfer Office.
    
4. Cooperation with the Campus Technology Transfer Office
   
   Included Persons, at the request of their campus Technology Transfer Office, shall execute and deliver any and all documents that may be necessary or desirable to perfect title in the university to all University Discoveries and related Intellectual Property; execute all documents necessary to complete a patent, license, or other commercial application; and reasonably cooperate with their campus Technology Transfer Office in obtaining, protecting, and maintaining rights to University Discoveries, and as necessary to accomplish a licensing agreement or other activity for commercial development of University Discoveries.

The Principal Technology Transfer Officers have the primary responsibility for the implementation of this policy on behalf of their respective university campuses. The Principal Technology Transfer Officer or their designee will:

1. Supervise the management of each Discovery disclosed to the campus’ Technology Transfer Office, including complete record keeping and required reporting of all actions.
    
2. Determine whether the university has rights to Discoveries according to Regent Policy 5.I and this policy, and if so, the basis and extent of such rights, and the extent to which it will pursue protection and/or commercialization of the Discovery.
    
3. For protectable Discoveries, work with the Discoverers and legal counsel to determine the actual inventors of the Discovery under United States intellectual property law.
    
4. In those cases in which the university elects to pursue the protection and/or commercialization of a Discovery, assess what steps should be taken with respect to the protection and commercialization of the Discovery.  These decisions should consider the wishes of the Discoverer whenever reasonably feasible, should be informed by commercially reasonable standards, should consider all relevant legally binding agreements, and should be in the best interest of the university. Decisions regarding the terms and conditions of the protection and commercialization of all Discoveries owned by the university are within the sole discretion of the Principal Technology Transfer Officer.
    
5. Supervise the processes of the campus’ Technology Transfer Office for commercializing Discoveries, including developing Discoveries within the university or in partnership with outside parties, preparing and prosecuting applications for patent, copyright registration, and other legal protection, or obtaining counsel or other assistance for that purpose, combining University Discoveries with discoveries made by other individuals, companies, governmental agencies and other research entities, negotiating or assisting in negotiation of licenses and related agreements, and monitoring the collection and distribution of Net Receipts.
    
6. Working with the relevant campus unit responsible for sponsored research agreements, review, negotiate, and approve sponsored research agreement terms that implicate University Discoveries and existing or future Intellectual Property related to University Discoveries.
    
7. Supervise compliance with government regulations concerning Discoveries developed with government support.

Each campus shall establish a policy addressing if and when the campus will release the university’s rights in a University Discovery and the Intellectual Property Rights related to a University Discovery to the relevant Discoverers. 

Each campus shall develop a process that addresses how disputes between Discoverers and the university will be resolved.

Each campus shall develop a policy regarding the receipt and distribution of Tangible Research Property. 

External professional and business activities, including for example, professional consulting or participation in a start-up company, have the potential to result in the creation of a University Discovery. Included Persons engaging in external professional or business activities, and those with authority to approve such activities on behalf of the university, are responsible for ensuring that any agreements with external entities are not in conflict with this policy. The relevant campus Technology Transfer Office may advise Included Persons, and those charged with approving their consulting or business activity, on the application of this policy to their external professional or business activity.  Prior to engaging in external professional or business activity, Included Persons are responsible for making their obligations under this policy and related policies clear to those external entities. It may be prudent for the Included Person to engage outside legal counsel to provide advice on an Included Person’s participation in such professional and business activities.

To the extent an Included Person makes a Discovery in the conduct of external professional or business activities, the Included Person must disclose the Discovery in accordance with this policy so that the relevant campus Technology Transfer Office may make the determination whether the university owns the Discovery under this policy. Included Persons have no authority to grant any rights under University Discoveries and Intellectual Property rights relating to University Discoveries, even if such Discoveries are related to external professional or business activities with third parties.

A campus Technology Transfer Office, upon receipt of financial consideration pursuant to a transfer or license of a Discovery and/or Intellectual Property for a Discovery, shall retain from such amounts all unreimbursed Discovery Expenses. From the Net Receipts, the campus Technology Transfer Office shall then retain any share of Net Receipts subject to the terms of any applicable allocation agreements with other campuses or affiliate hospital partners.

Each campus Technology Transfer Office shall set its own policy regarding the division of the remaining Net Receipts but must distribute no less than 30% of any remaining Net Receipts to the Discoverers of the relevant Discovery.

If a campus Technology Transfer Office is incapable of making a payment to a Discoverer, or to a Discoverer’s estate in the event of the Discoverer’s death, for any reason, including, but not limited to, where making a payment would violate applicable laws or regulations or the campus Technology Transfer Office is unable to reach a Discoverer, or the Discoverer’s estate, using the contact information provided to the university by the Discoverer, to provide the Discoverer their share of Net Receipts for a period of 24 months, such share of Net Receipts and all future allocations shall revert to the campus Technology Transfer Office.

Software or other copyrighted materials may constitute a University Discovery.  Each respective campus shall implement policies specific to Discoveries that are software or other copyrighted materials.

The university encourages the formation of companies to commercialize University Discoveries provided that conflicts of interest and commitment are addressed and, if necessary, managed. The university may license Intellectual Property in University Discoveries to companies in which Included Persons have a financial interest provided that conflict of interest and conflict of commitment concerns have been adequately addressed in a conflict of interest management agreement between those Included Persons and the university. Similarly, companies in which Included Persons hold a financial interest may sponsor research and if duly qualified, that Included Person may be an investigator, subject to an approved Conflict of Interest Management Agreement. The responsibility for preparing and enforcing the Conflict of Interest Management Agreement resides in the university employee's administrative chain of supervision or in other designated university committees, e.g., campus conflict of interest committees and/or campus research compliance officer.  Such committees or officers may request assistance from the Technology Transfer Office, the Office of University Counsel and other relevant university officers in preparing the Conflict of Interest Management Agreement.

Each respective campus Technology Transfer Office will determine requirements for commercializing University Discoveries or Intellectual Property related to University Discoveries with start-up companies and when equity received as consideration for a license, by either the university or an organization designated by the university to hold such equity, will be distributed.  Equity received as consideration for a license to Intellectual Property related to University Discoveries will be treated as Net Receipts upon liquidation.

Where Discoverers from multiple campuses contribute to the invention or creation of a University Discovery, the relevant campus Technology Transfer Offices shall confer and determine which campus Technology Transfer Office shall assume the lead with respect to protecting and commercializing the Discovery and distributing Net Receipts in accordance with this policy and the relevant campus policies. Each Discoverer is responsible for disclosing the Discovery to their respective campus Technology Transfer Office.

All relevant campus Technology Transfer Offices must agree before any Discovery is released to the Discoverers under subsection II.D above.

1. "discovery" or "discoveries," means any inventive idea and/or its reduction to practice that relates to, but is not limited to: new processes or methods of producing a new and useful industrial result; any composition of matter, including chemical and biological compounds and research materials; any new devices; any new plant; any new design in connection with the production or manufacture of an article; any new computer hardware and/or software programs; any clinical protocol or survey instrument; any new use or improvement of existing systems, processes, or methods of producing a new and useful industrial result, devices, compositions of matter, or software programs; and any know-how and data supporting these inventive ideas.
    
2. "substantial use of university resources" means use of university administered funds, sponsored programs, facilities, research equipment, including software, research space or other physical assets that goes above and beyond those customarily and currently provided to included persons in accordance with their university position as an employee, student, or volunteer. A visiting scholar or any other visitor makes substantial use of university resources by using any 2 university administered funds, sponsored programs, facilities, research equipment, including software, research space, or other physical assets. For purposes of this policy, offices, office equipment, library access, desktop and laptop computers, photocopy equipment, telephone, servers, and fax machines that are customarily provided, are excluded from substantial use of university resources. Use of university resources as permitted under a separately executed facilities use agreement will not be considered substantial use of university resources. (This provision is not intended to override any other university policy concerning reimbursement for facilities or equipment usage.)
    
3. "university discoveries” means discoveries made:
    
   • with the substantial use of university resources, and/or
   • in fulfillment of an included person's work responsibilities.
     
     A discovery made by an included person in connection with consulting or other third-party contractual arrangements is a university discovery if it meets the above criteria.
      
4. “visiting scholar” means a person who has been granted access to university administered funds, sponsored programs, facilities, research equipment, including software, research space, or other physical assets pursuant to an appropriately executed visiting scholar agreement.
    
5. “visiting scholar agreement” means a separately executed written agreement between a person or that person’s home institution and university permitting substantial use of university resources, which agreement includes intellectual property provisions approved by the appropriate principal technology transfer officer.
    
6. “work responsibilities” means any work, including third-party employment such as consulting activity, that is related to an included person’s activities or field of expertise at the university as evidenced by their research focus, or as otherwise articulated in a faculty member’s professional plan or an employee’s position description.

1. “Campus Discovery(ies)” means a University Discovery made by Included Persons that are assigned to a specific campus.
    
2. "Conflict of Interest Management Agreement" means a written agreement or management plan between the university and the Discoverer(s) specifying how actual or perceived conflicts of interest or commitment are reduced or eliminated as required by Administrative Policy Statement Conflicts of Interest and Commitment.
    
3. "Delegated Authority" means the approval granted by the campus chancellor to a campus employee to execute agreements.
    
4. "Discoverer" or "Discoverers" means any individual or group of individuals who are the inventors or creators of a Discovery.
    
5. "Discovery Expenses" means all documented, unreimbursed expenditures incurred by the university for any Discovery, including but not limited to:
    
   • to engage third parties to analyze, prepare, determine inventorship/authorship, file, register, record, prosecute, issue, maintain, assess value, and litigate, including defending in litigation or an administrative proceeding, Intellectual Property for a Discovery or any other issue relating to University Discoveries;
   • for obtaining searches and opinions and otherwise in connection with marketing, licensing, enforcing, administering contractual obligations, and collecting license income for, a Discovery or related Intellectual Property; 
   • for amounts owed to joint owners of a Discovery under Discovery management agreements or inter-institutional agreements;
   • any award funded and provided by the university or supported program to advance commercialization of that Discovery, with chancellor approval; and 
   • any unreimbursed grant funding that is required to be repaid by the grant agreement.
     
     Discovery Expenses does not include any compensation to university employees.
      
6. "Included Persons" means all faculty members and other employees of the university, including individuals receiving salaries, research stipends, fellowships or other remuneration from the university, part-time employees, student employees, university employees on sabbatical who receive remuneration from the university, and employees on a paid leave of absence. Included Persons also includes university volunteers, students, and visitors who make Substantial Use of University Resources, and Visiting Scholars.
    
7. "Intellectual Property" means any legal protection that exists and/or is or may be sought for any Discovery. For example, Intellectual Property may include, but is not limited to, a Patent, Copyright, Mask Work, Trademark, Service Mark, Trade Secret, proprietary and confidential information, and other forms of intellectual property legally recognized now or in the future.
    
8. "Net Receipts" means all financial consideration received by the relevant campus Technology Transfer Office or its agent from the transfer, license, assignment, or sale of a University Discovery,  the Intellectual Property for a University Discovery, and/or a product/service/asset embodying a University Discovery less all Discovery Expenses for the Discovery or Discoveries (including Intellectual Property for the University Discovery) that generated such financial consideration. For clarity, proceeds from an investment by the university into a company or used for the development of a University Discovery that is commercialized by the company, including through an investment fund are not Net Receipts.
    
9. "Patent," "Copyright," "Mask Work," "Trade Secret", "Trademark" and "Service Mark" have the meanings attributed to those terms by U.S. statutes, regulations, and case law.
    
10. "Principal Technology Transfer Officer" means the university officer for each university campus delegated the responsibility by the campus to perform such duties and responsibilities as the university and the campus may prescribe for the purposes of effecting Regent Policy 5.I, this policy, and the campus policy.
     
11. "Sponsored Program" means a research, instruction, or service activity that has been or is financially supported, authorized, administered, or managed by the university.
     
12. "Tangible Research Property" means a tangible physical or biological entity that is, or may be, useful in research. Examples include models, devices, designs, avatars, computer software, storage media containing machine instructions, text, tissues, serum, fluids, organs, cell lines, antibodies, recombinant materials, chemical compounds and compositions, formulations, plant varieties, laboratory notebooks, clinical information, records and data related to Discoveries. Some Tangible Research Property may comprise University Discoveries.
     
13. "Technology Transfer Office" means the university campus units responsible for securing, protecting, marketing, licensing and managing University Discoveries.