Research OSPA:Grant Proposals or Research Agreements

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Effective Date

September 1, 2012

Statement of theIssue

An agreement with intellectual property (IP) language that conflicts with UT System policy.

Applicable Policy/Regulation

Typical to standard federally-sponsored research agreements is a provision commonly referred to as “Bayh-Dole Act”. That provision in a federally-sponsored research agreement gives universities control of inventions and other IP (such as copyright protection) that result from research projects that receive federal funding (subject to certain rights retained by the government).According to The University of Texas System (System) Policy UTS 125 entitled “Processing of Intellectual Property Agreements,” standard sponsored research agreements do not require System review prior to execution. The System Board of Regents generally, is the owner of any inventions created by a UT Dallas employee that generated the invention within the scope of employment. In fact, a condition of employment is assignment of inventions to the Board of Regents (Board). Thus, any invention resulting from sponsor-funded agreements belongs to the Board. (See UTS Rules 90101 and 90102.) A creator of IP owned by the Board has no independent right or authority to convey, assign, encumber, or license such IP to any entity other than the Board. (UTS Rule 90101.) There are exceptions to the Board’s ownership interest in copyright of scholarly or educational materials, artworks, musical compositions, and literary works related to the author’s academic or professional field, regardless of medium of expression. (Id.)Prior to information about the invention being disclosed for publication, made in any public disclosure, or privately disclosed to a commercial entity, the creator must first disclose to the UT Dallas Office of Technology Commercialization (OTC) (UTS Rule 90102) who will, in turn, disclose to the UT Dallas Intellectual Property Advisory Committee (UTDPP 1002). After the Intellectual Property Advisory Committee reviews disclosure, it will determine an appropriate course of action that may include: UT Dallas and System asserting rights of ownership in the IP on behalf of the Board and obtaining such protection for it as may be appropriate; UT Dallas licensing the IP directly to the inventor; or the Board releasing its rights of ownership in the IP to the creator, subject to appropriate terms and conditions. (Id.)

Process

  1. If a Specialist receives a grant solicitation, collaborative, research, or sponsored-funded agreement, or contract for research or services that includes provisions for the PI to relinquish his or her IP rights to the sponsor or to provide the sponsor a non-exclusive or exclusive license for commercial use to IP resulting from the funding, the PI should be consulted by email to determine whether he or she anticipates IP resulting from the project. The PI should also be asked whether he/she has any background IP (BIP), which is IP that he/she already has (a patent, license, etc.), but wants to use for the project.
  2. If the PI states that he/she has BIP, consult the Office of Technology Commercialization (OTC) to see if there are any inventions held by UT Dallas or System and to determine if the PI has any invention disclosures that may be implicated by his/her role on the grant or project that is the subject of a contract.
  3. If the PI states that he/she believes IP could result from the project, we should not apply for the grant or enter into the collaborative or sponsor-funded agreement unless the sponsor is willing to amend the terms of award and take a non-exclusive license for internal purposes only with no right to sublicense.
  4. The sponsor can only get a non-exclusive license for the project in BIP.
  5. If the PI states that he/she does not think that there will be IP that could result from the project, then the specialist sends the PI the memorandum at the end of this process or G:\Sponsored Projects\Contracts\Forms\IP Deviation Memo. It must be approved by the PI, his/her Dean, and either the AVP or VP of Research prior to submission of the grant or signature on the collaborative or sponsor-funded agreement. If needed, forward the grant proposal or contract statement of work to the Dean to let him determine whether IP from the project is possible so that he has this information at the same time he receives the attached memorandum.

Definitions

  1. Intellectual Property - Any product of the human intellect that is unique, novel, and unobvious and has some value in the marketplace. Some intellectual property is protectable by statute or legislation, such as patents, copyrights, trademarks, trade secrets, service marks, and plant variety protection certificates. Protection of IP also occurs through agreements that control use of intellectual property.
  2. Bayh-Dole Act - The Bayh-Dole Act was enacted in 1980 and stands as the watershed for today’s technology transfer in American colleges and universities. The act was amended and amplified by various executive and Congressional actions, and it now collectively describes federal law governing rights to inventions conceived or first reduced to practice during research under a federally funded grant, contract, or cooperative agreement at colleges/universities and small businesses. The Department of Commerce is designated as the federal agency to promote commercialization and has responsibility for implementing the regulations issued under the act. The purpose of Bayh-Dole is to: promote collaboration between commercial concerns and nonprofit organizations including universities; promote use of inventions arising from federally sponsored research or development; and ensure that inventions are used to promote free competition and enterprise.
  3. Invention - A product of the human intellect that is new, useful, and non-obvious process, machine, or product.
  4. Patent - A patent for an invention is the grant of a property right from a country’s patent office to the inventor which excludes others from making, using, offering for sale, selling, or importing the invention into the country that granted the patent. US patent grants are effectively only within the territories of the United States and are granted by the United States Patent and Trademark Office (USPTO). To seek patent protection in other countries, a patent application must be made to the individual country’s patent office and that office must grant the patent. Public disclosure of inventions eliminates application for foreign patent protection and limits protection to the US and that is assuming a patent application is filed to the USPTO within one year of public disclosure.
  5. Trademark - Trademark is a symbol, design, picture, word, phrase, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. The owner of a trademark has exclusive right to use it on the product it was intended to identify and often on related products and may use the symbol TM to let the public know that the mark is a trademark. The symbol ® can only be used in the United States if the trademark is federally registered with the USPTO. Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in registration and files all necessary documentation in the USPTO at the appropriate times.
  6. USPTO - The US Patent and Trademark Office is a federal agency whose mission is to foster innovation and competitiveness by: providing high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy, and delivering intellectual property information and education worldwide. The office’s major function is the examination and issuance of patents and the examination and registration of trademarks.
  7. Copyright - A copyright is a set of exclusive legal rights authors have for “original works of authorship” including literary, dramatic, musical, artistic, architectural, and certain other intellectual works, both published and unpublished. Under the federal copyright act, copyright protection is secured from the time the work is created in fixed form. Copyright ensures that the owner has the exclusive right to reproduce the work, to prepare derivative works, to distribute by sale or otherwise copies of the work, to perform publicly, and to display. Registration is not a requirement for copyright protection. Copyright does not protect ideas, only the tangible work itself.

Example

March 22, 2016
From: ___
Office of Sponsored ProjectsTo: Dr. __
Principal Investigator (PI)RE: [[Insert name of Proposal/Agreement] with [[insert name Agency soliciting proposals/providing Agreement]Dear Dr. XXXX,
The above referenced proposal solicitation/collaborative research agreement/sponsored research agreement was reviewed by the Office of Sponsored Projects and deviations from UTD and UT System policy regarding intellectual property and the guidelines concerning this grant proposal terms of the agreement are as follows:[[LIST ALL DEVIATIONS]1. [[insert deviation]
2. [[insert deviation]
3. [[insert deviation]I spoke with you to determine whether you will be providing any background intellectual property (BIP) and have verified whether BIP on this proposal agreement exists with the Office of Technology Commercialization. I also spoke with you about whether you anticipate any intellectual property resulting from your work on the grant, should you receive it project covered by the agreement. By signing this memo, you, the PI, certifies the following statement is true: it is the PI’s opinion that the benefits from the level of funding for the proposed research and/or other consideration from the sponsor pursuant to this grant agreement outweigh any potential disadvantage that may result from deviation(s) to the UTD and UT System Intellectual Property Policy. The PI and Dean hereby approve the grant proposal agreement and all the terms contained therein.
In the PI’s and Dean’s judgment, [[check one]
□ no intellectual property is anticipated to result from performance of the project.
□ intellectual property may be anticipated to result from performance of the project.Approval: ___
Dr. __Approval: ___
Dean __Approval: ___
Vice President for Research __
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