Policies of the University of North Texas Chapter 8 Intellectual

Policies of the University of North Texas

Chapter 8

Intellectual Property

08.003 Intellectual Property

Policy Statement. The purpose of this policy is: (1) to encourage the creation, development, and

management of Intellectual Property including, patents, copyrights, trade secrets, know-how,

and trademarks in the best interest of the public, the Creator(s), UNT, and the research sponsor(if

any); (2) to provide for protection of Intellectual Property through patents, copyrights, trade

secrets and trademarks; (3) to ensure that monetary and other benefits derived from Intellectual

Property including patents, copyrights, trade secrets and trademarks are equitably distributed to

the Creator(s), UNT and other parties and (4) to address ownership issues related to Intellectual

Property developed at or on behalf of UNT.

Application of Policy. Faculty, staff and students. Additionally, Affiliated Personnel of UNT are

subject to this policy when creating Intellectual Property through use of UNT facilities or

resources. This policy does not apply to Intellectual Property coming under the definition of

“Online Courseware Intellectual Property” in UNT Policy No. 06.032 or to UNT owned

trademarks, service marks and copyrights unrelated to research, such as those promoting UNT

as an academic institution or UNT athletics.

Definitions.

1. Affiliated Personnel. “Affiliated Personnel” means individuals who are not UNT

faculty, employees or students but have a professional relationship with UNT, such as

visiting faculty, visiting postdoctoral fellows, volunteers and other scholars.

2. Intellectual Property. “Intellectual Property” means any new and useful process,

scientific or technological innovation, technology, machine, composition of matter,

life form, article of manufacture, software, tangible property, research data, or any

work that is subject to protection by patents, copyrights, trademarks, or trade secrets.

It includes such things as new or improved devices, circuits, chemical compounds,

drugs, genetically engineered biological organisms, data sets, software, musical

processes, unique and innovative uses of existing inventions and any other deemed

property. Intellectual Property may or may not be patentable, copyrightable, subject

to trade secret, or subject to a trademark.

3. Creator. “Creator” means any member of the UNT faculty or staff, and any other

persons employed by UNT, whether on a full-time or a part-time basis; visiting faculty

and researchers; and any other persons, including students and Affiliated Personnel,

who invent, create, develop or discover Intellectual Property while employed by UNT

or while using UNT facilities, resources or equipment. Intellectual Property can be

invented, created, developed or discovered by one or more individuals, each of

whom, to be considered a Creator, must have conceived of an essential element or

provided creative input into the conception of the Intellectual Property.

4. Creator-Owned Intellectual Property. “Creator-Owned Intellectual Property” means

Intellectual Property owned by the Creator with no ownership by UNT. Creator-

Owned Intellectual Property includes Intellectual Property unrelated to a Creator's

employment responsibilities or field of study at UNT and that is developed on his or

her own time without significant use of UNT facilities, resources or equipment.

Intellectual Property created with the use of an office, library, or desktop computer

are examples of facilities and equipment that are not considered significant. Unless

created as a Work Made for Hire, as Sponsor-Supported Intellectual Property, or as

assigned in the course and scope of employment, pedagogical, scholarly or artistic

works by UNT faculty, staff or students are also included as Creator-Owned

Intellectual Property (examples are most textbooks, course materials and refereed

materials). Creator-Owned Intellectual Property also includes works of students

created in the course of their education, such as theses, dissertations, papers and

journal articles unless otherwise designated in another UNT Policy.

5. Author. “Author” means the person or persons who first fixed an expression in a fixed

media; an expression may include any literary, dramatic, musical, artistic, or certain

other intellectual works, including the writing of software code.

6. Intellectual Property Advisory Committee (IPAC). “Intellectual Property Advisory

Committee” or “IPAC” means the UNT committee chaired by the Intellectual Property

Officer and with seven other members with oversight responsibilities related to

Intellectual Property as defined in this policy.

7. Intellectual Property Officer (IPO). The “Intellectual Property Officer” means the

individual appointed by the Vice President for Research and Innovation with the

responsibility of overseeing and administering the UNT Intellectual Property program

in accordance with this policy and for administering patents, copyrights, trade secrets

and trademarks related to University-Owned Intellectual Property and Sponsor-

Supported Intellectual Property.

8. Inventor. The “Inventor” of Patentable Intellectual Property shall be determined in

accordance with United States patent law.

9. Open Source Software. “Open Source Software” means computer software with its

source code made available with a license in which the copyright holder provides the

rights to study, change and distribute the software to anyone and for any purpose.

10. Patentable Intellectual Property. “Patentable Intellectual Property” means

Intellectual Property for which a patent may be applied for in a jurisdiction.

11. Publication. “Publication” means a public disclosure of Intellectual Property, which

may be verbal or printed. Printed Publications include abstracts and may include grant

proposals, funded or unfunded. A public disclosure is a non-privileged communication

to someone other than those with a professional need to know within UNT.

12. Sponsor-Supported Intellectual Property. “Sponsor-Supported Intellectual Property”

means Intellectual Property created under a grant or sponsored research agreement

with an external agency or entity. Ownership of Sponsor-Supported Intellectual

Property is determined in accordance with the terms of the grant or sponsored

research agreement. In the absence of contract terms that specifically designate

ownership, Sponsor-Supported Intellectual Property is owned by UNT.

13. University-Owned Intellectual Property. “University-Owned Intellectual Property”

means Intellectual Property owned by UNT, including Works Made for Hire that are

commissioned by UNT or that a Creator is assigned to create in the course and scope

of her/his employment with UNT; Intellectual Property created with significant use of

UNT facilities, resources or equipment; Intellectual Property assigned to UNT; and

Sponsor-Supported Intellectual Property that is designated as university owned in the

applicable grant or sponsored research agreement or for which ownership has not

been specifically designated. Intellectual Property that would otherwise be

designated as Creator-Owned Intellectual Property shall be considered to be

University-Owned Intellectual Property if the University pays for patent, copyright or

trademark protection with the consent of the Creator. Trademarks and service marks

developed for products and services that are not part of the UNT brand but are

created or developed to mark the products and services of University-Owned

Intellectual Property are included within the definition of University-Owned

Intellectual Property and are subject to all of the requirements in this policy.

14. Work Made for Hire. “Work Made for Hire” means: (1) a work prepared by an

employee within the scope of his/her employment; or (2) a work specially ordered or

commissioned if the parties expressly agree in a written contract that the work shall

be considered a Work Made for Hire.

15. VPR Office. “VPR Office” and “VPR” means the Office of Vice the President for

Research and Innovation, or, if the name of that Office is changed, the chief research

officer responsible for the management of Intellectual Property.

Procedures and Responsibilities.

1. Creators of Intellectual Property are responsible for the following:

a. Acting in an honest and ethical manner in the creation, discovery, invention,

development and marketing of Intellectual Property;

b. Engaging in Intellectual Property and technology transfer activities in a manner

consistent with University policies and procedures, including but not limited to

this policy and those governing conflicts of commitment and conflicts of interest;

c. Disclosing to appropriate University officials the creation of Intellectual Property

in accordance with this policy;

d. Cooperating with the University in the categorization and protection of

Intellectual Property; licensing and commercialization of University-Owned

Intellectual Property; and in the defense and prosecution of patents and legal

actions taken in response to infringement;

e. Creators of Intellectual Property may not use UNT facilities and resources to

develop Creator-Owned intellectual Property.

Responsible Party: Faculty, Staff, Students and Affiliated Personnel who

are Creators of Intellectual Property

2. The Intellectual Property Officer is responsible for the following:

a. Overseeing day to day operations of UNT’s Intellectual Property program;

b. Serving as the Chair of the IPAC and scheduling IPAC meetings;

c. Making determinations regarding suitability of development or release of

University-Owned Intellectual Property by UNT;

d. Making decisions regarding the management of University-Owned Intellectual

Property, including but not limited to decisions regarding protection, licensing and

commercialization.

Responsible Party: IPO

3. The Intellectual Property Advisory Committee is responsible for the following:

a. Determining appropriate categorization of Intellectual Property in accordance with

this Policy;

b. Assist IPO with decisions regarding Intellectual Property issues, protection of

Intellectual Property, patentability issues and licensing opportunities as requested

by the IPO.

The Vice President for Research and Innovation shall appoint the members of the

IPAC. All permanent members of the IPAC will have full voting rights on issues raised

to that committee. Meetings of the IPAC shall require a quorum of at least five

members.

Responsible Party: IPAC members; Vice President for Research and

Innovation

4. Ownership, Assignment and Disclosure of Intellectual Property.

The University owns all rights, title and interest in and to Intellectual Property

developed as result of the use of University resources or facilities. By accepting

employment with or enrollment in the University, or making use of UNT facilities and

resources, the Creator agrees to assign and hereby does assign to the University all of

his or her rights, title and interest in and to Works Made for Hire, University-Owned

Intellectual Property and Sponsor-Supported Intellectual Property. The Creator

agrees to execute documents and take action as required by this policy and as

requested by the University to document ownership rights and to facilitate protection

of the assignment to the University.

When University-Owned Intellectual Property or Sponsor-Supported Intellectual

Property is created, the Creator must complete and submit an Intellectual Property

Disclosure Form to the VPR Office. The Intellectual Property Disclosure Form is

available on the Innovation and Commercialization section of the VPR Office website

(link provided below). A Creator is required to disclose any Intellectual Property that

is not clearly Creator-Owned Intellectual Property.

Responsible Party: All UNT faculty, staff, Affiliated Personnel, other

employees and Students

5. Categorization of Intellectual Property.

At the moment of its creation, discovery, invention, or development, Intellectual

Property will automatically fall into the category of Creator-Owned Intellectual

Property, Sponsor-Supported Intellectual Property, or University-Owned Intellectual

Property. Absent an authorized representative of UNT agreeing in writing that

specific Intellectual Property falls under the definition of Creator-Owned Intellectual

Property, the ownership of such intellectual property and its designation as being

“Creator-Owned” may be subject to challenge by UNT. The IPAC may be requested to

determine if Intellectual Property is University-Owned or Creator-Owned. If IPAC’s

decision is challenged, the Vice President for Research and Innovation shall make the

final determination.

Responsible Party: IPAC and VPR

6. Rejection of an Intellectual Property Disclosure or Transfer of University-Owned

Intellectual Property Rights.

The IPO shall decide whether to reject rights to Intellectual Property disclosed to the

University by a Creator. If rights are rejected, then such rights shall be assigned to

the Sponsor if sponsored by a federal agency. If the Creator wishes to seek rights to

the rejected Intellectual Property, then the Creator shall be responsible for petitioning

the federal agency for any such rights.

At any time after identification of University-Owned Intellectual Property, the IPO

may decide to transfer or assign rights to such Intellectual Property to a third party,

which may include transfer or assignment to a Creator. However, the IPO shall not

have any obligation to transfer or assign rights to Intellectual Property to a Creator

and may abandon protection of Intellectual Property without transferring such rights

to a Creator. In such event, the abandoned patent shall continue to be owned by the

University and to fall under the definition of University-Owned Intellectual Property.

Responsible Party: IPO

7. Intellectual Property Management.

On behalf of UNT, the IPO shall make management decisions regarding University-

Owned Intellectual Property. A Creator does not have an independent right to make

decisions regarding conveyance, assignment, encumbrance, or license of University-

Owned Intellectual Property; the IPO must authorize these types of actions on behalf

of UNT.

For Patentable Intellectual Property, if it is determined by the IPO that a patent

application should be prosecuted, then the prosecution shall be managed by the IPO

in a diligent manner and without expense of any kind to the Creator. If the patent

application is discontinued, the rights shall remain with UNT and/or revert to any

Sponsor, as applicable under law.

Responsible Party: IPO

8. Continuing Obligations of Creators of University-Owned Intellectual Property.

The creator shall make adjustments and updates to the submitted disclosure when

there are substantive changes to information originally provided; provide information

as required by the IPO and IPAC in order to identify appropriate categorization of

Intellectual Property and to determine the potential marketability of University-

Owned Intellectual Property and suitability for patent, copyright, trade secret or

trademark protection; complete paperwork as requested by the IPO to obtain

protection of University-Owned Intellectual Property; make assignments as necessary

to pursue patents or clarify ownership of University-Owned Intellectual Property and

Sponsor-Supported Intellectual Property; provide responses to office actions and

assist in the marketing, licensing or commercialization of Intellectual Property.

The Creator must assign to UNT and hereby does assign to UNT any interest in a patent

equivalent to the property interest that the Intellectual Property Officer determines

to belong to UNT under this policy. UNT may delay a decision about rejection of

disclosed Intellectual Property and any protection for any such disclosed Intellectual

Property until sufficient information is received from the Creator.

Responsible Party: Creators of Intellectual Property

9. Distribution of Revenue.

Except as otherwise stated in this policy, net revenues earned on any patents,

trademarks, trade secrets, and copyrights related to University-Owned Intellectual

Property shall be distributed after all out-of-pocket expenses associated with the

particular University-Owned Intellectual Property have been recovered by UNT and

payments have been made to any third party as required under any licensing,

commercialization or sponsored research agreement. Out-of-pocket expenses can

include patent prosecution and maintenance costs, travel and direct external

consulting costs, as well as other direct out-of-pocket expenses incurred by the

University. The university may retain a portion of royalties received in order to apply

such royalty amount to anticipated future expenditures, including future patent-

related expenses expected to be incurred for such Intellectual Property. The retained

royalty amount shall be considered an out-of-pocket expense for the purposes of this

policy.

Net revenues received by UNT shall be distributed as follows:

a. 50% as direct payment to the Creator(s); and

b. 50% for support of Research and Innovation at UNT and shall be deposited in

the VPR’s discretionary fund designated for this purpose.

The IPO and Creator may agree in writing to a net revenue distribution different than

as stated in this policy. Any such change to royalty distribution must be reviewed and

approved by the IPAC; such decision may be appealed to the VPR. The written

agreement shall be approved in accordance with UNT’s policy 10.4, Contracts and

Agreements.

Equity that has not been liquidated shall not be considered net revenue under this

policy and shall not be subject to distribution.

Works Made for Hire shall be exempt from the division of revenue requirement in this

policy and shall not earn a royalty share for a Creator unless a written agreement is

executed between the Creator, the Creator’s Department and the IPO. Any such

agreement to share royalties derived from a Work Made for Hire with a Creator must

be reviewed and approved by the IPAC; such decision may be appealed to the VPR.

The written agreement shall be approved in accordance with UNT’s policy 10.4,

Contracts and Agreements.

If a Creator leaves UNT, the Creator is still entitled to receive his/her share of net

revenues. In the event of multiple Creators of Intellectual Property, all named

Creators shall receive an equal share, with the total distribution made to all Creators

being equal to the net revenues to be received by the Creator under this policy,

unless the IPO is provided with an Intellectual Property disclosure signed by all

Creators specifying the percentage each Creator is entitled to receive. However, the

revenue splitting requirement in this policy shall not apply to University-Owned

Intellectual Property that are Works Made for Hire or that are subject to an alternate

revenue splitting arrangement in a contract entered into between the Creator(s) and

UNT.

If a Creator dies, the Creator's share of net revenues shall be distributed to the

Creator's heirs. In the event heirs are unknown or disputed, the Creator’s share of

net revenues shall be distributed as required by court order, issued by a court of

competent jurisdiction.

Responsible Party: IPO; Creators of Intellectual Property, IPAC, VPR

9. Equity Interests.

The University may receive equity interests as partial or total compensation for the

conveyance of Intellectual Property rights as determined by the IPO. The IPO shall

determine when equity interests will be liquidated. UNT will not share equity with

Creators; UNT will distribute royalties earned from the liquidation/sale of such equity

after such value is received.

Responsible Party: IPO

10. Open Source Software. Open Source Software allows for the distribution of

copyrightable software material. Copyrightable software material falls under the

definition of University-Owned Intellectual Property requiring disclosure to UNT via

the disclosure process established by this policy. If the Creator wishes to publish or

disseminate software that is University-Owned Intellectual Property through an Open

Source Software license, the IPO must authorize, negotiate and execute the license.

Responsible Party: Creator and IPO

11. Student Intellectual Property.

UNT shall not claim an ownership interest in Intellectual Property developed by students

except as specified in other UNT policies or under the following circumstances (these

exceptions fall under the definition of University-Owned Intellectual Property):

a. Intellectual Property created with significant use of UNT facilities, resources or

equipment;

b. if the student developed such work as a Work Made for Hire; or

c. Intellectual Property created while working in a student employee capacity at

UNT, including working as a graduate assistant, or under a grant or contract

funded through UNT.

The IPO shall make the initial determination of the applicability of these exceptions.

At the request of a student, the IPAC shall review the IPO’s decision. At the student’s

request, the IPAC decision can be reviewed by the VPR for a final determination.

Responsible Party: Student Creators of Intellectual Property; IPO; IPAC;

VPR

12. Use of Research Data.

Research data or results related to University-owned Intellectual Property or Sponsor-

Supported Intellectual Property or otherwise created by an employee are owned by

the University and, except to the extent that rights to such research data are

contractually assigned or licensed to another party by the University, the Creator shall

have a non-exclusive license to use such data for patient care, teaching, scholarly, and

other academically-related purposes and nonprofit research, provided such activities

are within the scope of the employee's employment with UNT and are allowed under

applicable sponsored research agreements.

Responsible Party: Creator and IPO

13. Use of Facilities and Resources.

University facilities and resources may not be used (a) to create, develop, or

commercialize Intellectual Property outside the course and scope of employment of

an individual, or (b) to further develop or commercialize Intellectual Properties that

have been released to an Inventor or licensed to a Creator by University, except as

the VPR may approve in writing. The VPR does not have authority to approve use of

UNT facilities and resources that would constitute a prohibited gift of state funds or

that would violate the UNT ethics policy.

Responsible Party: VPR

14. Creator Held Equity, Business Participation and Managing Conflict of Interest.

Creators may hold an equity interest in a business entity that has an agreement with

the University relating to the research, development, licensing, or exploitation of

University-Owned Intellectual Property only so long as the VPR determines that the

University’s conflict of interest management plan has been adhered to fully and the

equity is being held in accordance with applicable Rules of the University of North

Texas System Board of Regents and UNT policies. In any case where an actual conflict

of interest is found, the Creator may be required to divest the equity interest or

terminate affected research.

A UNT faculty or staff member who conceives, creates, discovers, invents, or

develops Intellectual Property may serve, in his/her individual capacity, as a member

of the board of directors or other governing board or as an officer or an employee of

a business entity that has an agreement with UNT relating to the research,

development, licensing, or exploitation of that Intellectual Property, but only so long

as there is a conflict of interest management plan in place that has been approved by

the VPR and , a dual employment form that has been approved and executed by the

Provost and the faculty member’s respective Chair and Dean. Business participation

shall be in compliance with UNT System Regents Rule 05.800 and 08.300. In any case

where an actual conflict of interest is found, the faculty or staff member may be

required to terminate the business relationship or the relevant research.

Responsible Party: VPR, Creator, Creator’s Chair and Dean, and Provost

References and Cross-references.

UNT Policy 06.032, Online Courseware Intellectual Property

UNT Policy 13.005, Conflict of Interest for Sponsored Projects

UNT System Regents Rule 05.800, Service on Outside Boards

UNT System Regents Rule 08.300, Equity Interest and Business Participation

Forms and Tools.

Innovation and Commercialization Section of the Office of the Vice President for Research and

Innovation Website

Approved: 12/11/2017

Effective: 04/12/2018

Revised: 12/17, 04/18