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UT System Administration Policy Library -- Policy UTS125
Processing of Intellectual Property Agreements |
Responsible Officer: Executive Vice Chancellor for Business Affairs
Sponsoring Office: Office of General Counsel
Effective Date: December 1, 2002
Last Reviewed: August 3, 2009
Next Scheduled Review: August 30, 2010
Errors or changes to: policyoffice@utsystem.edu
CONTENTS
Policy Statement
Rationale
Scope
Website Address For This Policy
Related Statutes, Policies, Requirements Or Standards
Contacts
Definitions
Responsibilities
Procedures
Forms Tools/Online Processes
Appendix
POLICY STATEMENT
This policy provides the steps to follow to process legal documents, contracts or grant proposals for sponsored research, including institutional support grants and licenses, grants and options or other conveyances of intellectual property owned or controlled by the Board of Regents as outlined in Series 90105 of the Regents’ Rules.
RATIONALE
None
SCOPE
All institutions and UT System Administration
WEBSITE ADDRESS FOR THIS POLICY
http://www.utsystem.edu/policy/policies/uts125.html
RELATED STATUTES, POLICIES, REQUIREMENTS OR STANDARDS
UT System Administration Policies & Standards |
Other Statutes, Policies & Standards |
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CONTACTS
If you have any questions about UT System Administration Policy UTS 125, Processing of Intellectual Property Agreements, contact the following offices:
DEFINITIONS
None
RESPONSIBILITIES
Office of General Counsel
- Reviews and approves research agreements greater than $1,000,000 (unless the threshold has been increased as outlined below).
- Following OGC approval, forwards a courtesy copy of the agreement and an explanatory memorandum prepared by the Institution (if available) to both Executive Vice Chancellors and the Vice Chancellor for Research and Technology Transfer.
UT Institution
- Sends the original signed sponsored research agreement to the sponsor or contracting party after obtaining any necessary OGC approvals.
Contracting Party
- Considers factors that affect fair value for property rights.
PROCEDURES
I. Most Sponsored Research Agreements Do Not Require UT System Review Prior to Execution
A. The following types of sponsored research agreements do not need to be sent to the Executive Vice Chancellor (EVC) for Health Affairs or Academic Affairs or to the Office of General Counsel (OGC) prior to execution:
- Standard sponsored research agreements designated by OGC;
- Standard sponsored research agreements with specified nonsubstantive modifications, as determined by the chief administrative officer or approved designee;
- Company master or universal agreements designated by OGC;
- Company master or universal agreements with specified nonsubstantive modifications as determined by the chief administrative officer or an approved designee;
- Renewal or specified extension of previously approved sponsored research agreements continuing the same or related research with specified nonsubstantive modifications, as determined by the chief administrative officer or an approved designee;
- Clinical trial agreements, material transfer agreements and laboratory studies that conform to the requirements set forth by OGC in relevant online checklist procedures; and
- Sponsored research agreements, clinical trial agreements, material transfer agreements and laboratory studies that do not conform to the U.T. System Intellectual Property Policy or Guidelines, provided that, prior to execution of any such agreement, (a) each such agreement has been approved by the President of the institution or approved designee, and (b) the President, or approved designee, has executed a Form G for that agreement approving the agreement with full knowledge of the scope of the deviations from the U.T. System Intellectual Property Policy or Guidelines.
B. However, OGC shall approve any agreement listed above when the agreement dollar amount exceeds $1,000,000. The request for OGC approval must be accompanied by a letter from the President or designee in a form specific for the type of agreement submitted (i.e., Attachments A-E, G or Q). An institution may request an increase in its dollar threshold by submitting a written request to the Vice Chancellor and General Counsel who may approve the increase, in whole or in part, if he determines that it is in the best interest of the institution and the UT System. After OGC approval is granted, OGC will send a courtesy copy of each agreement to both Executive Vice Chancellors and the Vice Chancellor for Research and Technology Transfer.
II. Agreements Requiring Office of General Counsel Review and Approval Prior to Execution
A. Prior to execution, an electronic copy of all other proposed sponsored research agreements must be forwarded to the OGC for review and approval pursuant to the Regents’ Rules prior to execution.
B. Each agreement shall be accompanied by a form letter (i.e., Attachment F or F-S) from the President or designee for agreements that conform to UT System Intellectual Property Policy.
C. OGC shall approve all of the agreements listed above when the dollar amount exceeds $1,000,000. The request for OGC approval must be accompanied by a letter from the President or designee in a form specific for the type of agreement submitted (i.e., Attachments F or FS.). ). An institution may request an increase in its dollar threshold by submitting a written request to the Vice Chancellor and General Counsel who may approve the increase, in whole or in part, if he determines that it is in the best interest of the institution and the UT System. After OGC approval is granted, OGC will send a courtesy copy of each agreement to both Executive Vice Chancellors and the Vice Chancellor for Research and Technology Transfer.
D. The institution may send the original signed sponsored research agreement to the sponsor after OGC approval.
NOTE: Institutions are encouraged to contact OGC directly for legal advice and assistance at any stage of negotiation or contract preparation. Institutions should contact OGC upon identification of all proposed agreements that shall be developed as company master or universal agreements.
III. Criteria for OGC Approval of Certain Agreements
The following guidelines should be considered in order for sponsored research agreements containing alterations to the Intellectual Property Policy or Guidelines to be approved by OGC in accordance with Board of Regents’ Rules and Regulations, Rule 90105 where the benefits from the level of funding for the proposed research and/or other consideration from the sponsor outweigh any potential disadvantage that may result from the policy deviation (these are usually referred to as "Form G Agreements"):
A. In the event that funding is conditioned on the grant to the sponsor of a royalty-free, non-exclusive license or other substantial intellectual property right, it is important that fair value be received for such rights because the State of Texas cannot subsidize private research. Consequently, consideration from the sponsor should include the following:
- Funding and/or other consideration (whether received in the form of cash, equipment, services or supplies) should have an estimated value of at least $50,000; and
- Overhead should be included at the rate normally charged by the institution.
B. Any grant of rights, whether in data, inventions or intellectual property, should be limited to results of research (a) conducted by the identified investigators; (b) directly funded by the sponsor; (c) arising directly from the performance of the agreement; and (d) arising during the term of the agreement
C. The proposed agreement must indemnify the institution and The University of Texas System and their Regents, officers, agents, representatives and employees (including the principal and other investigators) against any claim, loss or judgment arising from the sponsor’s exercise of rights with respect to or use of the research results.
D. The proposed research should comport with legitimate academic and university research interests, should not incur unrelated business income tax liability, and should not be conducted solely for the proprietary interests of the sponsor.
E. The likelihood of patentable inventions and significant potential commercial benefits arising from the research should be carefully considered.
F. The proposed agreement must conform to the Constitution, applicable laws of the state of Texas, and applicable federal laws and regulations.
FORMS AND TOOLS/ONLINE PROCESSES
These forms are located on the Office of General Counsel’s Intellectual Property page:
Forms A-G
Forms A-G for electronic transmission
Form F-Software
Form L
Form Q
Form Q for Electronic Transmission
APPENDIX
None
keywords: research, funding, sponsored research agreement, sponsored research agreements, intellectual property, academic, faculty
