Revising the Intellectual Property Policy and other Administrative Policies involving Intellectual Property

Contract Administration (Chapter XI) Subsection: 1.2
Intellectual Property Policy (Chapter XII) Subsections: 2.1 | 2.3 | 2.4 | 2.8
8.1 | 9.1 | 9.2 | 9.3
Administrative Policies: Plain English IP Policy | Copying Copyrighted Works |
Regental Policy: Copyright Management

Proposed Revisions to Contract Administration, Regents Rules, Part Two, Chapter XI and the Intellectual Property Policy, Regents' Rules, Part Two, Chapter XII

The proposed Rules revisions will:

• Chapter XI, Subsection 1.2: Make general delegation of authority apply to intellectual property agreement that grant an interest in Board intellectual property.
  
  
• Chapter XII, Subsection 2.1: Make explicit the application of the Intellectual Property Policy to all students.
  
  
• Subsection 2.3: Broaden the application of the "scholarly works" exception:
  
  
  • to add teaching materials to those covered by this section
  • to grant ownership to professional staff, non-faculty researchers and graduate students, as well as faculty authors
  • to encourage copyright owners to effectively manage their copyrights
  • to clarify when software is owned as a scholarly or education material rather than an invention
    
    
• Subsection 2.4: Clarify the relationship between
  
  
  • works within the scope of employment, generally, and commissioned works; and
  • works covered by this Section and Section 2.3
    
    
• Subsection 2.8: Explicitly prohibit the use of System facilities to develop inventions released to the inventor except as expressly authorized.
  
  
• Subsection 8.1: Correct an improper requirement for Board approval.
  
  
• Subsection 91, 9.2 and 9.3: Allow all intellectual property agreements covered by this chapter to be processed like other agreements.
  
  
• Subsection 9.3: Delegate authority to execute copyright registration applications to component executives.

• Subsection 1.2: This Chapter applies to all contracts and agreements except contracts or agreements relating to personnel, faculty, athletics or athletic events, real properties (except the lease of space for use by a component), physical plant improvements, acceptance or administration of gifts or bequests, intellectual properties owned or controlled by the Board, contracts and grants for sponsored research, contracts for legal services, and agreements to settle claims, disputes, or litigation.

The Problem:

Chapter XI's general provisions for processing agreements have not applied to intellectual property agreements, but there is a general consensus that intellectual property agreements should be treated the same as all others.

Recommendation:

Remove the intellectual property exclusion.

Revised 1.2:

1.2 This Chapter applies to all contracts and agreements except contracts or agreements relating to personnel, faculty, athletics or athletic events, real properties (except the lease of space for use by a component), physical plant improvements, acceptance or administration of gifts or bequests, contracts and grants for sponsored research, contracts for legal services, and agreements to settle claims, disputes, or litigation.

Redline:

1.2 This Chapter applies to all contracts and agreements except contracts or agreements relating to personnel, faculty, athletics or athletic events, real properties (except the lease of space for use by a component), physical plant improvements, acceptance or administration of gifts or bequests, [intellectual properties owned or controlled by the Board,] contracts and grants for sponsored research, contracts for legal services, and agreements to settle claims, disputes, or litigation.

• Subsection 2.1: The intellectual property policy shall apply to all persons employed by the U. T. System and the component institutions of the System, to anyone using System facilities under the supervision of System personnel, to candidates for masters and doctoral degrees, and to postdoctoral and predoctoral fellows.

The Problem:

Most components handle all student-created intellectual property the same, regardless of whether the student is an undergraduate or graduate student.

Recommendations:

Include undergraduates.

Revised 2.1:

2.1 The intellectual property policy shall apply to all persons employed by the U.T. System and the component institutions of the System, to anyone using System facilities under the supervision of System personnel, to undergraduates, to candidates for masters and doctoral degrees, and to postdoctoral and predoctoral fellows.

Redline:

2.1 The intellectual property policy shall apply to all persons employed by the U.T. System and the component institutions of the System, to anyone using System facilities under the supervision of System personnel, to undergraduates, to candidates for masters and doctoral degrees, and to postdoctoral and predoctoral fellows.

• Subsection 2.3: The Board will not assert an interest in faculty authored scholarly works, art works, musical compositions and dramatic and non-dramatic literary works related to the faculty member's professional field, regardless of the medium of expression, unless such work is commissioned by the System or a component institution of the System or is a work for hire pursuant to Subsection 2.4.

The Problems:

• The electronic environment encourages and enables creation of new kinds of faculty-authored works, including works that are costly to produce but easy to copy. This makes cost recovery more important, but also more difficult. On the other hand, while there is considerable interest in commercializing multimedia teaching materials and extending the reach of in-class materials to remote locations through distance learning, commercialization may increase university costs to use such materials.
  
  
• Although it is not clear that the works described in Subsection 2.3 include instructional materials, we have always treated them as though the Subsection applies to them. This may not have been an issue until these works began to cost more to produce, to have distance learning application, to embody ideas we traditionally think of as inventions and to show commercial potential. The allocation of interests in such a work is very difficult. An example of such a work might be an interactive computerized patient management system developed by a faculty member at a health component, or a software tool to analyze different management structures developed by a business school faculty member.
  
  
• Increasingly, it is not just faculty members who author the works covered by Subsection 2.3. University professionals in many fields are involved in the process of scholarly communication and professional education and may need to use their works outside the System.
  
  
• Complex new relationships among creators, distributors and consumers of educational materials highlight the need to reevaluate the Board's interest in these works. For example, the cost to acquire rights to use scholarly works created on our campuses are escalating at a pace that far exceeds our libraries' abilities to acquire them. The University's role in management of its copyright resources has been mostly passive. It is time for a more active role.

• What should 2.3 apply to:
  
  
  • Traditional journal articles, monographs
  • Educational materials contained in textbooks, trade books, workbooks, and similar materials in newer formats like cd-roms, multimedia courseware, etc.
  • Artistic works
  • Literature and drama
  • Music
  • Software in some cases (when the content is primarily within the categories described in 2.3).
    
    
• Who should 2.3 apply to:
  
  
  • Undergraduate students
  • Graduate students
  • Faculty members
  • Non-faculty researchers
  • Any professional employees who creates materials similar to the described works as part of his or her work
    
    
• Should authors retain an interest in their Subsection 2.3 works when they submit them for publication?
  
  

Recommendations:

1. Clarify that educational materials are covered by Subsection 2.3.

2. Broaden the class of persons who own copyright in works covered by Subsection 2.3 by including professionals, researchers that do not actually teach and undergraduate and graduate students (candidates for masters and doctoral degrees).

3. Encourage students, professionals, faculty and research authors to actively manage their copyrights. Provide further guidance on these issues in a Regental Policy on Copyright Management.

4. Delete the referenced exception for commissioned works and works for hire from this section and place a cross-reference at the beginning of Section 2.4 that indicates that Section 2.4 controls if a work is scholarly and commissioned.

5. Clarify when this Subsection, rather than Subsections 5.2 and 5.3, applies to the issue of software ownership.

Revised 2.3: The Board shall assert its interest in scholarly or educational materials, art works, musical compositions and dramatic and non-dramatic literary works related to the author's academic or professional field, regardless of the medium of expression, as follows:

• 2.31 Students, professionals, faculty and researcher authors.--The Board shall not assert ownership of works covered by this Subsection authored by students, professionals, faculty and nonfaculty researchers. The Board encourages these authors to carefully manage their copyrights. The Board retains certain rights in these works as set forth in the Policy and Guidelines for Management and Marketing of Copyrighted Works.

• 2.32 Software.--The Board normally shall assert ownership of copyright in software as an invention; however, original software which is content covered by Subdivision 2.31, or that is integral to the presentation of such content, shall be owned in accordance with Subdivision 2.31.

Redline:

2.3 The Board shall [will not] assert its [an] interest in [faculty authored] scholarly or educational materials, [works] art works, musical compositions and dramatic and non-dramatic literary works related to the author's academic or [faculty member's] professional field, regardless of the medium of expression, as follows [unless such work is commissioned by the System or a component institution of the System or is a work for hire pursuant to Subsection 2.4]:

2.31 Students, professionals, faculty and researcher authors.--The Board shall not assert ownership of works covered by this Subsection authored by students, professionals, faculty, and nonfaculty researchers. The Board encourages these authors to carefully manage their copyrights. The Board retains certain rights in these works as set forth in the Policy and Guidelines for Management and Marketing of Copyrighted Works.

2.32 Software.--The Board normally shall assert ownership of copyright in software as an invention; however, original software which is content covered by Subdivision 2.31, or that is integral to the presentation of such content, shall be owned in accordance with Subdivision 2.31.

• Subsection 2.4: The Board shall have sole ownership of all intellectual property that it commissions or that is produced as a work for hire for the System or a component institution of the System. Except as may be provided otherwise in a written agreement approved by the chief administrative officer of the component institution and the Chancellor, the provisions of Subdivision 5.23 relating to division of royalties shall not apply to intellectual property owned solely by the Board pursuant to this Subsection 2.4.

The Problem:

• This Subsection excepts from full application of the Policy and asserts Board ownership of all works that are specifically contracted for or that are "works for hire." The words, "works for hire" are terms of art, however, with specific legal meaning that is not consistent with their commonly understood definitions. Their use here causes a conflict between this section and other sections.
  
  

Recommendation:

1. Subsection 5.2 already asserts ownership by the Board over all works created within the scope of employment, among other bases for ownership. The intellectual properties carved out by Subsection 2.4 should be those created under other circumstances, that is, commissioned works, regardless of whether they fall within the statutory definition of work for hire.

2. Clarify that if a work is both a scholarly work under Subsection 2.3 and commissioned by the U.T. System or a component, this section controls who owns that work.

3. Replace the words, "or that is produced as a work for hire" with words that describe the circumstance where an employee is hired to produce works that would otherwise be subject to the royalty-sharing terms of the Policy.

4. Treat all work-related inventions and inventors similarly. Regardless of who invents, and so long as the employee was not commissioned or hired specifically to create the invention, Board should own the invention and all the provisions of the Policy (including but not limited to royalty-sharing) should apply.

Revised 2.4: Notwithstanding the provisions of Subsection 2.3, the Board shall have sole ownership of all intellectual property created by an employee who was hired specifically or required to produce it or commissioned by the System or a component institution of the System. Except as may be provided otherwise in a written agreement approved by the chief administrative officer of the component institution and the Chancellor, the provisions of Subdivision 5.23 relating to division of royalties shall not apply to intellectual property owned solely by the Board pursuant to this Subsection 2.4.

Redline:

2.4 Notwithstanding the provisions of Subsection 2.3, the [The] Board shall have sole ownership of all intellectual property created by an employee who was hired specifically or required to produce it or commissioned by [that it commissions or that is produced as a work for hire for] the System or a component institution of the System. Except as may be provided otherwise in a written agreement approved by the chief administrative officer of the component institution and the Chancellor, the provisions of Subdivision 5.23 relating to division of royalties shall not apply to intellectual property owned solely by the Board pursuant to this Subsection 2.4.

• Subsection 2.8 (new): Neither the facilities nor the resources of System or its component institutions may be used (i) to create, develop or commercialize intellectual properties unrelated to an individual's employment responsibilities (See Subsection 4.1); or (ii) to further develop or commercialize intellectual properties that have been released to an inventor (See Subdivision 5.22) except as the component institution's chief administrative officer and the appropriate Executive Vice Chancellor may approve where System retains an interest under the terms of the release.

  • Recommended to reflect current practices.

• Subsection 8.1: Any employee covered by Subsections 6.2, 7.1, or 7.2 shall report in writing to the chief administrative officer of the component institution, or to such other person as may be designated by the chief administrative officer, the name of any business entity as referred to therein in which the person has an interest or for which the person serves as a director, officer or employee and shall be responsible for submitting a revised written report upon any change in the interest or position held by such person in such business entity. These reports shall be accumulated in the office of the chief administrative officer or designee and then forwarded to the appropriate Executive Vice Chancellor by September 1 of each year so that the Chancellor may file a report with the Board at its October meeting. After the report has been approved by the Board, the Chancellor shall prepare the report to the Governor and the Legislature required by Section 51.912(c), Texas Education Code.
  
  
  • Revise to reflect the fact that the cited report does not have to be approved by the Board, but is submitted on the Board's behalf.

Revised 8.1: Any employee covered by Subsections 6.2, 7.1, or 7.2 shall report in writing to the chief administrative officer of the component institution, or to such other person as may be designated by the chief administrative officer, the name of any business entity as referred to therein in which the person has an interest or for which the person serves as a director, officer or employee and shall be responsible for submitting a revised written report upon any change in the interest or position held by such person in such business entity. These reports shall be accumulated in the office of the chief administrative officer or designee and then forwarded to the appropriate Executive Vice Chancellor or Vice Chancellor by September 1 of each year so that the Chancellor may file a report with the Board. Information in the report shall be included in the annual report required by Section 51.912(c), Texas Education Code.

Redline:

8.1 Any employee covered by Subsections 6.2, 7.1, or 7.2 shall report in writing to the chief administrative officer of the component institution, or to such other person as may be designated by the chief administrative officer, the name of any business entity as referred to therein in which the person has an interest or for which the person serves as a director, officer or employee and shall be responsible for submitting a revised written report upon any change in the interest or position held by such person in such business entity. These reports shall be accumulated in the office of the chief administrative officer or designee and then forwarded to the appropriate Executive Vice Chancellor or Vice Chancellor by September 1 of each year so that the Chancellor may file a report with the Board . Information in the report shall be included in the annual report [at its October meeting. After the report has been approved by the Board, the Chancellor shall prepare the report to the Governor and the Legislature] required by Section 51.912(c), Texas Education Code.

• Section 9.1: Sponsored research agreements, except as provided below, and license agreements, except trademark license agreements on a standard form, that grant to a third party an interest in intellectual property shall be approved by the Board on the institutional docket following review by the Office of General Counsel and approval by the chief administrative officer and the appropriate Executive Vice Chancellor. Agreements such as clinical trial agreements, pre-clinical laboratory studies, material transfer agreements, nondisclosure agreements, and trademark license agreements on a standard form that do not require the review of the Office of General Counsel may be executed and delivered in accordance with the provisions of the Regents' Rules and Regulations, Part Two, Chapter XI.

• Section 9.2: Any document altering substantially the basic intellectual property policy of the System as set out in the preceding Sections and other policies and guidelines that may be adopted by the Board shall have the advance approval of the chief administrative officer, the appropriate Executive Vice Chancellor, the Chancellor, and the Board as an agenda item. Such an alteration in a sponsored research agreement shall not be considered substantial and may be approved by the Board on the institutional docket if, in the judgment of the chief administrative officer and with the concurrence of the appropriate Executive Vice Chancellor, 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.
  
  

  • Delegate approval and execution of all intellectual property agreements that conform to the intellectual property policy to component institutions.

The Problem:

Routine intellectual property agreements are processed differently from all other contracts. The extra requirements do no appear to benefit components or System.

Recommendation:

Revise Section 9 to allow all intellectual property agreements covered by this chapter to be processed like other agreements.

Revised 9.1: Agreements that grant an interest in Board intellectual property may be executed and delivered in accordance with the provisions of the Regents' Rules and Regulations, Part Two, Chapter XI following any required review by the Office of General Counsel.

Revised 9.2: Any document altering substantially the basic intellectual property policy of the System as set out in the preceding Sections and other policies and guidelines that may be adopted by the Board shall have the advance approval of the chief administrative officer, the appropriate Executive Vice Chancellor or Vice Chancellor, the Chancellor, and the Board as an agenda item. Such an alteration in a sponsored research agreement shall not be considered substantial and the agreement may be executed and delivered as set forth in Section 9.1 if, in the judgment of the chief administrative officer and with the concurrence of the appropriate Executive Vice Chancellor or Vice Chancellor, 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.

Redline:

9.1 Agreements that grant an interest in Board intellectual property may be executed and delivered in accordance with the provisions of the Regents' Rules and Regulations, Part Two, Chapter XI, following any required review by the Office of General Counsel. [Sponsored research agreements, except as provided below, and license agreements, except trademark license agreements on a standard form, that grant to a third party an interest in intellectual property shall be approved by the Board on the institutional docket following review by the Office of General Counsel and approval by the chief administrative officer and the appropriate Executive Vice Chancellor. Agreements such as clinical trial agreements, pre-clinical laboratory studies, material transfer agreements, nondisclosure agreements, and trademark license agreements on a standard form that do not require the review of the Office of General Counsel may be executed and delivered in accordance with the provisions of the Regents' Rules and Regulations, Part Two, Chapter XI.]

Redline:

9.2 Any document altering substantially the basic intellectual property policy of the System as set out in the preceding Sections and other policies and guidelines that may be adopted by the Board shall have the advance approval of the chief administrative officer, the appropriate Executive Vice Chancellor or Vice Chancellor, the Chancellor, and the Board as an agenda item. Such an alteration in a sponsored research agreement shall not be considered substantial and the agreement may be executed and delivered as set forth in Section 9.1 [approved by the Board on the institutional docket] if, in the judgment of the chief administrative officer and with the concurrence of the appropriate Executive Vice Chancellor or Vice Chancellor, 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.

• Section 9.3: The Chancellor, the appropriate Executive Vice Chancellor, the Vice Chancellor and General Counsel or the authorized representative of UTIMCO may execute, on behalf of the Board, legal documents relating to the Board's rights in intellectual property, including, but not limited to, declarations, affidavits, powers of attorney, disclaimers, and other such documents relating to patent applications and patents; applications, declarations, affidavits, affidavits of use, powers of attorney, and other such documents relating to trademarks; applications for registration of and other such documents relating to copyrights; and license and assignment documents approved by the Board pursuant to Subsections 9.1 or 9.2.
  
  

  • Revise to reflect delegation implemented in 9.1 and 9.2 and also to delegate authority to components for execution of all applications for registration or recording of transfers, etc., of copyright.
    
    

Revised 9.3: The Chancellor, the appropriate Executive Vice Chancellor or Vice Chancellor, the Vice Chancellor and General Counsel or the authorized representative of UTIMCO may execute, on behalf of the Board, legal documents relating to the Board's rights in intellectual property, including, but not limited to, declarations, affidavits, powers of attorney, disclaimers, and other such documents relating to patent applications and patents; applications, declarations, affidavits, affidavits of use, powers of attorney, and other such documents relating to trademarks; and other documents approved pursuant to Subsections 9.1 or 9.2. The chief administrative officer or designee may execute, on behalf of the Board, institutional applications for registration or recordation of transfers of ownership and other such documents relating to copyrights.

Redline:

9.3 The Chancellor, the appropriate Executive Vice Chancellor or Vice Chancellor, the Vice Chancellor and General Counsel or the authorized representative of UTIMCO may execute, on behalf of the Board, legal documents relating to the Board's rights in intellectual property, including, but not limited to, declarations, affidavits, powers of attorney, disclaimers, and other such documents relating to patent applications and patents; applications, declarations, affidavits, affidavits of use, powers of attorney, and other such documents relating to trademarks; [applications for registration of and other such documents relating to copyrights;] and other [license and assignment] documents approved [by the Board] pursuant to Subsections 9.1 or 9.2. The chief administrative officer or designee may execute, on behalf of the Board, institutional applications for registration or recordation of transfers of ownership and other such documents relating to copyrights.

A Plain English Intellectual Property Policy

Repeated interactions with those faculty, students and administrators directly affected by the Policy show that it is unclear, even to those who make concerted effort to understand it. A Plain English Version should help to promote understanding of and compliance with the provisions of the Policy.

Revisions to the Policy on Copying Copyrighted Materials

• Implement minor revisions to basic policy
  
  
• Completely rewrite to create a plain English version.

  Our current Policy does not effectively guide behavior because it is difficult to understand.

  • Explain the law
  • Explain Guidelines and Rules of Thumb
  • Explain faculty, student and staff liability for failure to follow the Policy
    
    
• Link to all CONFU Guidelines as well as Classroom Guidelines
  
  
• New Rules of Thumb for fair use in each context covered by a Guideline (or a case):
  
  
  • Coursepacks
  • Electronic reserves
  • Research copies
  • Educational use of digital images
  • Multimedia works
  • Software
    
    
• Link to the FAQ for other questions about fair use
  
  
• Link to the Copyright Crash Course

Create a Copyright Correlate to the Policy and Guidelines for Management and Marketing of Intellectual Property

• Generally address copyright management of Board-owned and author-owned copyright works
  
  
  • Acknowledge the value of copyrights
  • Set out the circumstances that require components to
    
    
    • enter contracts that allocate rights to use facilities and the resulting work, reimburse extraordinary expenses and/or share royalties from the creation of copyright works that belong to a faculty member or are jointly owned with the University or others; or
      
      
    • set default provisions addressing these concerns.
  • Encourage electronic distribution of results of research within university community
  • Provide examples of copyright management that advance the purposes of the Policy
  • Raise issues for consideration in commercial exploitation of Board-owned educational materials

Copyright Crash Course | Intellectual Property Section Homepage

University of Texas System | Office of General Counsel

Comments to intellectualproperty@utsystem.edu
Last updated: November 12, 2001