3.1.1  This policy applies to all UT Southwestern personnel subject to Series 90101, Number 2, Section 2 of the Regents' Rules and Regulations (UT Southwestern Employees).

3.1.2  UT Southwestern Employees are required to disclose intellectual property to the Office for Technology Development prior to public disclosure by filing a completed Intellectual Property Questionnaire (IPQ), a copy of which is available from the Office for Technology Development or online at the Office for Technology Development's website.

Responsibilities of the Office for Technology Development

3.2.1  The Office for Technology Development staff reviews each disclosed intellectual property and recommends to the president, or his designee, specific action that UT Southwestern should take with regard to the invention.  The Office for Technology Development staff may consult UT Southwestern's Intellectual Property Advisory Committee before making such recommendation.

3.2.2  When the president, or his designee, decides to patent or copyright an intellectual property, the Office for Technology Development contracts with outside intellectual property counsel approved by the Texas Attorney General's Office and UT System to obtain the appropriate protection.  Inventors must assist throughout this process to ensure getting the strongest intellectual property protection.  UT Southwestern bears the expense of protecting such intellectual property.

3.2.3  The Office for Technology Development determines how to commercialize inventions.  Inventions need not be patented or copyrighted to be commercialized.

3.2.4  The Office for Technology Development defines inventors consistent with U.S. patent law regardless of the manner in which the intellectual property is protected.

3.2.5  The Office for Technology Development negotiates and administers all agreements relating to intellectual property owned by The Board of Regents (Board) for and on behalf of UT Southwestern.  Such agreements may include, but are not limited to, confidential disclosure agreements, distribution agreements, joint ownership agreements, option agreements, and license agreements.  Board and UT Southwestern may grant licenses of any type, including, but not limited to, exclusive or nonexclusive licenses.  No arrangement with any commercial entity may undermine UT Southwestern's basic missions and must be carried out in a manner that does not place UT Southwestern or inventors in a position of having or appearing to have a conflict of interest.  In addition, all license agreements must provide UT Southwestern and its inventors protection from undue restrictions of scientific publication and provide full indemnification and use of name restrictions.

3.2.6  Intellectual property agreements may yield a variety of different financial payments, which may include, but are not limited to, up-front license fees, milestone payments, royalties and equity.  All such income will be received through the Office for Technology Development, which will maintain accounts documenting intellectual property expenses, income and disbursement.

Policy for Disbursing Non-equity Compensation Generated Through Licensing

3.3.1  Before disbursing licensing income, UT Southwestern will deduct the expenses it incurred to protect, manage, and transfer the intellectual property.  Additionally, UT Southwestern may withhold a portion of the income received through licensing to meet expected future expense obligations.

3.3.2  Disbursable net licensing income for licensed intellectual property will be distributed according to the following formula:

Licensing income retained by UT Southwestern may be used for research, managing intellectual property, and creating technology development services.

*Note that the Laboratory Share is distributed ONLY in the period that the inventor remains a UT Southwestern employee; should the inventor leave UT Southwestern, the inventor(s') Laboratory Share is retained by UT Southwestern.

3.3.3  By-products of research are defined as assets that are (i) not covered by an issued patent or pending patent application (current or past) and (ii) limited to a finite quantity.  Examples of by-products of research include purified proteins and antibodies.  Disbursable income for the transfer of by-products of research will be distributed according to the following formula:

No inventor will receive a Personal Share of income from the licensing of by-products of research.

3.3.4  If multiple inventors are due to receive Personal Shares resulting from a license generating income, the inventors must submit a written revenue sharing agreement signed by all inventors to the Office for Technology Development.  The revenue sharing agreement must specify how disbursable income from a license should be propotionally divided amongst the inventors.  The revenue sharing agreement will apply only to income received after its filing date in the Office for Technology Development.  The first filed revenue sharing agreement shall apply to any previously received income.  Revenue sharing agreements may be superceeded at any time so long as any new revenue sharing agreement satisfies the criteria of this section.  If inventors cannot agree on an appropriate revenue sharing agreement, all such disputes will be settled according to Chapter XII, subsection 4.35 of the Regents' Rules and Regulations.

3.3.5  The proportion by which the inventors agree to share their Personal Shares is applied to their Laboratory Shares. Laboratory Shares due to inventors no longer at UT Southwestern accrue to UT Southwestern.

3.3.6  With UT Southwestern's president's approval, inventors may assign their Personal Shares to UT Southwestern and designate such income be added to their Laboratory Shares.  A written assignment must be submitted to the Office for Technology Development, and, if approved, only applies to the income received subsequent to the assignment date.  If the assignment is revoked, such revocation only applies to the income received subsequent to the revocation date

3.3.7  Disbursements are made twice annually.

Equity Ownership and Business Participation

3.4.1  UT Southwestern may accept equity in business entities as compensation for intellectual property rights conveyed to such entity.  In addition, UT Southwestern may accept Founding Shares in startup companies as compensation for its efforts in forming these companies.  Each type of equity is handled differently:

Publicly traded equity received for technology licensed to an entity will be shared according to the following formula:

Private equity received for technologies licensed to an entity will be shared according to following formula:

All Founders Shares received by UT Southwestern for its activities in the formation of a company are retained by UT Southwestern and are not subject to sharing.

3.4.2  Any inventor who receives a Personal Share in equity is subject to a Conflict of Interest Management Plan which must be approved by UT Southwestern's president, UT System's Office of General Counsel and Executive Vice Chancellor for Health Affairs.