Intellectual Property Policy

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Policy Number: 333

Policy Suffix:

I. General Policy

Rice University’s intellectual property policy (“Intellectual Property Policy”) seeks to foster research, encourage innovation, support commercialization efforts, and make certain technologies available to the private and public sectors for the benefit of the world in a manner that is consistent with Rice University’s commitment to academic and educational excellence. The purpose of this document is to set forth a general policy consistent with these aims that defines the rights and obligations of Rice University’s faculty, staff, students, visiting scientists and visiting scholars with regard to intellectual property. For the purposes of this Intellectual Property Policy, intellectual property shall include inventions, discoveries, research data, works of authorship and software, and tangible research property regardless of whether subject to protection under patent, trademark, copyright, or other laws (“Intellectual Property”).

II. Roles and Responsibilities

A. Office of the Provost

The Office of the Provost is primarily responsible for the implementation of this Intellectual Property Policy. As the chief academic officer of Rice University, the Provost makes all final decisions related to Rice University’s Intellectual Property Policy and bears ultimate authority for the management and commercialization of its Intellectual Property.

B. Office of Research

The Office of Research is within the Office of the President and is led by the Executive Vice President for Research (“EVPR”). The Office of Research is responsible for overseeing, managing, and promoting research at Rice University. Specifically, the Office of Sponsored Projects and Research Compliance (“SPARC”), within the Office of Research, assists with the submission of federal grants and oversees activities related to research compliance. The Office of Technology Transfer (“OTT”), also within the Office of Research, (i) negotiates agreements related to research with external partners and (ii) oversees the management of the Rice University Intellectual Property portfolio, including the invention disclosure process, the commercial evaluation of inventions, patent filing decisions, and the negotiation of licensing agreements with industry.

III. Definitions

Consulting shall mean providing professional services related to an individual’s research field or discipline in exchange for something of value.

Exempt Programs shall mean those specific programs established to support education in innovation or entrepreneurship that are designated “exempt” from the “significant use” requirement by the EVPR as described in Section IV.C.2. below.

Intellectual Property shall mean inventions, discoveries, research data, works of authorship and software, and tangible research property regardless of whether subject to protection under patent, trademark, copyright, or other laws.

Intellectual Property Agreement shall mean that intellectual property and confidentiality agreement with Rice University that, with the exception of Visiting Scientists, is to be signed by all individuals subject to this Intellectual Property Policy, as further described in Section IV.E.1. below.

Intellectual Property Policy shall mean this policy document (Rice University Policy No. 333).

Release shall mean that agreement with Rice University granting certain rights to the creators/inventors of Rice University Intellectual Property, as further described in Section V.C. below.

Revenue Sharing Agreement shall mean that agreement between all of the inventors or creators of licensed Rice University Intellectual Property specifying how the inventor/creator share of any license revenue received by Rice University will be distributed, as further described in Section V.B.3.c. below.

Rice University Intellectual Property shall mean Intellectual Property owned by Rice University.

Start-up shall mean any entity (i) founded by an employee of Rice University and/or (ii) founded based on or using Rice University Intellectual Property. This includes, but is not limited to, companies, corporations, partnerships, sole proprietorships, and non-profit organizations, whether they are incorporated or not.

Tangible By-Products of Research shall mean any fixed and finite quantity of material that is (i) generated by Rice University research; and (ii) not covered by an issued patent or patent application assigned to Rice University; and (iii) not capable of self-replication, as further described in Section V.B.3.b. below.

Technology Disclosure Form shall mean the form used to disclose Intellectual Property to Rice University (Technology Disclosure Form) and as further described in Section V.A. below.

Visiting Scientists shall mean scientists and scholars who are visiting Rice University in order to conduct, or who are currently conducting, research on Rice University campus. This designation includes, but is not limited to, those individuals with visiting faculty positions, short-term fellowships and those pursuing like research opportunities with limited duration.

IV. Ownership of Intellectual Property

A. Intellectual Property Owned by Rice University

Rice University shall own Intellectual Property that is generated, conceived, created or first reduced to practice:
- in the conduct of Rice University research, including, but not limited to, research under a third-party contract with Rice University; or
- with the significant use of funds or facilities administered by Rice University; or
- within the course or scope of the inventor’s/creator’s employment at Rice University; or
- pursuant to a written agreement between the inventor/creator and Rice University providing for a transfer of the ownership of such Intellectual Property to Rice University.
An inventor or creator of Rice University Intellectual Property has no independent right or authority to convey, assign, encumber, or license such Intellectual Property other than to Rice University, with the sole exception of certain software as specified in Rice’s Software Guidelines.

B. Intellectual Property Not Owned by Rice University

Rice University will not claim ownership to Intellectual Property that is generated, conceived, created or first reduced to practice:
- outside of the conduct of Rice University research; and
- without the significant use of funds or facilities administered by Rice University; and
- outside of the course and scope of the inventor’s/creator’s employment at Rice University; and
- in the absence of a written agreement between the inventor/creator and Rice University providing for a transfer of the ownership of such Intellectual Property to Rice University.
  
  Upon Rice University’s determination that Intellectual Property meets each of the criteria listed above, such Intellectual Property will be presumed to be owned by the inventor/creator and/or their assigns and Rice University will make no claim to such Intellectual Property. The responsibility of determining whether Intellectual Property meets the ownership criteria of this Section B.1. falls to Rice University to allow it to fulfill its diligence obligations to federal agencies and other third-party sponsors. All decisions regarding ownership determinations may be appealed to the Provost.
Additionally, unless the Intellectual Property is created pursuant to a work-for-hire agreement with or on behalf of Rice University, Rice University shall not own the copyright to certain scholarly works, literary works, art works, architectural works, musical works, syllabi, and textbooks in accordance with Rice University Copyright Policy, Policy 334.

C. Significant Use of Rice University Resources

The issue of whether or not there has been a “significant use of” Rice University’s funds or facilities with respect to this Intellectual Property Policy will be reviewed by OTT on a case-by-case basis. OTT will render its recommendation to the EVPR who will make decisions on any interpretation or dispute regarding the “significant use of” funds or facilities relating to Intellectual Property created hereunder. The decisions and findings of the EVPR may be appealed to the Provost who, in consultation with the Office of the General Counsel, makes the final decision on issues of “significant use.” Generally, Intellectual Property will not be considered to have been developed using Rice University’s funds or facilities if such Intellectual Property was developed (i) with only a minimal use of such funds; and (ii) outside the course and scope of the employment of the specific employee; and (iii) with only minimal use of significant Rice University’s facilities (note: offices, libraries, and computers are examples of facilities and equipment that, when used in a limited capacity, are not considered significant).
Specific programs established to support education in innovation or entrepreneurship may be designated “exempt” from the “significant use” requirement (“Exempt Programs”). Any Intellectual Property developed using the resources or facilities of Rice University solely as part of the inventor’s/creator’s participation in an Exempt Program will be treated as a non-significant use Rice University’s resources and facilities when determining Intellectual Property ownership. A current list of Exempt Programs is maintained by the EVPR.

D. Individuals Subject to this Intellectual Property Policy

With the exception of students who are specifically governed by Section IV.D.2. below, the provisions of this Intellectual Property Policy will apply to anyone employed by Rice University, as well as to anyone participating in research programs that use significant funds or facilities of Rice University, including, but not limited to, Visiting Scientists.
Students
1. Intellectual Property Owned by Rice University Students
  
  A student enrolled at Rice University, such as in a graduate or undergraduate degree program or certificate program, owns the Intellectual Property they create (i) in fulfilling the requirements of a Rice University-approved class and/or a course, or (ii) during extracurricular activities not including any type of work study or work-for-hire activities compensated by Rice University, or (iii) on the student’s personal time (i.e. while the student is not being compensated to work for or on behalf of Rice University in any capacity), or (iv) while using the resources and facilities of Rice University that are commonly provided for a student’s use and for which a student has paid tuition and/or fees, or (v) solely in conjunction with an Exempt Program, so long as in each instance listed above, the student is not using the proprietary information of Rice University for the creation of such Intellectual Property.
  
  For clarity, however, if any of the provisions of the following Section IV.D.2.b. below are met, Rice University shall own the Intellectual Property created by Rice University students.
2. Intellectual Property Owned by Rice University and Not Rice University Students
  
  Notwithstanding Section IV.D.2.a. above, Rice University will own Intellectual Property created by students under the following circumstances:
  - The student is also an employee of Rice University and the Intellectual Property is developed within the course or scope of their employment at Rice University, in which case the provisions of this Intellectual Property Policy relating to employees under Section IV.A. shall apply; or
  - The student develops the Intellectual Property as part of a work-for-hire or institutional project under the terms of a written agreement providing for a transfer of ownership of Intellectual Property to Rice University, in which case the terms of the written agreement govern the ownership of such Intellectual Property; or
  - The student develops the Intellectual Property as a result of participation in a research program where any Intellectual Property created under that research program has already been committed to, or is previously encumbered by an existing agreement with, a governmental, philanthropic, corporate or other sponsor; or
  - If the student jointly creates the Intellectual Property with an employee of Rice University, the student will be treated as an employee for determining Intellectual Property ownership of the jointly created or developed Intellectual Property; or
  - The student creates Intellectual Property during the course of a research activity that is governed by a contract between Rice University and a third-party entity.

E. Intellectual Property Agreements

Prior to conducting any research on behalf of Rice University either under a sponsored research agreement or with the significant use of funds or facilities administered by Rice University, all individuals subject to this Intellectual Property Policy, including, but not limited to, faculty, staff, students, and postdoctoral fellows, must review, execute and sign the Rice University intellectual property and confidentiality agreement ("Intellectual Property Agreement"). By executing the Intellectual Property Agreement, these individuals do (a) agree to assign and hereby do assign to Rice University all of their title, right and interest to Intellectual Property created through the use of such significant funds or facilities and (b) agree to promptly execute and deliver all documents and other instruments as are reasonably necessary to reflect Rice University’s ownership of this Intellectual Property.
Non-employees, including Visiting Scientists and fellows, who intend to participate in research projects that employ (i) the use of Rice University funds and/or (ii) the significant use of Rice University facilities and/or (iii) the use of third party funds or materials obtained through Rice University must enter into an agreement that addresses the management of intellectual property and confidentiality consistent with the provisions of this Intellectual Property Policy and the federal funding and/or contractual obligations of Rice University prior to participating in any such research. The terms of such agreement will depend on the research being contemplated, the obligations of Rice University with respect to that research and the assignment obligations of the Visiting Scientist.

V. Administrative Procedures

A.Disclosing Intellectual Property to the Office of Technology Transfer

In accordance with the provisions of Section V.A.2. below, individuals may freely publish or otherwise publicly disclose their research if the content and manner of their publication or public disclosure are consistent with the provisions of the agreements that supported the research (e.g., sponsored research agreements, collaboration agreements, etc.). In all other circumstances, Intellectual Property that is created during the course of a sponsored research agreement or under a third-party contract with Rice University must be disclosed to OTT in a timely fashion shortly after such Intellectual Property is created and/or reduced to practice; however, in all cases, such Intellectual Property must be disclosed to OTT before it is (i) disclosed to a party other than the relevant sponsor and/or third party; or (ii) used for commercial purposes; or (iii) published or otherwise placed in the public domain. Disclosures of Intellectual Property to Rice University should be made using the Technology Disclosure Form.
Individuals who are covered by this Intellectual Property Policy are expected to apply reasonable judgment as to whether Intellectual Property has the potential for commercial development. If such commercial potential exists, the Intellectual Property should be disclosed to Rice University using the Technology Disclosure Form as outlined above. If, however, it is reasonable to conclude that the Intellectual Property is better served by being placed in the public domain, such individuals may choose to do so as long as the act of doing so does not violate the terms of any agreements that supported the work. If an individual elects to publicly disclose Intellectual Property without prior disclosure to and approval from Rice University, that individual will be responsible for ensuring that such public disclosure does not conflict with any pre-existing contractual obligations of Rice University or obligations to any third party whose material was used to develop such Intellectual Property. Individuals should contact the Office of Technology Transfer if they have any questions about any proposed public disclosure of Intellectual Property. In general, Rice University will not pursue protection for Intellectual Property placed in the public domain.

B. Licensing Rice University Intellectual Property

Licensing

Rice University wants to encourage and advance the commercial application of Rice University research for the public good through the licensing of its Intellectual Property to industry. However, the research and teaching missions of Rice University must always take precedence over intellectual property considerations, and the direction of Rice University research should not be guided or unduly influenced by patent considerations or personal financial interests. Any license agreements between Rice University and commercial entities must not undermine Rice University’s basic missions of education and research and must be carried out in a manner that does not create an unmanageable conflict of interest, actual or perceived, for Rice University or its faculty, staff, or students. Additionally, all license agreements must provide appropriate legal protection for Rice University and its faculty, staff, and students and must not restrict Rice University’s research and publication activities.
Start-Ups

Rice University may decide to license Intellectual Property to a “Start-up.” Before a license can be granted to a Start-up, Rice University will work with the Rice University employee founder(s) to ensure that any conflict, perceived or actual, is appropriately managed in accordance with the policies and practices of Rice University. Both Rice University and its employees have responsibilities to mitigate conflicts of interest when Rice University Intellectual Property is licensed or optioned to a Start-up. Faculty are responsible for separating Rice University duties for research and education from personal financial interests in a Start-up. Rice University and its employees should not provide or be perceived as providing Start-ups preferential treatment, and employees of Rice University should not represent the Start-up in contract negotiations with Rice University. Moreover, a Start-up must offer a viable plan to commercialize Rice University Intellectual Property in order to receive a license to such Intellectual Property. If a new Start-up is the best choice for commercializing Rice Intellectual Property, Rice University may ask for some equity ownership in the company, but Rice University is not obligated to accept such equity ownership in lieu of licensing fees or royalties.
Revenue Distribution
1. General
  
  In those instances where Rice University licenses its rights in Intellectual Property to third parties, the full cost of such licensing activities, including, but not limited to, the prosecution and legal costs of obtaining an issued patent or other intellectual property protection, must first be captured from any royalties or other license payments received by Rice University before any further income distribution can be made. Additionally, Rice University may retain a portion of the royalty and other income/consideration received from such a license in order to meet known future or expected expense obligations. In the majority of cases, the remainder of any such income (including, but not limited to, license fees, prepaid royalties, minimum royalties, running royalties, milestone payments, and sublicense payments, etc.) shall be divided as follows:
  - 37.5% will be distributed to the inventors/creators;
  - 18.5% will be retained by Rice University for use in supporting innovation;
  - 14% will be provided to the inventors’/creators’ sponsoring department or organizational unit; and
  - 30% will be retained by Rice University.
    
    In general, OTT will distribute the license income in accordance with this Intellectual Property Policy within a reasonable period of time after receipt thereof but no less frequently than one time per year; with each such distribution, OTT will include a summary of the total income received and the manner in which such income was, or will be, distributed. In the event that no such income distribution is to be made, the inventors/creators will be provided a summary of any license revenue received and/or retained by Rice University for that year.
2. Tangible-By-Products of Research
  
  In such instances where the license agreement enables the transfer of tangible by-products of research (“Tangible By-Products of Research”) for monetary consideration, 100% of any such income or consideration received will be distributed to the generating laboratory up to a cumulative $15,000 in any given fiscal year; thereafter, 75% of such income will go to the generating laboratory, with the remaining 25% being retained by Rice University. For the purposes of this Intellectual Property Policy, a Tangible By-Product of Research is defined as any fixed and finite quantity of material that is (i) generated by Rice University research; and (ii) not covered by an issued patent or patent application assigned to Rice University; and (iii) not capable of self-replication. Examples of Tangible By-Products of Research include, but are not limited to, finite quantities of purified proteins or enzymes, cell-free extracts, monoclonal antibodies, and polyclonal antibodies. Tangible By-Products of Research do not include software, proprietary methodologies, reproducible expression vectors (including cloned genes), hybridoma cell lines, and/or transgenic animals.
3. Revenue Sharing Agreements
  
  Income received from the licensing of Rice University Intellectual Property shall be distributed to the inventor(s) or creator(s) of such Rice University Intellectual Property in accordance with this Section V.B.3.c. If such Rice University Intellectual Property has more than one inventor or creator, such income shall be divided and shared among the inventors or creators in accordance with an explicit written agreement executed by all of the inventors or creators of the licensed Rice University Intellectual Property (“Revenue Sharing Agreement”). Each Revenue Sharing Agreement should clearly state how the income is to be distributed among the inventors or creators in terms of percentages or other similar means. A Revenue Sharing Agreement may be changed at any time with the written consent of all named inventors or creators who executed the original Revenue Sharing Agreement. Disagreements involving Revenue Sharing Agreements will be reviewed and resolved by OTT. Any resolution proposed by OTT may be appealed by seeking the input of the EVPR. The decision of the EVPR may be appealed to the Provost; in cases of such an appeal, the decision of the Provost shall be final.

C. Release or License of Rice University Intellectual Property

Rice University, in its sole discretion and consistent with the public interest, (i) may choose not to assert its ownership rights in any Intellectual Property that has been developed with the significant use of university funds or facilities (see Section IV.C. above); or (ii) may decide to assign its ownership rights in such Intellectual Property to the inventors/creators or (iii) may decide to license its rights in such Intellectual Property to the inventors/creators on an exclusive or nonexclusive basis (Subsections (i), (ii), (iii) collectively called “Release”). Decisions regarding whether to issue a Release of Intellectual Property to inventors/creators shall take into account the stage of development of the Intellectual Property and the obligations, if any, Rice University has assumed from any contracts or agreements for the development of such Intellectual Property. In general, a Release will not be granted for Intellectual Property that has not been reduced to practice or for Intellectual Property that is identified as a future or possible outcome of proposed research. Additionally, a Release will not be granted if the Intellectual Property is contractually obligated to an entity or such Release would result in an unmanageable conflict of interest or conflict of commitment. Questions about Releases should be directed to OTT.
Each and every Intellectual Property Release to inventors/creators will specify income rights for Rice University and may further impose other limitations or obligations, including, but not limited to, a nonexclusive license for Rice University to use the released Intellectual Property for teaching, scholarly, and other academically related purposes, nonprofit research, and to comply with United States government reporting and license requirements. Releases may additionally require the inventors/creators to demonstrate an ongoing technical and financial capability to commercialize the released Intellectual Property. When the Release is issued in the form of a license, the inventors/creators will be required to assume the future costs of filing and prosecuting such patent application and maintaining any patent rights when a patent is issued.

VI. Consulting

It is the responsibility of all individuals subject to this Intellectual Property Policy to ensure that the terms of their Consulting agreements with third parties do not conflict with their obligations to Rice University and are consistent with all Rice University policies, including, but not limited to, this Intellectual Property Policy.