Intellectual Property

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Policy Number: 333

Policy Suffix:

I. Introduction

Rice University (“Rice”) is dedicated to leading innovation and fostering a culture of knowledge excellence amongst our students, faculty and staff. These commitments help Rice contribute to the public good by disseminating innovative solutions to global problems. This policy creates the framework through which Rice manages Intellectual Property (“IP”) and its dissemination. The university makes its IP available through various means, including traditional commercial licensing and open access permissions. Rice also shares licensing proceeds with the inventors, authors, or contributors who generate such IP.

IP that results from Rice resources and opportunities generally remains the property of Rice. Inventions resulting from federally funded research must be assigned to the federal government. The Bayh-Dole Act of 1980 permits universities that receive federal funding, such as Rice, to elect to pursue ownership of inventions from this funding, rather than obligating inventors to assign inventions to the federal government. In addition, regulations require that the government receive certain rights to software and data created pursuant to federally funded research. Other research sponsors, such as companies and foundations, typically require Rice to (a) report IP that results from their funds; (b) secure legal protection for the IP or, alternatively, commit to open access principles of dissemination; and (c) make the IP available for licensing, or ensure its availability through open access channels.

Policy 334 separately addresses ownership and copyright of works of authorship (e.g., literary works, musical works, academic writings, architecture, dramatic works, audiovisual works, and curricular materials).

II. Roles and Responsibilities

A. 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 primarily responsible for the implementation of this policy. As Rice’s chief research officer, the EVPR makes all final decisions related to this policy and bears ultimate authority for the management and commercialization of Rice’s Intellectual Property.

The Office of Research is responsible for overseeing, managing, and promoting research at Rice. Its Office of Sponsored Projects assists with the submission of grant proposals, large-scale proposal development, and limited submissions. In addition, its Office of Research Integrity supports and oversees activities related to regulatory compliance. Also, its Office of Technology Transfer (“OTT”) (i) negotiates agreements related to research with external partners and (ii) oversees the management of the Rice IP portfolio, including the invention disclosure process, the commercial evaluation of inventions, patent filing decisions, and the negotiation of licensing agreements with industry.

B. The Office of the Provost

The Provost is Rice’s chief academic officer, providing strategic leadership to advance the university’s academic, research, scholarly, and creative endeavors. The Provost has primary authority over the academic budget and, in partnership with the Executive Vice President for Operations, Finance, and Support (OFS), oversees the overall budget and ensures that resources are aligned with institutional priorities. The Provost works in close partnership with the EVPR to support faculty research. Together with the deans, vice provosts, department chairs, faculty, and other university leaders, the Provost promotes and sustains excellence across all academic units in support of Rice’s mission and long-term success.

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, software, and tangible research property regardless of whether they are subject to protection under patent, trademark, copyright, or other laws.

Intellectual Property Agreement shall mean an IP and confidentiality agreement with Rice that must be signed by all individuals - except Visiting Scientists - subject to this policy, as further described in Section IV.E.1. below.

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

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

Revenue Sharing Agreement shall mean an agreement between all inventors or creators of licensed Rice IP specifying how to distribute the inventor/creator share of any license revenue received by Rice, as further described in Section V.B.2.c. below.

Rice University Intellectual Property shall mean IP owned by Rice.

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

Tangible By-Products of Research shall mean any fixed and finite quantity of material that is (i) generated by Rice research; (ii) not covered by an issued patent or patent application assigned to Rice; and (iii) not capable of self-replication, as further described in Section V.B.2.b. below. 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.

Invention Disclosure Form shall mean the form used to disclose IP to Rice (Invention Disclosure Form) as further described in Section V.A. below.

Visiting Scientists shall mean scientists and scholars who visit Rice and, while at Rice, conduct research on the Rice campus. This designation includes, but is not limited to, individuals with visiting faculty positions, short-term fellowships, visiting students, and those pursuing research opportunities with limited duration.

IV. Ownership of Intellectual Property

Rice often faces either federal or contractual requirements to assert ownership over the IP created at the university. This section describes the situations under which Rice will assert or not assert ownership of IP.

A. Intellectual Property Owned by the University

Rice owns IP that is generated, conceived, created or first reduced to practice:
- in the conduct of Rice research, including, but not limited to, research under a third-party contract with Rice;
- with the significant use of funds or facilities administered by Rice, as described below in Section C;
- within the course or scope of the inventor’s/creator’s employment at Rice, as described below in Section D; or
- pursuant to a written agreement between the inventor/creator and Rice providing for a transfer of its ownership to Rice.
For IP owned by the university, all employees of Rice must assign, and hereby do assign, to Rice all right, title and interest in and to the inventions, materials and related patent applications and patents, and must cooperate fully with Rice to prepare and prosecute patent applications and patents and other instruments reasonably necessary to reflect Rice’s ownership of this IP.
Because Rice owns the IP defined in this section, an inventor or creator of Rice IP has no independent right or authority to convey, assign, encumber, or license the IP other than to Rice, except if the IP is certain software specified in Rice’s Software Guidelines.

B. Intellectual Property Not Owned by Rice University

Rice will not claim ownership to IP that is generated, conceived, created or first reduced to practice:

outside the conduct of Rice research;
without the significant use of funds or facilities administered by Rice;
outside the course and scope of the inventor’s/creator’s employment at Rice; and
without a written agreement between the inventor/creator and Rice transferring the ownership of the IP to Rice.

The responsibility of determining whether IP meets the ownership criteria in this section falls to Rice. This responsibility allows Rice to fulfill its diligence obligations to federal agencies and other third-party sponsors. Once Rice determines that IP meets each of the criteria listed above, the IP is presumed to be owned by the inventor/creator and/or their assignees and Rice will make no claim to it. All decisions regarding ownership determinations may be appealed to the EVPR.

C. Significant Use of Rice University Resources

In consultation with the inventors/creators, the Office of Research will determine if there has been a “significant use of” Rice’s funds or facilities in a particular situation. The EVPR will decide any dispute regarding the “significant use of” funds or facilities. The EVPR’s decisions and findings may be appealed to the Provost, whose decision will be final.
Generally, IP is not considered to have been developed using Rice’s funds or facilities if it was developed (i) with only minimal use of Rice funds; and (ii) with only minimal use of Rice facilities. Rice considers normal use of offices, libraries, and university-owned computers and tablets to be minimal use of Rice facilities and equipment.

D. Individuals Subject to this Intellectual Property Policy

This policy applies to anyone employed by Rice or participating in research programs that use significant Rice funds or facilities, including, but not limited to, Visiting Scientists. This policy’s application to students is specifically governed by Section IV.D.2. below.
Students

a. Intellectual Property Owned by Rice University Students

As long as they do not use Rice’s proprietary information to create IP, and as long as none of the conditions in Section IV.D.2.b. apply, a student enrolled at Rice owns the IP they create (i) to fulfill the requirements of a Rice-approved class and/or course, (ii) during extracurricular activities (not including work-study or work-for-hire activities compensated by Rice), (iii) on the student’s personal time (i.e. while the student is not being compensated to work for or on behalf of Rice), (iv) while using Rice resources and facilities commonly provided for a student’s use, or (v) solely in conjunction with an Exempt Program.

b. Intellectual Property Owned by Rice University

Notwithstanding Section IV.D.2.a., Rice will own IP created by Rice students if:

The student is also an employee of Rice and the IP is developed within the course or scope of their employment at Rice (in which case Section IV.A. relating to employees shall apply);
The student develops the IP as part of a work-study or work-for-hire position, a research activity, or an institutional project under a written agreement providing for a transfer of ownership of IP to Rice (in which case the written agreement governs the ownership of the IP);
The student develops the IP as a result of participating in a research activity whose IP has already been committed to, or is previously encumbered by an existing agreement with, a third party (such as a governmental, philanthropic, corporate or other sponsor); or
If the student jointly creates the IP with a Rice employee (in which case Section IV.A. relating to employees shall apply).

c. Internships, Externships, and Study Abroad

If an undergraduate or professional master's student creates IP in the course of an internship, externship, or study at another institution, Rice does not own it unless it was generated, conceived, created, or first reduced to practice as stated in IV.A.1. of the policy.
If a graduate student other than a professional master’s student creates IP in the course of an internship at a non-Rice company or non-Rice entity, the student’s IP obligations to Rice may conflict with the non-Rice company’s or non-Rice entity’s IP policies. Rice may be able to offer certain exemptions in these situations. Students should contact OTT for any inquiries (techtran@rice.edu).

E. Intellectual Property Agreements

All employees at Rice are required to sign the William Marsh Rice University Intellectual Property Agreement. Generally, the document covers IP assignment for Rice employees and other relevant issues. Rice must have an executed agreement on file before any employee conducts research and scholarly activities on behalf of Rice.
All employees of Rice must assign, and hereby do assign, to Rice all right, title and interest in and to inventions, materials and related patent applications and patents, and must cooperate fully with Rice in preparing and prosecuting patent applications and patents and other instruments as are reasonably necessary to reflect Rice’s ownership of this IP.
Non-employees, including Visiting Scientists and fellows, who intend to participate in research projects that employ (i) Rice funds and/or (ii) the significant use of Rice facilities and/or (iii) third-party funds or materials obtained through Rice, must execute an agreement that addresses the management of IP and confidentiality consistent with the provisions of this policy and Rice’s federal funding and/or contractual obligations before participating in the research. The terms of this agreement will depend on the research being contemplated, Rice’s obligations 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 (OTT)

Individuals covered by this policy may freely publish or otherwise publicly disclose their research if the content and manner of their publication or public disclosure are consistent with the agreements that supported the research (e.g., sponsored research agreements, collaboration agreements, etc.). Individuals are expected to apply reasonable judgment to determine if IP has the potential for commercial development. If commercial development potential exists, individuals should disclose the IP to OTT using the Invention Disclosure Form.
Individuals who create IP during the course of a sponsored research agreement or third-party contract with Rice that contains IP provisions must timely disclose inventions to OTT. Rice considers disclosure to be timely if it occurs shortly after the IP is created and/or reduced to practice. In all cases, IP 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, posted on a publicly available preprint server such as arxiv or biorxiv, presented at a conference, or otherwise placed in the public domain.
If an individual elects to publicly disclose IP without prior disclosure to and approval by Rice, that individual must ensure the disclosure does not conflict with Rice’s pre-existing contractual obligations or obligations to a third party whose material was used to develop the IP. Individuals should contact OTT if they have any questions about any proposed public disclosure of IP. In general, Rice will not pursue protection for IP placed in the public domain.

B. Licensing Rice University Intellectual Property

Rice encourages and advances the commercial application of Rice research for the public good by licensing its IP to industry. License agreements between Rice and commercial entities must be consistent with Rice’s missions of education and research, and comply with all Rice policies, including those related to conflicts of interest. License agreements must provide appropriate legal protection for Rice and its faculty, staff, and students and not restrict Rice’s research and publication activities.
Revenue Distribution

37.5% to the inventors/creators;
18.5% to Rice for use in supporting innovation;
14% to the inventors’/creators’ sponsoring Rice department or organizational unit, and
30% to Rice.

a. If Rice licenses its IP rights to third parties, Rice must first recover the full cost of the licensing activities - including, but not limited to, the cost of prosecution and legal costs of obtaining an issued patent or other IP protection - before making any further income distributions. Rice may retain a portion of the royalty and other income/consideration received from an IP license to meet its known future or expected expenses. In general, Rice shall divide the remainder of licensing revenue as follows:

b. If the license agreement enables the transfer of Tangible By-Products of Research for monetary consideration, Rice will distribute 100% of the income or consideration received to the generating Rice laboratory, up to a cumulative $15,000 in a fiscal year; thereafter, Rice will distribute 75% of the income to the generating Rice laboratory, and retain the remaining 25% for Rice.

c. Rice will distribute the income received from the licensing of Rice IP related to a single technology to the IP’s inventor(s) or creator(s). Inventors or creators may file a Proposed Revenue Sharing Agreement to request that Rice allocate this income in a specific manner. These agreements may be submitted only if unanimously executed by all inventors or creators of the licensed Rice IP, and must be submitted by the earlier of 90 days after (i) submission of the invention disclosure form or (ii) departure of the inventor(s) or creator(s) from Rice. Each agreement must clearly state how Rice should allocate this income among the inventors or creators by specifying percentages or other allocation terms, and stating the reasoning for this proposed arrangement. Templates for this agreement can be obtained from OTT. These agreements will be reviewed and approved by the Faculty Conflicts Committee (FCC; see Rice University Policy 216). Absent a request for a specific revenue sharing arrangement, Rice will distribute revenue in equal amounts to the inventors. FCC decisions on revenue sharing arrangements may be appealed to the EVPR.

d. Rice will distribute the income received from the licensing of Rice IP related to multiple technologies to the IP’s inventor(s) or creator(s). Inventors or creators may file a Proposed Revenue Sharing Agreement to request that Rice allocate this income in a specific manner. These agreements may be submitted only if unanimously executed by all inventors and creators of the licensed Rice IP, and must be submitted no later than 90 days after Rice’s written notice to the inventors or creators that a license has been executed for their Rice IP. Each agreement must clearly state how Rice should allocate this income, among the inventor(s) or creator(s) and across the licensed technologies, by specifying percentages or other allocation terms, and stating the reasoning for this proposed arrangement. Templates for this agreement can be obtained from OTT. These agreements will be reviewed and approved by the Faculty Conflicts Committee (FCC; see Rice University Policy 216). Absent a request for a specific revenue sharing arrangement, Rice will distribute revenue in equal amounts among the technologies; then, Rice will further distribute revenue for each single technology among the inventor(s), as specified in Section V B.2.c above. FCC decisions on revenue sharing arrangements may be appealed to the EVPR.

e. If Rice cannot reach an inventor/creator after multiple documented contact attempts over a six-month period, it will distribute any unclaimed inventor revenue share to the inventor's last known Rice department or administrative unit.

C. Release of Rice University Intellectual Property

Rice, in its sole discretion and consistent with the public interest, may choose to (i) not assert its ownership rights in any IP developed with the significant use of university funds or facilities (see Section IV.C. above) or (ii) assign its ownership rights in the IP to the inventors/creators (Subsections (i) and (ii), collectively called “Release”). Decisions to issue a Release of IP shall account for the IP’s stage of development and the obligations, if any, Rice has assumed from federal funding or any contracts or agreements for the development of the IP. Rice will not grant a Release if the IP is contractually obligated to an entity, or if doing so will result in an unmanageable conflict of interest/conflict of commitment.
Every IP Release under Section V.C.1.(ii) will specify income rights for Rice and may impose other limitations or obligations, including, but not limited to, a nonexclusive license for Rice to use the released IP for teaching, scholarly, and other academically related purposes, nonprofit research, and/or to comply with United States government reporting and license requirements.

VI. Consulting

All individuals subject to this policy must ensure that their consulting agreements with third parties do not conflict with their obligations to Rice and remain consistent with all Rice policies, including, but not limited to, this policy.

VII. Cross References to Related Policies

Rice University Policy No. 216, Outside Activities, Conflicts of Interest, and Conflicts of Commitment in Reserach and Scholarship

Rice University Policy No. 218, Disclosure and Management of Outside Activities and Interests

Rice University Policy No. 334, Copyright

VIII. Responsible Official and Key Offices to Contact Regarding the Policy and its Implementation

Responsible Official: Executive Vice President of Research

Key Offices: Office of the Provost; Office of Technology Transfer; Office of Research Integrity; Office of Sponsored Projects; Office of General Counsel; Office of Ethics, Compliance and Enterprise Risk