17.01.01-Ownership of Intellectual Property and Tangible Research Property

17.01.01 Ownership of Intellectual Property and Tangible Research Property Page 1 of 7

17.01.01 Ownership of Intellectual Property and

Tangible Research Property

Revised March 1, 2023

Next Scheduled Review: March 1, 2028

Click to view Revision History.

Regulation Summary

This regulation ensures that all The Texas A&M University System (system) employees, students

and certain third parties understand the types of intellectual property (IP), the ownership thereof

once conceived or developed, and their responsibilities in protecting it.

Definitions

Click to view Definitions.

Regulation

1. DELEGATION OF AUTHORITY

In accordance with the authority delegated by the system Board of Regents (board) in System

Policy 17.01, Intellectual Property Management and Commercialization, the chancellor

further delegates to Texas A&M Innovation (TI) responsibility for determining the IP creator

of and protecting intellectual property conceived or developed by faculty, scientists, engineers

and/or other employees or students in accordance with System Policy 17.01 and related

regulations for IP creators from all member(s) in the system. Such delegation is subject to the

chancellor’s or designee’s right, if chancellor or designee so chooses, to re-evaluate and make

a new determination of an IP creator(s) and/or protection of such intellectual property.

2. Ownership rights in intellectual property, which includes Tangible Research Property (TRP),

are as follows:

2.1 Intellectual Property Creator or Third Party-Owned

2.1.1 Intellectual property owned by the IP creator is that intellectual property:

(a) unrelated to the IP creator’s employment responsibilities;

(b) developed on the IP creator’s own time; and

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significant use of system and/or member facilities. See Section 2.2 of this

regulation.

2.1.2 Intellectual property owned by the IP creator under Section 2.1 may be subject to

the rights of third parties due to research agreements, grants, cooperative

agreements or contracts with the federal and state governments (or agencies

thereof). It is the sole responsibility of the IP creator to comply with any such

rights or obligations. Any intellectual property owned by the IP creator or a third

party must be managed without legal or other assistance from the system or TI,

except for the purposes of determining any system or member rights in such

intellectual property.

2.1.3 The system recognizes and affirms the traditional academic freedom of its faculty,

staff and students to publish pedagogical, scholarly or artistic works. In keeping

with this philosophy, the system does not claim copyright ownership to

pedagogical, scholarly or artistic works, regardless of their form of expression,

except as provided in Sections 2.2 and 2.3. Such works include, but are not

limited to, textbooks, course materials and refereed literature, and copyrightable

works of students created in the course of their education, such as dissertations,

theses, papers and journal articles. Furthermore, the system claims no ownership

in popular nonfiction, novels, poems, musical compositions or other works of

artistic imagination that do not constitute significant use of resources and/or are

not works for hire.

2.1.4 If an IP creator retains title to copyright in teaching or course materials that are

not works for hire (such as class notes, course presentations, curriculum guides

and laboratory notebooks), which are used at or on behalf of the system or one or

more members, or works created in the course of an IP creator’s education, the

system retains a royalty-free right to use the materials for educational purposes.

2.1.5 IP creators of copyrightable works that are not owned by the system, its members

or another party such as a research sponsor, or subject to a license or revenue

sharing agreement, own the copyright in such works and are free to publish them,

obligation to account to the system or a member for such revenues.

2.2 System-owned

2.2.1 Except as otherwise expressly provided in this regulation, the system will and

does own all intellectual property conceived or developed by an IP creator:

(a) as a result of activities related to an individual's employment responsibilities

with the system or a member;

(b) with financial support from the system or any of its members, or financial

support received from a third party that is administered by the system or a

member;

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(d) any combination of the foregoing.

2.2.2 Such IP creator in Section 2.2.1 agrees to assign and hereby does assign such

intellectual property to the system, whether such intellectual property currently

exists or is conceived or developed in the future while such IP creator is subject

to system policies and regulations. Such IP creator further agrees to sign any

necessary (as determined by the system in its sole discretion) written instrument

to perfect such assignment in the U.S. or foreign jurisdictions. Furthermore, such

IP creator agrees not to contest or assist in any manner in contesting the validity

of such intellectual property.

2.2.3 Ownership of intellectual property that is conceived or developed by an IP creator

in the course of or resulting from research supported by a grant, cooperative

agreement, or contract with the federal or a state government (or an agency

thereof) or a nonprofit or for-profit nongovernmental entity or by a private gift or

grant to the system or its members is determined in accordance with the terms of

such grant, cooperative agreement, or contract or, in the absence of such terms

and to the extent consistent with applicable law, will be and is owned by the

system. Such IP creator agrees to assign and hereby does assign such intellectual

property to the system, whether such intellectual property currently exists or is

conceived or developed in the future while such IP creator is subject to system

policies and regulations. Such IP creator further agrees to sign any necessary (as

determined by the system in its sole discretion) written instrument to perfect such

assignment in the U.S. or foreign jurisdictions. Furthermore, such IP creator

agrees not to contest or assist in any manner in contesting the validity of such

intellectual property.

2.2.4 Intellectual property that is not treated as a work for hire, but is developed with

significant use of funds, space, hardware or facilities administered by a member

and/or the system, where said use was essential and substantial rather than

incidental, will be and is owned by the system and the IP creator agrees to assign

and hereby assigns such intellectual property to the system. Such IP creator

further agrees to sign any necessary (as determined by the system in its sole

discretion) written instrument to perfect such assignment in the U.S. or foreign

jurisdictions. Furthermore, such IP creator agrees not to contest or assist in any

manner in contesting the validity of such intellectual property. The system does

not construe the payment of salary or wages, or the provision of offices or library

facilities to an IP creator as constituting significant use of system resources.

2.2.5 The system will own and owns copyrightable works created by a third party that

was commissioned or contracted to create and assign such copyrightable works

to the system.

2.3 Member-owned

2.3.1 A member owns works for hire created by the member’s employees or

commissioned by the member, and not covered by Section 2.2.3.

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2.3.2 Such IP creator described in Section 2.3.1 agrees to assign and hereby does assign

such copyrightable work to such member, whether such copyrightable work

currently exists or is authored in the future while such IP creator is subject to

system policies and regulations. Such IP creator further agrees to sign any

necessary (as determined by the member in its sole discretion) written instrument

to perfect such assignment in the U.S. or foreign jurisdictions.

2.3.3 A member may obtain and be assigned trademarks that are first adopted and used

in connection with the member’s own goods or services. The member is

responsible for obtaining and maintaining such trademarks and for all costs

associated with such trademarks. TI may assist the member in obtaining and

maintaining such trademarks, if requested by the member.

2.3.4 Member-owned intellectual property may be assigned to the system, with

approval from the system, for commercialization under System Policy 17.01, but

is managed by TI.

3. Intellectual Property Involving Sponsored Research

3.1 Except as provided by Section 3.5 of this regulation, intellectual property conceived or

developed in the course of or resulting from research supported by a grant, cooperative

agreement, or contract with a governmental entity or a nonprofit entity, or a for-profit

commercial entity will be and is owned by the system as provided in Section 2.2.

3.2 TI must ensure that all reporting requirements and any other obligations to the sponsor

for that sponsored research regarding intellectual property are met.

3.3 Any individual involved in performing any portion of the sponsored research is under a

duty to disclose to Sponsored Research Services (SRS) and TI, to the best of that

individual’s knowledge, any potential conflict relating to the rights to intellectual

property granted (or proposed to be granted) to the sponsor of a research project and the

obligations of the system or a member to another third party under a separate sponsored

research grant, cooperative agreement, contract, potential or existing license agreement,

or other transaction. TI, in concert with SRS, will review all potential conflicts related

to sponsored research. TI will address any conflicts with the appropriate member

official/office.

3.4 An IP creator that conceives or develops intellectual property under a sponsored research

grant, cooperative agreement or contract, and the employees of the sponsored research

offices of the members that may be aware of the conception or development of such

intellectual property must promptly disclose such conceived or developed intellectual

property to TI.

3.5 The chancellor or designee must approve a waiver of the requirement of system

ownership of intellectual property developed under a contract, grant or agreement, for

intellectual property that does not currently exist at the time of the waiver, subject to

OGC review and approval for legal sufficiency. Such waiver may be granted if the

benefit from the level of funding for proposed research and/or other consideration from

the sponsor, licensee or other party outweighs the potential value of system ownership.

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3.6 Each member must remit to TI any amount received under a contract, grant or agreement

for research as compensation for granting certain rights or ownership to intellectual

property that may be conceived or developed under such contract, grant or agreement. If

intellectual property is conceived or developed under such contract, grant or agreement

as evidenced by a properly filed intellectual property disclosure, such remitted amount

will be distributed according to System Regulation 17.01.04, Distribution of Royalties,

License Fees and Sale Proceeds from Licensing. If no intellectual property is conceived

or developed under such contract, grant or agreement, TI will retain the remitted amount

without being subject to distribution under System Regulation 17.01.04.

4. Intellectual Property Arising from Consulting Activities

The system recognizes that external faculty consulting can be an effective mechanism for

professional development and for establishing good relationships with industry.

Notwithstanding anything to the contrary, System Policy 17.01, System Policy 31.05, External

Employment and Expert Witness, and the regulations promulgated pursuant to such policies

solely govern all intellectual property arising under consulting or external employment subject

to any of the system’s prior legal obligations to third parties.

5. Software Ownership

5.1 Software Pedagogical Work

A software pedagogical work is software source code that is included as examples in a

pedagogical work. The copyrights to the software pedagogical works are owned by the

IP creator and are treated as part of pedagogical works, subject to Section 2.1 of this

regulation.

5.2 Software Scholarly Work

5.2.1 A software scholarly work is software source code that is part of a scholarly work.

The copyrights to the software scholarly works will be owned by the IP creator

if:

(a) the software source code is submitted as part of the peer-reviewed scholarly

work;

(b) the software source code is specifically peer-reviewed and published when

approved; and

committee and published will be owned by the IP creator, subject to Section

2.1 of this regulation.

5.2.2 Software source code that is specifically peer-reviewed means that the normal

documented procedure for the peer review committee includes specifically

reviewing and commenting on the source code that supports the work submitted

for review, and the review of the source code is not secondary to the peer review

committee process.

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5.3 System Rights

The system retains a perpetual royalty-free right to use software pedagogical works and

software scholarly works (hereinafter special software work(s)) for educational purposes.

The system does and will own any other intellectual property rights, such as patents,

related to special software works in accordance with System Policy 17.01 and its

regulations. A publication of a special software work does not release any of the system’s

rights that may exist in that special software work, including, but not limited to,

inventions and patent rights.

5.4 Commercialization

Commercialization of any intellectual property that is related to or includes a special

software work requires the IP creator to assign the IP creator’s rights in such special

software work to the system in order for the IP creator to be eligible to receive any

licensing and distribution income from commercialization in accordance with System

Regulation 17.01.04, Distribution of Royalties, License Fees and Sale Proceeds from

Licensing. The system’s refusal to file a patent application, copyright or commercialize

such intellectual property without an assignment of the IP creator’s rights to the system

does not waive any of the system’s rights that may exist in that special software work.

In addition, the system is not obligated to release (by assignment or grant of license)

system rights to such an intellectual property to the IP creator under System Regulation

17.01.03, Commercial Development of Intellectual Property, if the IP creator refuses to

assign the IP creator’s rights in the special software work, which is related to the

intellectual property, to the system.

5.5 Limitation of IP Creator’s Rights

5.5.1 An IP creator may not add, embed or incorporate the IP creator’s special software

work into a device, computer system or other software of a member or the system

without obtaining prior permission from the system.

5.5.2 An IP creator may not add, embed or incorporate the IP creator’s special software

work into a device, computer system or other software for a third party under a

contract, grant, cooperative agreement or funding agreement with a member or

the system without obtaining prior permission from the system.

5.5.3 If an IP creator fails to obtain prior permission before adding, embedding or

incorporating the IP creator’s special software work, the system or such third

party (where special software work would be included in the deliverable for such

third party) has a royalty-free perpetual license for all purposes and all devices,

computer systems or other software that includes such special software work.

5.6 Other Software

Except for software pedagogical works and software scholarly works, the system may

assert ownership of software as an invention or as a copyrightable work or both in

accordance with the other provisions of System Policy 17.01 and its regulations.

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Related Statutes, Policies or Requirements

37 C.F.R. § 401

System Policy 17.01, Intellectual Property Management and Commercialization

System Regulation 17.01.02, Evaluation and Protection of Intellectual Property

System Regulation 17.01.03, Commercial Development of Intellectual Property

System Regulation 17.01.04, Distribution of Royalties, License Fees and Sale Proceeds from

Licensing

System Policy 31.05, External Employment and Expert Witness

Member Rule Requirements

A rule is not required to supplement this regulation.

Contact Office

Research

(979) 458-0243