Intellectual Property Policy: FAQ

The University of Arizona Intellectual Property Policy explains, supplements, and implements the Arizona Board of Regents (ABOR) Intellectual Property Policy for the University of Arizona. The ABOR IP Policy establishes the basic rights and obligations relating to Intellectual Property created by employees, students, and others connected to the University, provides an explanation of some of the key aspects of the ABOR IP Policy, and also provides additional detail  regarding Intellectual Property creation, ownership, disposition, and transfer at the University.

The ABOR IP Policy is the over-arching policy relating to Intellectual Property, and the University IP Policy falls under the ABOR IP Policy. Regarding ownership of Intellectual Property, the University IP Policy is meant to explain and clarify the ABOR IP Policy, but does not change or modify those rules.

Income generated through the commercialization of Intellectual Property, referred to as “Royalties”, is shared with the contributors of the Intellectual Property. In general, the contributors share in the largest single share of the royalties. For more information, see the Royalty Distribution Table in the Policy. In some rare circumstances, a department may take the role of the contributors, garnering both the contributor share and the contributor lab share, along with the department’s share. This only occurs when the Intellectual Property is determined to be a Departmental Work.

Occasionally, after detailed discussions with the inventors and performing other assessment and market research, Tech Launch Arizona may conclude that the cost of pursuing a patent is not justified, for example when there  existing related patents, enforcement of patent rights would be extremely difficult, or the relevant target licensees are unlikely to be interested. In these cases, the intellectual property is handled according to the provisions of any applicable sponsored agreement (e.g., for government sponsored inventions, rights are returned to the government). In rare circumstances, if the inventor is interested in developing and commercializing the technology despite Tech Launch’s findings, Tech Launch will consider releasing the invention to the inventors.

Simply put, and for the purposes of Invention Disclosures to Tech Launch Arizona, an “invention” is any new technical contribution, discovery, process, device, program (including software and mobile apps) method, use, product improvement, design improvement, or other invention that an individual or group creates during the course of research, or other work, at the University. Although Inventions have to meet specific legal criteria to be patentable, all inventions should be disclosed to Tech Launch Arizona for evaluation of potential patentability and/or commercialization opportunities.

The University claims ownership of all Intellectual Property created by employees in their capacity as an employee. The IP Policy describes such employees as Covered Individuals (see "Definitions"). The primary exceptions to this are: (a) when IP is created by Covered Individuals under consulting or sponsorship agreements with outside entities, and unrelated to their research at the University, or (b) created outside the scope of their duties and with no use of University resources (see "B.1. General Ownership Rule"). Covered Individuals have usually already assigned their Intellectual Property to the University through their employment agreement, but need to provide additional written documentation evidencing the assignment, if requested by Tech Launch Arizona.

U.S. Patent law defines an inventor as an individual who contributes to at least one patent claim. It is vital to note that if inventors are intentionally named to a patent erroneously, or are omitted, the patent can be invalidated. Only those persons who made an inventive contribution to the claimed invention may be listed as inventors.

During prosecution of the patent, claims may need to be revised by the patent attorney. Due to this, it is possible that the original inventors listed on an invention disclosure may change, depending upon which claims are allowed by the Patent Office and who actually contributed to those allowed claims. Final inventorship is determined when the patent issues.

An inventor is someone who contributes to the conception of the invention (see “How is inventorship determined”.) Demonstrating, or carrying out tests to reduce an invention to practice, do not generally add inventive contribution. Authorship, on the other hand, relates to copyrights, and indicate contribution to a copyrighted work. So, an individual may be included as an author on a research paper resulting from the work, along with all the other people who may have contributed in a similar manner to the work, while still not being an inventor.U.S. Patent law defines an inventor as an individual who contributes to at least one patent claim. It is vital to note that if inventors are intentionally named to a patent erroneously, or are omitted, the patent can be invalidated. Only those persons who made an inventive contribution to the claimed invention may be listed as inventors.

During prosecution of the patent, claims may need to be revised by the patent attorney. Due to this, it is possible that the original inventors listed on an invention disclosure may change, depending upon which claims are allowed by the Patent Office and who actually contributed to those allowed claims. Final inventorship is determined when the patent issues.

Yes, Covered Individuals have an obligation to report new inventions to Tech Launch Arizona. This obligation is also conveyed in federally sponsored research.  This Invention Disclosure process serves as the basis for communication with Tech Launch Arizona about the invention. If you have any questions about the invention or the disclosure process, please contact Tech Launch Arizona. Often, you will be asked to complete this process even when requesting confirmation of individual ownership of IP.An inventor is someone who contributes to the conception of the invention (see “How is inventorship determined”.) Demonstrating, or carrying out tests to reduce an invention to practice, do not generally add inventive contribution. Authorship, on the other hand, relates to copyrights, and indicate contribution to a copyrighted work. So, an individual may be included as an author on a research paper resulting from the work, along with all the other people who may have contributed in a similar manner to the work, while still not being an inventor.U.S. Patent law defines an inventor as an individual who contributes to at least one patent claim. It is vital to note that if inventors are intentionally named to a patent erroneously, or are omitted, the patent can be invalidated. Only those persons who made an inventive contribution to the claimed invention may be listed as inventors.

During prosecution of the patent, claims may need to be revised by the patent attorney. Due to this, it is possible that the original inventors listed on an invention disclosure may change, depending upon which claims are allowed by the Patent Office and who actually contributed to those allowed claims. Final inventorship is determined when the patent issues.

Software falls under the same rules as any Intellectual Property produced at the University. The creator of the software should disclose it, as software is a digital work. This would then be reviewed by Tech Launch Arizona for determination as either Excluded IP, or University-Owned IP. If the software, including mobile applications, was created as a result or component of employment at the University, the University claims ownership. But software requires additional consideration because of potential commercial application, and potential patentability. There are certain circumstances where the University would not claim ownership, such as when the software is completely outside the scope of one’s employment. If there is uncertainty related to ownership of software, contact Tech Launch Arizona to discuss. If appropriate, Tech Launch Arizona will provide a letter stating the University does not claim ownership based on the circumstances. (See B.1., General Ownership Rule.)

If the University owns the copyrighted material, contact Tech Launch Arizona to discuss the best way to license or distribute the material. For example, the office handles the licensing/sale/distribution of:

  • Mobile Apps;
  • Computer software intended to be revenue generating;
  • Databases created through research and intended to be revenue generating;
  • Product designs;
  • Copyrighted works funded by internal or external sponsors.

When it comes to research, you should disclose any invention to Tech Launch Arizona – and in order to fully protect it, such disclosure should be made as soon as possible after creation, and ideally before publication (or as soon as possible afterwards), using the Invention Disclosure Form. Contact your embedded Technology Licensing Manager or Tech Launch Arizona to discuss.

The University does not claim ownership of Intellectual Property created by students who are not employed by the University (e.g., not graduate assistants or otherwise student-employees). (See part B.5, the Student Works section of the IP Policy.)

However, a student acting in his or her capacity as an employee of the University (e.g., a graduate assistant) or working under a sponsored project will be subject to the standard rules applicable to all other employees under the IP Policy. In addition, under certain limited circumstances, the University may ask students to agree to assign Intellectual Property to the University in exchange for access to University resources in a laboratory or classroom setting as part of a particular project. This is most often seen when University faculty introduce University IP into classroom projects. In these circumstances, students should have the option of taking part in another project in that class where an assignment of student Intellectual Property is not required.

Finally, the University does not claim ownership of class notes, reports, papers, or other works created by students as part of the University degree requirements. However, in the case of student employees, it is the copyright only that is owned by the student – if a student’s thesis describes research performed in a professor’s laboratory, for example, the University may claim ownership of  the underlying Intellectual Property (e.g., lab notebooks, original records of research and any resulting inventions or software).

The UA offers students free legal advice via ASUA. Information is available here on the ASUA Student Legal Services website.

The UA James E. Rogers College of Law also offers an intellectual property clinic to help student entrepreneurs get their businesses off the ground.

Tech Launch Arizona involves inventors in all aspects of the protection and licensing process. During the patenting process, the inventors work directly with Tech Launch and the patent attorney explaining and refining detailed elements of the invention. This interaction is crucial in developing the prosecution strategy for the patent application. 

During the marketing & licensing, inventors typically participate in multiple ways, but only to the extent they are interested. Inventors might assist in the identification of potential target licensees (companies), in deep level technology discussions with potential licensees, and other ways as needed.

Occasionally, after detailed discussions with the inventors and performing other assessment and market research, Tech Launch Arizona may conclude that the cost of pursuing a patent is not justified, for example when there  existing related patents, enforcement of patent rights would be extremely difficult, or the relevant target licensees are unlikely to be interested. In these cases, the intellectual property is handled according to the provisions of any applicable sponsored agreement (e.g., for government-sponsored inventions, rights are returned to the government). In rare circumstances, if the inventor is interested in developing and commercializing the technology despite Tech Launch’s findings, Tech Launch will consider releasing the invention to the inventors.

Prepaid fees related to potential IP (IP that might be created under a research agreement – for examples of such agreements, see Arizona Choice) is distributed under the standard Royalty Distribution Table in the Policy when IP is created and disclosed to TLA. Occasionally, no IP is developed under these agreements, and given that the IP Policy does not apply, these prepaid fees are distributed under an alternate distribution process related to such fees where no inventor can exist (as there is no invention.)

Under the IP Policy, revenue from license agreements is shared with all inventors regardless of their participation in the licensee. In addition, the University considers all revenue received under a license agreement, including any revenue garnered from warrant positions in a startup, as revenue to be distributed.

Tech Launch Arizona generally supports open source licensing, but there are many factors to consider in a determination on whether to subject software to an open source license, such as which open source license applies. Your rights and obligations as a user and developer of open source software varies widely among different open source licenses, so it is important to understand these differences and evaluate them carefully. Therefore, it is in the best interest of the individual and the University to discuss these options prior to general release. Tech Launch Arizona can help you understand the differences between open sources licenses, and can even provide custom “open source”, “free use”, “source available” and other such licenses if the need arises. In addition, Tech Launch Arizona can host/distribute University-owned software directly from the website, either for free or for a fee.

The University allows faculty to spend certain portions of their time consulting with parties outside the University. Often, such consulting agreements require that Intellectual Property created under the consulting arrangement will belong to the outside entity. So long as that consulting activity complies with the University’s conflict of interest and conflict of commitment policies (and any other applicable policies), and so long as no University-Owned IP (or other third party-owned Intellectual Property) is used or connected to the consulting activity, the University generally will not claim ownership of that Intellectual Property. Talk to your embedded Technology Licensing Manager or Tech Launch Arizona about particular circumstances.

No employee (or anyone else) may use University-Owned IP outside the University without proper notification to the University, and appropriate licenses to that Intellectual Property. Tech Launch Arizona is a resource of the University and its employees for commercialization of Intellectual Property. In addition, there are conflict of interest and conflict of commitment policies and procedures that must be followed when employees wish to start companies outside of the University.

Inventorship in patents is a legal determination, based on contribution to patent claims, and can be difficult to determine in some cases. Contribution to copyright-related Intellectual Property, however, doesn’t have the same legal determination, and usually vests in the employer.

Any individual contributor/inventor can request that the IP Official review a specific case and determine ownership, inventorship, or contribution. If disputes continue, the IP Committee is delegated the authority to review such cases, and may be asked to review the case.

In practice, the contributors of any Intellectual Property are required to come to agreement related to distribution of royalties related to commercialization of Intellectual Property. If the contributors cannot agree on contribution percentages, the IP Policy allows for equal distribution of the contributor share among the contributors. In addition, any individual contributor can request that the IP Official review the case, and if disputes continue, the IP Committee is delegated the authority to review such cases. 

The University claims ownership of all intellectual property created by Covered Individuals in their capacity as employees. When other parties contribute to an invention, generally those party’s employers would also have a claim of co-ownership in the Intellectual Property. When more than one party has a claim of ownership in the same Intellectual Property, UA will typically enter into an agreement (if with another university, it is usually called an “Inter-Institutional Agreement”) that describes how the Intellectual Property will be managed.

A warrant is a type of security that entitles the University to buy the underlying stock of the issuing company at a fixed price called the “exercise price.” Warrants are a form of consideration the University often receives in a license with a startup, usually in lieu of an initial license fee. These warrants are held by the University until some form of “liquidation event.” That is, typically until the startup is acquired by another company or “goes public” with an initial public offering (IPO) of stock in the company.

Once a liquidation event occurs (see the FAQ above on “What are warrants?”), TLA will generally sell the warrants within a short time-frame, typically days, after the University is legally able to sell them (often, especially in the case of an IPO, there is a “hold period” during which the warrants cannot be sold.) However, on rare occasions, TLA may have reasonable belief based on special circumstances that holding the warrants for a short time would result in a higher return. In these cases, TLA will discuss the case with all potential recipients of these royalty distributions, and all parties may make the decision to hold the warrants for a limited time prior to selling. Once the warrants are sold, the revenue is distributed according to the Royalty Distribution Policy.