- Who is authorized to sign on behalf of UTD?
- Who on campus do I contact to initiate a contract?
- What administrative forms are needed to initiate a contract?
- How long do contracts take to negotiate?
- What are causes for delay when negotiating contracts with Industry?
- Can a company own the results of the research?
- Can a company approve publications resulting from the research?
- What does it mean to have a “fundamental research” exclusion to the US Export Control Laws and Regulations?
- If industry is paying for a research project, why can’t they own all the results and intellectual property (A Work-For-Hire Relationship)?
- Can we pre-set license terms in the SRA?
- What is background intellectual property?
- If I want to send biological or chemical samples to a colleague, should I use a material transfer agreement (MTA)?
- When is the best time to request a Non-Disclosure Agreement (NDA)?
- Can UTD agree to HIPAA security conditions?
The University of Texas at Dallas is an agency of the State of Texas and a component institution of The University of Texas System, governed by the UT Board of Regents. All sponsored research agreements and related contractual agreements such as visiting scientist agreements, nondisclosure agreements, teaming agreements, material transfer agreements, etc. must be executed by an authorized official of UTD and in the University’s legal name: “The University of Texas at Dallas”. Individuals, Departments, or Organized Sponsored Research Units may not directly enter into sponsored activity agreements or legally bind UTD. Current authorized signatories for such agreements at UTD are Emily Lacy and Brent Schultze.
Agreements involving direct industry funding are handled through the Office of Technology Commercialization. Other funding sources (federal, state, non-profit) are handled through the Office of Sponsored Projects with your assigned Grants Specialist.
The form needed depends on the type of agreement. The first step is to establish a record through the OAR portal. The respective department handling the project will then contact the Principal Investigator for more detail.
The process for finalizing an SRA may be brief or lengthy, depending on the complexity of the project to be sponsored and what the sponsor expects to obtain for its support. If a non-federal sponsor accepts UTD’s standard agreement without modification, obtaining the signed contract can be very expeditious.
Most agreements are held up when the Industry Sponsor has a rigid intellectual property position. These delays are often resolved through explanation of our limitations that govern property rights to IP generated from sponsored research.
The UT System Board of Regents owns intellectual property created under sponsored projects for all component institutions of UT System–UTD included. Companies sponsoring research can receive rights to the intellectual property in the form of a limited-term option to license. For the Intellectual Property Policy in its entirety please refer to UTDPP1002.
No. Freedom to publish is essential to the fulfillment of the UTD’s responsibility to disseminate the findings of research. The University therefore reserves for the Principal Investigator the sole and exclusive right to freely publish scientific findings and to preserve this right in sponsored research agreements. In special circumstances, such as the protecting of intellectual property and technology transfer, the University may delay publication. However, it should be noted that research which cannot be reported to the public cannot be used as the foundation of a thesis or dissertation, and will invalidate the University’s “fundamental research” exclusion to the U.S. Export control laws and regulations.
What does it mean to have a “fundamental research” exclusion to the US Export control laws and regulations?
In certain circumstances the export of technology, including particular technical and scientific data, is prohibited by federal regulation or requires a license. “Controlled” technologies require an export license unless their research is shown to be available in the public domain. National Security Decision Directive-189 describes research as available in the public domain if it passes this two-prong test: research results are freely publishable, and there are no restrictions on the access and dissemination of research results. Either publication restrictions (excepting limited reviews for patent protection or removal of proprietary information) or limitations on the access or dissemination of research results remove the information from the public domain and invalidate the “fundamental research” exclusion.
If Industry is paying for a research project, why can’t they own all the results and intellectual property (a work-for-hire relationship)?
Any agreement UTD enters into must be in line with the University’s missions of education and research. Additionally, per University Policy UTDPP1002, UT System Board of Regents owns inventions created at UTD. This is consistent with federal research funding laws. UTD does not enter into work for hire type of agreements.
No. It would be very difficult to set license terms for an invention that doesn’t yet exist. Also, UTD is a 501(c)(3) organization under the IRS Internal Revenue Code. IRS Regulations say that granting rights to sponsored research intellectual property that doesn’t yet exist is considered a “private business use” of facilities funded with tax-exempt bonds.
Background intellectual property (BIP) is property and the legal rights of either or both parties to the agreement developed before or independent of the Sponsored Research Agreement, Collaboration Agreement, etc. the parties are entering into. This includes inventions, patent applications, patents, copyrights, trademarks, mask works, and trade secrets. When BIP is needed to conduct the sponsored research project, the BIP must be clearly listed and identified in the agreement. Including the BIP in agreements protects the BIP and ensures it will not be treated as intellectual property resulting from the current project. All BIP will be related to disclosures made to the Office of Technology Commercialization (OTC). If you have questions about your BIP or the disclosure process, contact OTC.
If I want to send biological or chemical samples to a colleague, should I use a Material Transfer Agreement?
Yes. Researchers who would like to send samples to another institution should start the Outgoing MTA process. After receipt of the internal intake form, OSP will send the Outgoing Material Transfer Agreement to your colleague and his/her sponsored projects office for review and signature. Upon return of the signed MTA from your colleague’s institution, UTD will sign the MTA and notify you that you can send materials to your colleague. You should follow any instructions provided by Joan Wickersheim for shipping when you send the materials.
The best time to request an NDA is before discussions begin. Once a faculty member’s confidential or proprietary information has been disclosed, even if done so by accident, there is no way to ensure it will be maintained as confidential unless an NDA is in place. NDAs are appropriate when working with industry to determine if a collaboration or sponsored project is possible. NDA’s are also appropriate when working with another institution on writing and submitting a grant proposal.
No, UTD does not meet the definition of a covered entity or business associate, as defined at 45 CFR 160.103; therefore, the Health Insurance Portability and Accountability Act of 1996 does not apply to the activities performed by the University .