University & Research Institution IP Attorney — Austin, Texas
Faculty researchers, graduate students, and staff at UT Austin, UT Dell Medical School, and other Texas research institutions regularly develop patentable innovations — and navigating university IP policies, technology transfer processes, and personal IP rights requires an attorney who understands both patent law and the academic research environment.
Home → Practice Areas → University & Research Institution IP
The University Innovation Ecosystem — Unique Challenges and Opportunities
University and research institution environments produce some of the most genuinely novel technology innovations in the United States — basic research that leads to new materials, new device architectures, new algorithms, and new therapeutic approaches that have no direct commercial predecessor. Protecting and commercializing those innovations requires navigating an IP framework that is significantly more complex than commercial company IP practice — one that involves the intersection of federal funding law, university IP policy, academic publication norms, technology transfer office procedures, and the commercial IP rights that inventors and industry partners need to develop the technology into viable products.
UT Austin's research ecosystem — spanning the College of Engineering, the College of Natural Sciences, the Dell Medical School, and multiple interdisciplinary research centers — produces patentable innovations across semiconductor and electronics, optical and photonic technologies, biomedical devices, software and AI systems, and advanced materials that are directly relevant to Austin's commercial technology sector. Faculty researchers, postdoctoral researchers, graduate students, and staff who make patentable discoveries in the course of their UT research have both obligations and rights under UT's IP policies — obligations to disclose their inventions to the university's Office of Technology Commercialization and rights to share in the licensing revenue from those inventions.
As a UT Austin physics graduate with direct experience in the university research environment and 17 years of patent prosecution across the technology areas most common in academic research, I am well-positioned to advise university researchers, graduate student inventors, and academic spinout companies on IP strategy that navigates the university framework effectively — protecting the commercial value of academic innovations while satisfying the university's legitimate IP rights and Bayh-Dole compliance requirements.
UT Austin's IP Policy — What Researchers Need to Know
UT Austin's Handbook of Operating Procedures establishes the university's intellectual property policy — the rules that govern who owns inventions made by UT faculty, staff, students, and affiliates and how those inventions are commercialized. Understanding this policy is essential for researchers who want to protect their innovations effectively and for industry partners who want to license UT technology.
The general rule under UT's IP policy is that inventions made by UT employees — faculty, staff, and graduate research assistants — using significant UT resources (funding, facilities, or equipment) are owned by UT. The university's OTC manages these inventions — handling patent filing, licensing, and revenue distribution to inventors according to UT's inventor royalty sharing schedule. Inventors typically receive a defined percentage of net licensing revenue — the balance after deduction of patenting costs and OTC administrative expenses — with the remaining revenue shared between the inventor's department and the university.
Several categories of inventions are treated differently under UT's policy. Inventions made by students in the course of their own studies — as opposed to research employment — may be owned by the student rather than the university. Inventions made using only incidental use of university resources — a laptop computer, for example, without other significant university support — may qualify for inventor ownership rather than university ownership. Inventions developed under sponsored research agreements may be subject to the sponsoring company's IP rights as negotiated in the specific agreement. I advise researchers on how the specific facts of their invention development — the funding sources, the resources used, and the relationship between the invention and their university employment — affect the ownership analysis under UT's policy.
Invention Disclosure — The Critical First Step
The invention disclosure to UT's Office of Technology Commercialization is the formal mechanism through which university inventors initiate the process of protecting and commercializing their innovations under UT's IP framework. Filing a complete, accurate, and timely invention disclosure is both a contractual obligation for UT employees and the practical prerequisite for everything that follows — patent filing, licensing negotiations, and spinout company formation all begin with the invention disclosure.
The quality of the invention disclosure matters significantly for the patent filing that follows. OTC patent counsel — or outside patent counsel retained by OTC — must draft a patent application based primarily on the information provided in the invention disclosure. A thin invention disclosure that describes the innovation at a high level without the technical details needed to support broad claims results in a patent application that does not adequately capture the innovation's full scope. A comprehensive invention disclosure that provides technical depth, identifies the specific novel aspects of the innovation, describes alternative embodiments and variations, and identifies the closest prior art the inventor is aware of enables the drafting of a significantly stronger and broader patent application.
I advise researchers on invention disclosure preparation — not to circumvent UT's OTC process, but to help researchers provide the technical depth and strategic framing that enables OTC to pursue the strongest possible patent protection for the disclosed innovation. A researcher who understands what information is most important in an invention disclosure, and who provides that information comprehensively, directly influences the quality of the patent protection that the university ultimately obtains — which in turn affects the licensing value of the technology and the inventor's royalty income.
Technology Transfer and Licensing — The University to Industry Pathway
UT's OTC manages the licensing of university-owned IP to industry — the formal mechanism through which academic innovations reach commercial application. Understanding how the technology transfer and licensing process works, and how industry partners can most effectively engage with it, is essential for Austin companies that want to access UT's technology pipeline.
The OTC licensing process for significant technologies typically involves an option agreement that gives an industry partner the exclusive right to negotiate a license for a defined period — usually six to eighteen months — while the OTC and the partner assess the technology's commercial potential and negotiate license terms. Option agreements provide the industry partner with time to conduct technical due diligence, assess market opportunity, and develop a business plan around the technology before committing to full license fees and royalties. During the option period, the OTC continues pursuing patent prosecution and the inventor remains available to provide technical consultation.
Full license agreements negotiated with OTC typically include upfront license fees, ongoing royalties tied to product sales, milestone payments tied to product development and commercialization events, sublicensing provisions, due diligence obligations requiring the licensee to pursue active commercialization, and field of use definitions that scope the license to the specific application the licensee intends to pursue. I advise industry partners on UT technology licensing negotiations — providing the technical patent assessment that determines what the licensed technology actually covers and the legal negotiating support that produces license terms reflecting the technology's actual value and the parties' relative negotiating positions.
Academic Spinout Formation — From Research to Company
Forming a company around university technology is one of the most challenging and rewarding paths in the Austin innovation ecosystem — taking fundamental research innovations and developing them into commercial products that create jobs, generate economic value, and deliver the benefits of academic research to society. The IP dimensions of spinout formation are among the most complex in startup law, requiring simultaneous navigation of university IP policy, Bayh-Dole compliance, founder equity structuring, and commercial IP strategy.
The typical UT Austin spinout transaction involves the inventor or inventors licensing UT's patent rights to the spinout company — with the university receiving equity in the spinout in exchange for a favorable licensing arrangement — and the inventors joining the spinout as founders with their own equity positions. The licensing agreement between UT and the spinout is the foundational commercial document for the company, and its terms — particularly the license scope, royalty structure, and milestone requirements — directly affect the company's commercial viability and its attractiveness to subsequent investors.
Investor due diligence on university spinout companies consistently focuses on several specific issues that require proactive attention at formation. The completeness of the license — whether it covers all the IP needed for the company's product, including any improvements to the licensed technology made at UT after the license is executed. The license's survival through change of control — whether the license terminates or requires consent in an acquisition. The government license rights that attach to Bayh-Dole inventions — whether they create meaningful operational constraints on the company. And the inventor relationship with the university — whether continued university employment creates conflicts of interest that affect the company's independence. I advise spinout founders and their investors on each of these issues as part of comprehensive spinout IP structuring support.
Consulting Agreements and Conflict of Interest — Navigating Faculty Involvement
Faculty researchers who are involved in commercial companies — as founders, consultants, advisory board members, or equity holders — must navigate UT's conflict of interest policies and consulting agreement requirements that govern outside commercial activities. These requirements are designed to protect the university's IP interests and ensure that faculty research resources are not diverted to commercial benefit without appropriate disclosure and management — but they create compliance obligations that faculty founders regularly underestimate in their significance.
UT's conflict of interest policy requires faculty to disclose significant financial interests in companies that are related to their research activities or that may benefit from sponsored research at UT. The university then determines whether a conflict of interest exists and, if so, what management measures are required to allow the faculty member's continued involvement with both UT research and the commercial company. In some cases, conflict management plans restrict the faculty member's involvement in sponsored research related to the company's technology, require independent oversight of research involving the company's products, or create other operational constraints on the faculty-company relationship.
Faculty consulting agreements — the agreements that govern a faculty member's paid consulting work for industry sponsors — typically require UT review and approval, limit the scope of work to areas that do not involve UT confidential information or resources, and include IP provisions that address ownership of any innovations made in the course of the consulting work. Consulting agreement IP provisions can interact in complex ways with UT's IP policy — if a faculty member makes a patentable discovery while consulting for a company using UT background knowledge, the ownership question may not be straightforward. I advise faculty researchers on consulting agreement IP provisions and conflict of interest management strategies that enable productive industry engagement while protecting both the researcher's and the university's IP interests.
Contact me at (512) 293-0710 or sconnolly@austin-patent-attorney.com to discuss your specific situation.
[ University & Research Institution IP FAQs — Austin, Texas ]
Question: Who owns a patent on an invention I developed as a UT Austin researcher?
Answer: Ownership depends on the circumstances of the invention's development. UT Austin's intellectual property policy generally vests ownership of inventions made by faculty, staff, and students using university resources or in the course of university employment or research in the university, with inventors receiving a share of any licensing revenue. However the specifics depend on funding sources, use of university resources, and the nature of your appointment. Before taking any action on a potentially patentable invention developed at UT, consult with UT's Office of Technology Commercialization — and consider consulting with an independent patent attorney to understand your rights within the university framework.
Question: Can I start a company around my university research invention?
Answer: Yes — university technology spinouts are common and UT Austin's Office of Technology Commercialization actively supports commercialization through startup formation. The typical path involves disclosing the invention to OTC, working with OTC on patent filing strategy, and then negotiating a license from the university to the startup. The license terms — royalty rates, field of use, milestone requirements — can vary significantly and are negotiable. I advise university researcher entrepreneurs on how to structure spinout arrangements that provide the startup with meaningful IP rights while satisfying university licensing requirements.
Question: What if I developed an invention partially with university resources and partially on my own time?
Answer: Inventions developed with a mix of university and personal resources present some of the most complex IP ownership questions in academic settings. University IP policies vary in how they treat mixed-contribution inventions, and the specific facts — which resources were used, when the development occurred, whether it relates to your university research duties — all affect the analysis. I advise researchers and graduate students navigating these situations to disclose the invention to OTC, understand the university's position on ownership, and consult with an independent patent attorney before making any public disclosures or filing any applications independently.
Question: What is the UT Austin Office of Technology Commercialization's standard licensing royalty rate and how is it negotiated?
Answer: UT Austin's OTC applies royalty rates based on industry norms for the specific technology area and commercialization stage rather than a single universal rate across all licenses. Standard UT Austin license royalty rates typically range from two to five percent of net sales for most technology areas, with higher rates for pharmaceutical and medical device licenses where industry norms support higher royalty levels and lower rates for software and information technology licenses where competitive alternatives limit achievable royalty rates. The OTC's royalty rates are negotiable — particularly for startup licensees where the initial royalty rate must be sustainable through the early commercial stage when revenues are modest and capital is limited. Common structures include stepped royalty rates that increase as the licensee achieves revenue milestones, royalty caps that limit total royalty exposure, and minimum annual royalty payments that ensure continued commercialization effort. I advise industry partners in UT Austin license negotiations with specific knowledge of OTC's standard terms and the provisions where negotiation flexibility typically exists.
Question: What is an exclusive license from UT Austin versus a non-exclusive license and what are the commercial implications for a startup?
Answer: An exclusive license from UT Austin in a defined field of use means that UT will not license the same technology to any other party in that field during the license term — giving the startup a legally protected competitive position in its commercial market. A non-exclusive license permits UT to license the same technology to multiple parties simultaneously — which significantly reduces the startup's IP-based competitive advantage since competitors can potentially access the same university technology. For Austin startup licensees, exclusive licenses are typically necessary to justify the venture investment required for commercial development — investors funding a startup's development of licensed university technology expect that the technology exclusivity creates a defensible competitive position. UT's standard position is to offer exclusive licenses for fields where a single party is best positioned to commercialize the technology, with diligence provisions requiring active commercialization effort to retain exclusivity — ensuring that exclusive licenses do not become anti-competitive blocking mechanisms if the licensee fails to commercialize.
Question: What is a faculty consulting agreement and how does it affect IP ownership for an Austin company working with UT faculty?
Answer: UT Austin faculty consulting agreements — governing the terms under which faculty members provide consulting services to private industry — contain specific IP provisions required by UT's conflict of interest and IP policies that affect what IP arising from the consulting relationship belongs to the faculty member personally, to UT, or to the company. Under UT policy, faculty members generally cannot assign to a private company IP rights in inventions that were made using university resources, during university time, or as part of their UT research responsibilities — those inventions belong to UT regardless of what a consulting agreement says. Faculty members can provide consulting services to industry using their general expertise and knowledge, and can assign to the company IP rights in inventions made entirely during their consulting time without using UT resources. The practical implication is that faculty consulting agreements must clearly delineate the scope of consulting activities — what the faculty member is doing for the company using their expertise versus what they might do as part of their UT research — to clearly allocate resulting IP and avoid OTC involvement disputes after commercially valuable innovations are discovered.
Question: What is a joint invention at UT Austin — when does the university claim co-ownership of an industry partner's invention?
Answer: UT Austin claims co-ownership of inventions when UT personnel — faculty, research staff, graduate students, or postdoctoral researchers — contribute to the conception of claimed inventions as part of their university duties. The trigger for UT co-ownership is genuine inventive contribution by university personnel — being present during technical discussions, providing laboratory equipment, or assisting with experiments does not create inventorship or co-ownership unless the university personnel actually contributed to the inventive concept of at least one claim. For Austin companies conducting research collaborations with UT, the joint invention question arises most acutely when industry engineers and university researchers work closely together on technical problems where the inventive contributions become difficult to attribute to one party or the other. Managing joint invention risk requires establishing clear technical roles at the outset of the collaboration — with university personnel focused on aspects of the research where UT co-ownership is acceptable, and industry engineers independently developing the specific innovations that the company wants to own exclusively.
Question: What is the UT Austin startup ecosystem and what resources are available for IP development beyond OTC licensing?
Answer: UT Austin's startup support ecosystem extends well beyond OTC licensing to include multiple resources specifically relevant to IP development and commercialization. The UT Austin ATI — Austin Technology Incubator — provides incubation support for UT-affiliated startups including connections to IP counsel, mentorship from experienced technology entrepreneurs, and proximity to the university research community. Texas Ventures — UT Austin's venture fund — invests directly in UT-affiliated startups and provides the connection to Austin's broader venture capital community. The UT Austin Longhorn Startup program and LAUNCH programs support student entrepreneurs with business development resources. The Law School's entrepreneurship clinic provides legal support for early-stage startup legal needs. For startups licensing UT technology, these resources provide complementary support that supplements the technical IP protection that OTC licensing provides — helping founders develop the business, financial, and operational capabilities alongside the IP assets that OTC transfers. I have specific experience working with UT spinout companies at various stages of the ATI incubation and post-incubation process and advise on IP strategy coordinated with these broader UT startup support resources.
Question: What is a research collaboration agreement between UT Austin and a federal government contractor and how do the IP provisions interact?
Answer: Research collaborations between UT Austin and federal government contractors — defense contractors, government-affiliated research organizations, and companies performing federally funded research — create particularly complex IP frameworks because both the university's Bayh-Dole rights and the government's prime contract IP provisions may apply to innovations arising from the collaboration. Federal government contracts typically include FAR or DFAR IP clauses specifying the government's rights in inventions made under or in support of the contract — rights that may conflict with or complicate the university's standard Bayh-Dole election of title and licensing practices. For Austin companies performing federal government research contracts and collaborating with UT Austin, I advise on the specific interaction between the prime contract IP provisions, Bayh-Dole requirements, and UT's standard IP policy — identifying which IP framework governs specific innovations and whether any conflict between the frameworks needs to be resolved through specific agreement provisions or agency guidance before the collaboration begins.
Question: What is a technology transfer office and what does it do?
Answer: A technology transfer office — like UT Austin's Office of Technology Commercialization (OTC) — is the university administrative unit responsible for managing the commercialization of intellectual property developed by UT faculty, staff, and students. When a researcher submits an invention disclosure, the TTO evaluates it across several criteria before deciding whether to file a patent application: the commercial potential of the innovation; the patentability assessment; the clarity and completeness of the disclosure; and the stage of development. UT Austin's OTC typically makes a filing or no-filing decision within 60 days of receiving a complete invention disclosure. If it decides to proceed, the TTO files patent applications on promising inventions, markets the technology to potential industry partners, negotiates license agreements, and manages royalty revenue sharing with inventors under the university's IP policy. When OTC declines to file, researchers may have the option to petition for the right to pursue the IP independently, depending on UT's current IP policy and funding circumstances.
Question: What is an invention disclosure and what should it contain?
Answer: An invention disclosure is the formal document a university researcher submits to the Technology Transfer Office to initiate the process of evaluating and potentially protecting a new invention. At UT Austin, invention disclosures are submitted to the Office of Technology Commercialization through their online disclosure portal. A thorough invention disclosure should include: the names and contact information of all inventors; a description of the technical problem the invention solves and why existing solutions are inadequate; a detailed description of the invention including how it works, its key components, and its novel aspects; alternative embodiments and variations that embody the same inventive concept; any known prior art relevant to the invention; the development stage and available experimental data demonstrating the invention works; any planned publications, conference presentations, or other public disclosures; and information about any external funding that supported the development. The quality of the invention disclosure directly affects the quality of the patent protection that follows.
Question: What percentage of licensing revenue do university inventors typically receive?
Answer: University inventor royalty shares vary by institution but most major research universities including UT Austin share a meaningful portion of net licensing revenue with the inventor or inventors. UT Austin's royalty distribution policy allocates a percentage of net licensing revenue — after deduction of patent prosecution costs and OTC administrative expenses — to the inventor or inventors, with the remainder shared between the inventor's department and the university. The specific percentages in UT's policy are publicly available through OTC. Revenue sharing creates an important incentive alignment between the university's licensing interest and the inventor's commercialization interest — when the technology is successfully licensed, both the university and the inventors benefit financially.
Question: Can a UT Austin faculty member start a company based on their research?
Answer: Yes — UT Austin actively supports faculty entrepreneurship and spinout company formation through OTC resources, technology licensing programs, and connections to Austin's startup ecosystem. A faculty member who has made a potentially patentable discovery has several options for commercializing it: licensing the university's patent rights to an existing company; helping start a new spinout company that licenses the university's IP; working with a student or postdoc entrepreneur who forms the spinout; or in some cases, the faculty member themselves joining the spinout in a leadership role subject to UT's conflict of interest policies and disclosure requirements. The specific structure of faculty involvement in a spinout company must comply with UT's conflict of interest policies, which require disclosure and may require specific management measures depending on the extent of faculty involvement.
Question: What happens to student inventions at UT Austin?
Answer: UT Austin's IP policy for student inventions distinguishes between different categories of student activity — a distinction that's often unclear to students and creates uncertainty for potential commercial partners. Graduate students who make inventions in the course of research assistantship positions — paid as employees to conduct specific research — are generally subject to UT's IP policy, with inventions vesting in UT subject to standard inventor royalty sharing, just as with faculty employees. Graduate students who make inventions in the course of their independent academic work — using only the general educational resources of the university rather than specific research grants or specialized equipment — may have stronger claims to personal ownership. Students who make inventions using significant university resources — specialized laboratory equipment, research materials, or university grant funding — generally must disclose to OTC regardless of how the research was funded. For industry partners interested in commercializing a graduate student's invention, understanding which category applies is essential before investing time and resources in discussions that may ultimately require OTC's involvement regardless of the student's preferences.
Question: What is a sponsored research agreement and how do its IP provisions work?
Answer: A sponsored research agreement is a contract between UT Austin and an industry sponsor that funds research conducted at the university in exchange for specified IP rights to the research results. The IP provisions of an SRA typically address the sponsor's access to patent applications filed on inventions made in the research, the sponsor's option to negotiate an exclusive or non-exclusive license to those inventions, the publication rights of the researcher — including the right to publish research results and any delay period the sponsor can request before publication to allow patent applications to be filed, and the allocation of patent prosecution costs between the university and the sponsor. SRA IP provisions are negotiated between OTC and the industry sponsor and must comply with both UT policy and any applicable federal funding terms.
Question: What is a material transfer agreement and when is it required?
Answer: A material transfer agreement is a contract governing the transfer of biological materials, chemical compounds, research tools, or other tangible research materials between research institutions for research purposes. MTAs are required whenever a UT Austin researcher wishes to receive materials from another institution for use in their research, or to transfer UT-owned materials to another researcher. MTAs address ownership of materials transferred, restrictions on their use, confidentiality of any proprietary information associated with the materials, IP ownership of derivatives or modifications made by the recipient, and publication rights for research using the materials. Both incoming and outgoing MTAs require OTC review and approval because their IP provisions can affect the university's ownership of research results and the researcher's ability to publish.
Question: How does academic publication interact with patent rights?
Answer: Academic publication is the primary mechanism through which university research results are publicly disclosed — and public disclosure before a patent application is filed has significant IP consequences. In the United States, an inventor has a one-year grace period to file a patent application after their own public disclosure — so a published paper gives the inventor one year to file a US patent application without losing US patent rights. However, the same publication immediately and permanently destroys patent rights in absolute novelty jurisdictions — Europe, Japan, South Korea, China, and most other countries — where any disclosure before filing eliminates patent rights regardless of any grace period. For inventions with international commercialization potential, OTC should be notified and a patent application filed before academic publication — not after. Researchers should contact OTC as early as possible when they believe a publishable result may have patent potential.
Question: What is a startup license from UT Austin and how does it work?
Answer: A startup license is a patent license granted by UT Austin's OTC to a newly formed spinout company that will commercialize university-developed technology. Startup licenses typically involve a combination of upfront license fees, ongoing royalties tied to commercial sales, equity in the startup — which UT receives as part of the license consideration — and milestone payments triggered by commercial and regulatory achievements. The terms of startup licenses are negotiated between OTC and the spinout's founders, typically with the assistance of legal counsel experienced in university licensing. Key negotiating points include the royalty rate and its relationship to industry norms for the specific technology area, the field of use definition and whether it is broad enough to support the startup's business plan, the diligence obligations requiring the startup to actively develop and commercialize the technology, and the change of control provisions addressing what happens to the license if the startup is acquired.
Question: What is the interplay between Bayh-Dole rights and university spinout licensing?
Answer: The Bayh-Dole Act gives universities the right to elect title to inventions made with federal funding — but imposes obligations that follow the inventions throughout their commercial lifecycle, including when licensed to spinout companies. Bayh-Dole obligations that affect spinout licensing include the government's retained license right — the government receives a royalty-free, irrevocable license to practice any Bayh-Dole invention for government purposes; the domestic manufacturing preference — products substantially embodying Bayh-Dole inventions should be manufactured substantially in the United States unless a waiver is granted; the march-in rights — the government can require licensing to additional parties if the spinout is not adequately commercializing the technology; and the reporting obligations — the spinout as sublicensee may have reporting obligations about commercialization progress. Spinout companies licensing Bayh-Dole inventions should understand and plan for these obligations before entering the license.
Answer: The Bayh-Dole Act requires that an organization receiving federal research funding disclose each subject invention — an invention made with federal support — to the funding agency within a specified period after the invention is first disclosed in writing within the organization or after it is identified as potentially patentable. The specific disclosure deadline under Bayh-Dole regulations is two months after the inventor's obligation to disclose to the employing organization — meaning UT must disclose to the federal agency within two months of the researcher disclosing to OTC. If Bayh-Dole disclosure deadlines are missed, the government may demand title to the invention — converting what would have been university-owned IP into government property. The consequences of missing the deadline are severe and largely irreversible. For researchers working with federal funding, timely disclosure to OTC immediately upon recognition of a potentially patentable invention is essential — not just an administrative courtesy but a legally significant obligation with consequences for both the university and the inventor.
Question: What is a Bayh-Dole invention disclosure deadline and what happens if I miss it?
Question: What is a UT Austin spinout license negotiation and how long does it typically take?
Answer: Negotiating a startup license from UT Austin's OTC involves structured discussions between the founding team — often assisted by a patent attorney experienced in university licensing — and OTC licensing professionals. The process typically begins with the inventor submitting an expression of interest in licensing the technology for a startup, followed by OTC's assessment of whether a startup license or an established company license is the appropriate commercialization vehicle. If OTC agrees to a startup license, the parties negotiate specific terms including the license field of use, royalty rate and structure, upfront license fees, milestone payments, equity participation by UT, diligence obligations requiring the startup to actively develop the technology, and change of control provisions. The timeline for completing a UT startup license negotiation varies significantly based on the complexity of the technology and the negotiating positions of the parties — straightforward negotiations may be completed in two to three months, while more complex arrangements involving multiple patents, federal funding complications, or unusual commercialization structures may take six months or longer.
Question: What is a government use license in a Bayh-Dole patent and how does it affect startup licensing?
Answer: The government use license that attaches to all Bayh-Dole inventions gives the federal government — and any government contractor acting on behalf of the government — a paid-up, irrevocable, worldwide license to practice the patented invention for government purposes. This government license right follows the invention through any subsequent assignment or license — meaning that if a startup licenses a Bayh-Dole patent from UT Austin, the startup's licensee rights are subject to the government's prior paid-up license. For most commercial applications of Bayh-Dole patents, the government license right is not a practical concern because the government is not a competitor in the commercial market for the licensed technology. However, for startups in defense technology, government health information technology, or other fields where the federal government itself is a significant customer, the government license right could affect the startup's commercial IP position — the government can practice the patent without paying the startup regardless of the startup's exclusive license from the university.
Question: What is a materials transfer agreement for research tools and how does it affect downstream IP?
Answer: Materials transfer agreements for research tools — reagents, cell lines, model organisms, software tools, datasets — create specific downstream IP implications that researchers and companies receiving the materials sometimes do not fully appreciate. MTAs for proprietary research tools from commercial suppliers often include provisions restricting the use of any resulting discoveries — prohibiting commercialization of results obtained using the tool, requiring publication restrictions, or asserting IP rights in any innovations that would not have been achieved without the proprietary tool. These provisions can be commercially devastating for researchers who use a proprietary research tool to make a significant discovery and then find that the tool provider's MTA restricts their ability to patent or commercialize the result. Before accepting materials under an MTA with IP-affecting provisions, researchers should have the MTA reviewed — and OTC should be notified of any MTA that contains publication restrictions or commercialization restrictions that could affect the university's ability to patent or license resulting innovations.
Question: What is a research exception to patent infringement and does it protect university research?
Answer: The common law research exception to patent infringement — recognized in some court decisions — is a narrow judge-made doctrine that has been significantly limited by the Federal Circuit's Madey v. Duke University decision (2002). The Madey decision held that the research exception is extremely narrow — limited to actions performed for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, with no commercial intent whatsoever. The court specifically held that university research does not qualify for the research exception because universities have commercial intent — obtaining grants, maintaining status, and furthering their institutional missions. The practical implication for UT Austin and other research universities is that conducting research using patented research tools without a license is patent infringement even in a purely academic context — the research exception provides essentially no protection for institutional research activities. This reality makes MTAs and research tool licenses — rather than reliance on a research exception — the appropriate mechanism for managing patent risk in university research settings.
Question: What is a university IP policy's treatment of software versus hardware innovations?
Answer: Most university IP policies — including UT Austin's — treat software innovations somewhat differently from hardware and process innovations in specific contexts. The traditional university IP policy framework was developed primarily for hardware and process inventions and can apply awkwardly to software that is developed as a byproduct of research computing activities rather than as a deliberate inventive effort. Some universities, including UT Austin, have modified their policies to recognize that software developed by students and faculty as part of their academic work — particularly software tools, educational software, and research utilities — may be treated differently from patentable hardware innovations. The specific treatment depends on the funding source, the institutional resources used, the relationship between the software and the researcher's official duties, and whether the software has the characteristics of a research byproduct or a deliberately commercializable innovation. I advise UT Austin researchers on the IP policy implications of their specific software development circumstances before making commercial plans that depend on assumptions about ownership.
Question: What is a UT System IP policy versus a UT Austin campus IP policy and how do they interact?
Answer: The University of Texas System Board of Regents establishes the overarching IP policy framework — codified in the Regents' Rules and Regulations — that applies across all UT System institutions including UT Austin, UT San Antonio, UT Dallas, UT Health, and other component institutions. Within that system-wide framework, each component institution — including UT Austin — may have more specific implementing policies that address campus-specific circumstances, procedures, and distribution formulas. For researchers and collaborators interacting with UT Austin specifically, the most relevant policies are UT Austin's Handbook of Operating Procedures provisions implementing the System-level IP policy, OTC's specific procedures for invention disclosure and licensing, and any component-specific policies applicable to federal funding compliance, conflict of interest management, and faculty consulting. When university IP policies appear to conflict or when a specific situation falls in the gap between system-level and campus-level policies, OTC is the appropriate first point of contact for guidance on the applicable policy framework.
Question: What is a technology licensing option agreement and what are its key terms?
Answer: A technology licensing option agreement gives a company the exclusive right to negotiate a license to a specific university technology within a defined option period — typically 6 to 18 months — in exchange for an option fee and a commitment to conduct due diligence. Option agreements are frequently the first step in university technology licensing — they provide the company with time to assess the technology's commercial potential, conduct IP due diligence, and develop a business plan before committing to the royalty obligations of a full license. Key terms in option agreements include the option period and extension provisions, the option fee and whether it is credited toward subsequent license fees, the exclusivity of the option, the scope of technology covered, the company's diligence obligations during the option period, and the terms of the contemplated full license that the option would convert into. Options from UT Austin's OTC are typically non-negotiable on certain terms but offer meaningful flexibility on field of use, exclusivity level, and due diligence scope.
Question: What is a joint IP ownership agreement between UT Austin and an industry partner?
Answer: Joint IP ownership between UT Austin and an industry partner arises most commonly from jointly funded research where both parties' employees contribute to an invention — employees of the industry partner who are embedded in the university research program, industry engineers who co-invent with university faculty, or collaborative research programs where both parties provide substantial technical contributions. UT Austin's default position is to seek ownership of all inventions made with university resources, but joint inventions create more complex ownership situations that require negotiated joint ownership agreements. Key issues in UT-industry joint IP ownership agreements include which party has the right to file and prosecute patents (typically the party with greater technical expertise in the specific invention), how prosecution costs are shared, who has the right to license the jointly owned IP, how licensing revenue is shared between the university and the industry partner, and how decisions about enforcement and licensing are made when the parties disagree. I advise industry partners negotiating joint IP ownership agreements with UT Austin on the key terms that most significantly affect commercial value and flexibility.
Question: What is a university research collaboration agreement and how does it differ from both a sponsored research agreement and a JDA?
Answer: A university research collaboration agreement occupies territory between a sponsored research agreement — where an industry sponsor funds research conducted by university personnel — and a joint development agreement — where two parties co-develop technology as commercial equals. A collaboration agreement typically involves more active industry partner participation in the research design and execution than a standard SRA, but maintains the university's academic independence and publication rights more firmly than a commercial JDA. IP provisions in university collaboration agreements must navigate both UT's IP policy framework — which generally vests ownership of UT employee inventions in the university — and the industry partner's need for meaningful commercial access to research results. Common structures include the industry partner receiving a first right to negotiate an exclusive license to collaboration results, with the negotiation obligation triggered by the university's filing of a patent application on those results. I advise industry partners on structuring university research collaboration agreements to maximize commercial IP access while meeting UT's legitimate institutional interests.
[ Related Services ]
Clients commercializing university research often also work with me on:
[IP Assignment Agreements] · [Joint Development Agreements] · [Startup IP Strategy] · [IP-Focused Business Formation] · [PCT International Patents]
[ Schedule a Free Consultation ]
University & Research Institution IP
Faculty researchers, graduate students, and staff at UT Austin, UT Dell Medical School, and other Texas research institutions regularly develop genuinely patentable innovations in the course of their research — and navigating the intersection of university IP policies, technology transfer office processes, and personal IP rights requires specialized knowledge.
I offer a free 30-minute consultation to discuss your research innovation, assess its patentability, and explain the process for protecting and commercializing university-developed technology.
As a UT Austin physics graduate myself, I have a particular connection to and understanding of the university research environment and the technically sophisticated innovations it produces — from condensed matter physics and photonics to semiconductor device engineering to biomedical technology.
Call or text (512) 293-0710, email sconnolly@austin-patent-attorney.com, or fill out the form.
Phone: 512-293-0710
Email: sconnolly@austin-patent-attorney.com
Location: Austin, Texas
Serving Austin, Round Rock, Cedar Park, Georgetown, and all of Central Texas.
USPTO matters are federal — I work with clients throughout Texas and nationwide.