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RULE §703.16Intellectual Property Agreement

(a) To the extent that there is a conflict between this chapter and the Grant Contract between the Institute and the Grant Recipient, the Grant Contract terms will control.

(b) The Grant Recipient may retain, assign or transfer all or a portion of any of the Intellectual Property Rights relating to the project results. Any such assignment or transfer to a third party is subject to the following requirements:

  (1) The Grant Recipient shall notify the Institute of the proposed transfer or assignment;

  (2) The Grant Recipient shall ensure that the assignment or transfer is subject to the licenses, interests and other rights provided to the Institute pursuant to the Grant Contract and any applicable law or regulation; and

  (3) Unless the transfer is taking place pursuant to an exercise of the United States government's rights under 35 U.S.C. §203, the Institute may provide comments to the Grant Recipient related to the proposed transfer or assignment of rights, which the Grant Recipient shall consider in good faith and use reasonable efforts to account for and incorporate such comments into the actual transfer or assignment of such rights.

(c) Unless specifically authorized by the Institute, Grant Award proceeds shall not be used to pay the costs or expenses associated with the efforts to protect the Intellectual Property Rights.

(d) As a condition of accepting Grant Award funding from the Institute, the Grant Recipient agrees to the following required commitments as defined in the Grant Contract with regard to any project results:

  (1) To use commercially reasonable efforts to protect, develop, commercialize, or otherwise bring Project Results to practical application to the fullest extent feasible as determined by the Grant Recipient. The Grant Recipient is relieved of its obligations pursuant to this section so long as the Grant Recipient complies with paragraph (3) of this subsection and §703.19 of this chapter (relating to Opt-Out and Default).

  (2) To share with the Institute a portion of the benefit derived from the commercial development of the Project Results, as set forth in the Grant Contract.

  (3) To notify the Institute in writing prior to declining to pursue, abandoning, waiving or disclaiming some or all Intellectual Property Rights related to the Project Results. Such notification shall be made with sufficient time to provide the Institute an opportunity to license or pursue the appropriate applications and other protections for such Intellectual Property Rights to the fullest extent permitted by law.

  (4) To keep the Institute promptly and reasonably informed regarding the activities undertaken by the Grant Recipient to protect and/or commercialize the Project Results and to consider in good faith Institute input, if any, regarding same. Such activities may include, but are not limited to, the following:

    (A) Filing of an invention disclosure forms (including updates and revisions);

    (B) Creation of commercial development plans;

    (C) Application, issuance, prosecution and maintenance of patents; and

    (D) Negotiation of final term sheets and License Agreements.

  (5) To allow access to the books and records of the Grant Recipient for the purpose of conducting an audit during normal business hours with reasonable notice to verify amounts paid to the Institute pursuant to this chapter. Notwithstanding the time limitation provided in §703.13 of this chapter (relating to Audits and Investigations), the right to audit the books and records of the Grant Recipient to verify amounts required to be paid to the Institute shall continue for so long as the payments shall be made.

Source Note: The provisions of this §703.16 adopted to be effective August 1, 2010, 35 TexReg 6656; amended to be effective March 2, 2014, 39 TexReg 1386; amended to be effective December 7, 2016, 41 TexReg 9527

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