Rice IP Policy Frequently Asked Questions
What is the difference between an inventor and an owner of a patent?
Inventor: An individual who invented or discovered the subject matter of an invention.
Owner (Assignee): The entity that owns the intellectual property resulting from an invention.
Why is the inventor not necessarily the owner? When federal or third-party funding is used, obligations in those funding agreements specify who will own the IP (typically not the inventor). Additionally, when an employee has an IP agreement with their employer, the agreement often assigns IP created as part of their employment to their employer.
What is the Bayh-Dole Act and what are the federal requirements for federally funded research at universities?
- Universities must require employees to assign invention rights to the university.
- Royalties must be shared with inventors and used for scientific research.
- There is a 60-day limit to notify the government when patent prosecution is discontinued.
- Federal reporting is completed via the iEdison database — completed by OTT at Rice.
- All federal agencies fall under Bayh-Dole, including NSF, NIH, NCI, DOD, DOE, and all SBIR/STTR funding.
- Universities must grant the government a nonexclusive, irrevocable, paid-up license to practice the invention.
- Exclusive licenses require substantial U.S. manufacture unless a waiver is granted.
What is an employment IP agreement?
An employment IP agreement assigns IP from an inventor/creator who is an employee to their employer. Almost all US academic institutions and companies legally require employees to assign their IP to their employer.
At Rice, the agreement only assigns IP created (i) within the course and scope of employment, (ii) with substantial use of Rice resources, or (iii) under third-party obligations. The inventor/creator maintains ownership of all other IP.
These agreements are required for federally funded research under 37 CFR §401.14, and for research with third-party funding such as industry sponsored research agreements, CPRIT, foundations, and non-government organizations.
What are the benefits of having an Office of Technology Transfer (OTT) at Rice?
- Easier transactions with the federal government and other countries' patent offices.
- Faster licensing negotiations to ensure IP gets to market — companies prefer to negotiate with universities rather than multiple inventors.
- Reduced time and expense for inventor(s)/creator(s) at Rice, resulting in more patent filings. University management of IP is a service provided by Rice under OTT.
What happens if I have an external collaborator and we are both inventors on an invention disclosure?
Each inventor must submit an invention disclosure to their own institution.
OTT will work directly with the technology transfer office at the other institution — nationally or internationally — to manage the potentially jointly owned technology collaboratively.
There is no additional burden on the inventors.
What is the difference between a confidential disclosure agreement (CDA) and a non-disclosure agreement (NDA)?
These terms are used interchangeably and refer to the same type of agreement. Both a CDA and an NDA establish what is and what is not confidential information when communicating with a third party.
When do I need a material transfer agreement (MTA)?
Any time you want to send or receive material from a third party. Some transfers may allow for a straightforward template, while others may involve more complicated terms depending on the nature of the materials and their destination.
MTAs help ensure all proper documents for both the sending and receiving party have been completed, such as IRB/IBC/IACUC review, environmental health & safety review, and export control checks.
An MTA allows a contract specialist at the university to review any third-party requirements without placing that burden on Rice's faculty or researchers.
What is "significant use"?
- Extended use of time and energy by the inventor(s) or creator(s) in the creation or promotion of the intellectual property.
- Use of products or services obtained through a substantial expenditure of Rice funds in support of the IP's creation.
- Direct assignment or commission from Rice to undertake a creative project as part of the inventor's or creator's regular appointment.
- Substantial use of funding from gifts to Rice to support creation of the intellectual property.
- Production of the intellectual property under specific terms of a sponsored research grant or contract.
What is NOT "significant use"?
- Use of assigned office space, normal clerical support, and routine use of library resources, desktop computers, and office supplies.
- Undergraduate students creating intellectual property while completing a Capstone project using money and equipment that every student in the class has access to.
Are specific programs exempt from the "significant use" requirement?
Yes. Specific programs established to support education may be designated "Exempt Programs" and are exempt from the significant use requirement.
Any IP developed using Rice resources or facilities solely as part of an inventor's/creator's participation in an Exempt Program will be treated as a non-significant use of Rice resources when determining IP ownership.
The EVPR maintains a current list of Exempt Programs.
What happens if I am an undergraduate student working in a research lab at Rice?
Under IV.A.1. of the policy: Rice owns IP that is generated, conceived, created or first reduced to practice in the conduct of Rice research. All researchers in that lab are required to sign an IP agreement. See question 14 for more details.
What happens if I am a student completing an internship, externship, or studying at another institution?
Undergraduate or professional master's students: Rice does not own IP unless it was generated, conceived, created, or first reduced to practice as stated in Section IV.A.1. of the policy.
Graduate students (other than professional master's): As an employee at Rice, certain IP obligations might conflict with a company's IP policy during an internship. Rice may be able to offer certain exemptions. Students should contact OTT at techtran@rice.edu with any inquiries.
Please note the company or institution where the engagement will occur may also have an IP policy for interns — review it carefully to understand any IP obligations.
What does "course and scope of employment" cover?
Within course and scope:
- A professor performing research related to their field of expertise in their lab at Rice.
- A PhD student conducting experiments in their PI's lab at Rice.
- A postdoctoral fellow performing experiments directed to new materials in their PI's lab in collaboration with another institution.
- A mechanical engineering professor whose research focuses on fluid mechanics invents a new pipe coating — even if done at home.
- A grad student's internship research at a company not using Rice resources or funding.
- An undergraduate's Capstone invention not encumbered by a third-party funder agreement.
- A professor consulting with a company on a topic entirely outside their Rice research area.
Why are employees required to sign an IP assignment?
An IP assignment to Rice protects you, your invention, and your ability to commercialize — it allows Rice to correct incorrect assignments and avoid violations of federal and third-party agreements.
The Bayh-Dole Act requires university employees to assign invention rights to the university for federally funded research. Without a correct IP assignment, a researcher might be violating federal law or third-party funding agreements, and venture capitalists will require verified assignments before investing in startups.
Following the 2011 Supreme Court ruling in Stanford v. Roche, every US university requires researchers to sign an IP assignment.
What are examples of a visiting scientist?
- Faculty members from another university conducting research at Rice.
- Graduate students or postdocs enrolled/employed at another university temporarily conducting research at Rice.
- Undergraduate students from other universities participating in federally funded REU programs or other summer research programs.
- Former Rice students or postdocs who want to continue using Rice resources after moving to another university (e.g., needing lab access, physical materials, or HPC resources). Note: informal collaboration such as co-writing a paper would not qualify.
Why does Rice require a visiting scientist to sign a visitor IP agreement?
A visitor IP agreement protects faculty, researchers, and Rice when federal funding or third-party contracts are involved. It also protects against IP ownership entanglement that could affect future commercialization.
A visitor is NOT required to sign for casual encounters such as observing research techniques, coffee, lunch, or seminar guest speaking. However, a visitor IS required to sign if they are conducting research in a Rice lab.
For any questions, please reach out to OTT at techtran@rice.edu.
Who does Rice license technology to?
OTT works with inventors to develop a commercialization strategy that may include:
- Coordinating with the Rice inventor's startup company.
- Working with inventors to identify potential licensees.
- Marketing technologies to established companies and startups.
How long does it take to license a technology?
OTT takes around 1–2 weeks to draft a license agreement and aims for 2–4 weeks for negotiations. Execution can be completed in days if there are no issues with the terms, though timelines vary greatly depending on how long documents sit with the licensee or their attorney.
Negotiations move considerably faster when a licensee hires outside counsel with university license agreement experience.
For reference: FY2023 averaged 82 days with OTT and 117 days with the company (254 days total pendency); FY2024 averaged 50 days with OTT and 121 days with the company (140 days total pendency).
How long does it take Rice to distribute revenue to inventors?
OTT will distribute revenue immediately after sunk cost recovery (see IP Policy Section V.B.2.a. for more details). Distribution occurs on an annual basis thereafter.
Inventors will receive a memo outlining the amount they will receive at the time of distribution.
What office do I reach out to for Releases of Intellectual Property?
Questions about Releases should be directed to OTT.
You may reach OTT via email at techtran@rice.edu or by calling 713-348-6188.
How do you transfer ownership of an invention to the inventors in the event of a release?
Federally funded IP: Rice must request and receive a waiver from the funding agency before releasing ownership to the inventors. Rice provides the agency with reasoning for the release; the agency then reviews and decides on the waiver. This process typically takes at least 6 months, and often longer, depending on the funding agency's response time and decision.
Non-federally funded IP: OTT will review and provide a recommendation to the EVPR after ensuring there are no funding obligations with IP ownership requirements. The EVPR has final authority; decisions are made on a case-by-case basis and may require review by other Rice departments.
What does it mean in Section V.C.1. to "take into account the stage of development of the IP"?
Rice cannot release IP without understanding what the invention is. An invention cannot be released until it has been reduced to practice — meaning it is not merely an idea, but has been built and tested to work for its intended purpose.
Are there any other obligations for the inventor(s)/creator(s) under a Release?
- If the released invention was federally funded, the inventor(s)/creator(s) assume all responsibility for mandatory reporting to federal funding agencies and compliance with any related federal regulations.
- Rice will require a license back to use the released IP for educational and research purposes.
- Inventors have a continued obligation to disclose all improvements of released IP to the university if such improvements were created subject to Rice's IP policy.
- Rice may require a revenue share back to Rice if the technology is commercialized.
What does "licensing activities" include in costs?
- Legal costs of patent preparation and prosecution or other IP protection.
- Patent maintenance fees.
- Legal costs needed for corporate/start-up document review.
How is IP treated in multi-institution centers?
OTT works closely with Rice PIs and other institutions' technology transfer offices to facilitate research while securing IP rights for Rice PIs and researchers.
Each center prepares an IP agreement that Rice and all other institutions agree to follow. Rice works to harmonize IP agreements across institutions to prevent competing ownership claims — provided all external agreements are disclosed to OTT in a timely manner before execution. Early disclosure of any agreements or discussions is always key.
Examples of such centers include engineering research centers (ERCs) such as Carbon Hub, WaTER (formerly NEWT), and ATOMIC.
What do I need to do if I am faculty and will be consulting at my start-up?
Please visit the research integrity website to submit a conflict of interest (COI) disclosure.
Please also make sure to include the Rice Addendum to Faculty Consulting or Related Agreement as an addendum to your consulting agreement with the outside entity. The addendum does not require signature by the outside entity.
What is the procedure for submitting an invention disclosure?
Steps for submitting an invention disclosure can be found here.
What is the procedure for requesting a confidentiality, material transfer, data use, collaboration, or sponsored research agreement?
Steps for submitting an agreement request can be found here.
Email mta@rice.edu with any questions.
What is the option and license timeline?
Steps for OTT's commercialization process can be found here.
How does the IP policy relate to faculty lectures, scholarly writings, and architectural drawings?
This policy does not relate to copyrights. Please see Rice's copyright policy 334 for guidance on faculty lectures, scholarly writings, and architectural drawings.