Intellectual Property Ownership and Disposition, and Employee Involvement in Research Commercialization
Procedure No.: 17.001
Page No.: 1,2,3,4 and 5 of 5
Date Issued: 02/01/95
Issued By: T.L.Chesnut
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- To provide a policy governing the ownership of intellectual property and associated University employee responsibilities.
- It has long been the tradition of Ohio University to disseminate scholarly and creative endeavors for public and private use and benefit. The growing responsibility of Ohio University to provide inputs for the ever increasing knowledge-based economy is seen in federal and state laws. The federal Patents and Trademark Act of 1980 grants universities ownership of inventions developed in the course of federal sponsorship and requires the creation of procedures for disclosing and developing inventions. Similarly, Ohio Revised Code Section 3345. 14 grants invention property rights, including patents which were created as a result of university related research, to the University. For a third source of research funding, private sponsorship, intellectual property rights are stipulated by contract. Although the ownership of inventive endeavors is usually clear, the guidelines for disposition of intellectual property and the role of the university employee in the process and sharing of rewards has been less clear.
- A. create appropriate support mechanisms and incentives to encourage inventive work,
B. assure fair allocation of benefit between inventors and the University,
C. establish general guidelines for University personnel,industrial sponsors and funding organizations on the disposition of intellectual property, and
D. define the rights and responsibilities of faculty, staff and students with emphasis on allowing inventors to become appropriately involved in and benefit from commercialization decisions and processes.
- A. Ownership
- Patentable inventions (hereinafter called patentable intellectual property) created by Ohio University faculty, staff and students (hereinafter called inventors) in connection with activities either
supported by University-administered funds or conducted in University controlled facilities, shall be the property of the University in accordance with state law. Otherwise, the invention shall be the sole property of inventors.
Software or computer data bases created as a result or byproduct of a research agreement between outside sponsors and the University may, under terms of the agreement, require the University to convey commercial use rights to the sponsor. In such cases the University will be assigned ownership and the sponsor granted a license, thereby allowing the University to pursue commercialization and distribute license royalties to the creator. All such arrangements must contain language that holds the University harmless from all liability claims and product warranties.
Computer software or data bases created by an individual as part of University-assigned duties shall be the property of the University. Otherwise, non-patentable software or data bases created by an individual are owned by the creator. Ownership of such software and data bases is not contingent on whether or not University facilities were used or University support was provided as is the case for patentable intellectual property.
B. Invention Disclosure
- Inventors are strongly encouraged to disclose all potential patentable intellectual property to the University Technology Transfer Office. For sponsored research, inventors have a contractual obligation to promptly disclose potential patentable intellectual property. The Technology Transfer Office will review each intellectual property disclosure for commercialization potential and assess the University's responsibility to disclose inventions to research sponsors. Such reviews shall take no longer than 90 days before a decision is made as to University interest in pursuing commercialization. If the University declines to pursue commercialization the inventor and the funding agency will be notified in writing and the inventor may have the right to commercialize the intellectual property independent of University ownership.
C. Distribution of License Royalties
- In return for license rights granted to a commercial entity to make, use and sell the University's patentable intellectual property, the University shall seek royalty from the licensee. Royalties earned on any intellectual property owned by or assigned to the University will be distributed to faculty, staff or student inventors, or other inventive parties once all expenses associated with the particular intellectual property have been recovered by the University. Royalty is subject to distribution according to the following formulae:
The first $100,000 of annual royalty
- 50% as direct payment to inventor(s)
- 15% to department of the inventor(s) or
- originating unit
- 10% to college of the inventor(s)
- 25% to the University
More than $100,000 of annual royalty
- 30% as direct payment to inventor
- 20% to department of the inventor(s) or
- originating unit
- 15% to college of the inventor(s)
- 35% to the University
All named inventors shall receive equal distribution. In special circumstances, after consultation and agreement affected units, the Vice President among inventors and an alternative for Research and Graduate Studies may use formula for distributing royalty.
D.Tangible Research Property (TRP)
- Tangible Research Property consists of materials or devices created as a result of research. TRP is defined as compounds derived by artificial or non-naturally occurring means, such as chemical and biological compounds, as well as devices or instruments constructed as part of a research endeavor, such as electronic equipment, and integrated circuits. Whenever TRP is derived from conditions that apply either to patentable intellectual property inventions or to sponsored research or contractual obligations, the TRP ownership will be assigned to the University. However, if TRP is created independent of either sponsored research or contractual obligations of University employment, ownership of TRP will reside
with the creator. The creator may assign the non-university owned TRP to the University for commercialization purposes in return for a share of the license royalty. All TRP transfer agreements must be approved by the Technology Transfer Office. All TRP exchanges should be accompanied by agreements which correctly specify either University ownership or assignment and the conditions for use by the recipient. In no case will the University warrant the product and the University will be held harmless from all liability claims. It is the responsibility of the creator to assure proper development, control, storage and distribution of TRP. Distribution of University-owned or University-assigned TRP to the research community is encouraged.
Commercial entities may desire to evaluate TRP either owned by or assigned to the University prior to actually licensing the TRP or the processes used to derive the TRP. In return for the right or option to evaluate the commercial potential of TRP, the commercial entity should pay fees both to obtain the TRP and to secure the option to evaluate the TRP. University revenues derived from TRP evaluations should be directed to the laboratory or department of the creator(s). If an actual commercial license occurs, the distribution of royalty from the TRP, or derivatives of it that may exist in the form of patents or other licensable property, will be subject to arrangements and distribution formulae specified above. The Technology Transfer office will become involved in marketing and commercial distribution of creator-owned TRP only if the creator assigns ownership rights to the University.
IV. INVENTOR/EMPLOYEE RESPONSIBILITIES
Conflicts of interest
- exist when a University employee acts to advance his or her personal interest in a manner that diminishes or otherwise causes harm to an interest of the University or violates state or federal law. Conflicts of commitment exist when an individual who engages in commercial activity does not meet University obligations. These types of obligations generally include meeting classes, student advising, committee work, public service involvement, direction of student research advancement and similar scholarly activities. The key to University employees avoiding any conflicts of interest and commitment is full and open disclosure. Faculty and staff must disclose to their immediate supervisors all commercial arrangements related to their scholarly work in
accordance with the Faculty Handbook, Section IV. A disclosure should be made whenever possible perceived conflicts of interest could arise. At a minimum, disclosure of all commercial activities including consulting arrangements should occur once a year. The disclosure should include the nature and duration of the relationship, the entity or individual with which the relationship has been established and any special circumstances about the relationship that pertain to the employee's work at the university, such as, student involvement or use of facilities or equipment.
University faculty and staff may not become directly involved in negotiating commercial agreements for intellectual property which is owned, assigned to or otherwise controlled by the University. It is the responsibility of the Technology Transfer Office to conduct such negotiations. University personnel are discouraged from holding positions as operating officers or acting in key decision-making capacities in businesses that have or intend to establish commercial relationships with the University. Faculty and staff members may hold ownership in private entities that seek to commercialize the results of their research provided that (1) such arrangements conform to Ohio law, (2) ownership is fully disclosed to the Vice President for Research and Graduate Studies, and (3) ownership does not bias scholarly activities of the person owning equity or of individuals directed by the person.
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Dick Piccard revised this file (http://www.ohio.edu/policy/17-001.html) on May 2, 2013.
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