Intellectual Property Policies

Official Documents

TABLE OF CONTENTS

  

800.00 INVENTIONS, PATENTS, AND INTELLECTUAL PROPERTY

As a leading, research intensive institution, Tennessee State University (TSU) through the Office of Technology Transfer and Licensing in the Division of Research and Sponsored Programs (RSP) encourages the faculty, staff, students, and volunteers to engage in research activities that lead to inventions and innovation, discoveries that are copyrightable or qualify for a trademark, technology transfer, and the development of intellectual property (see TBR Policy No. 5:01:06:00).  In addition, it is also the policy and responsibility of TSU and other affiliated organizations, such as a university-connected research corporation, to encourage the use of such discoveries and inventions for the good of the public; and to provide equitable distribution between TSU and the investigator/inventor(s) of licensing revenues resulting from the commercialization of novel discoveries and inventions in which the University is deemed to have an interest.

-- back to top --

800.05 RESEARCH

The research covered by this policy shall include all research conducted in the course of an investigator's employment with TSU and/or other affiliated organizations such as a university-connected research corporation (including but not limited to the performance of a grant, contract or award made internally or by an extramural agency) or any research activity conducted with the use of TSU and/or other University-affiliated resources.

-- back to top --

800.10 APPLICABILITY

This policy applies to all discoveries, developments, or inventions made by persons employed (either as full-time, part-time or temporary employees) by TSU and/or affiliated organizations, students, volunteers, and to other persons using University facilities and resources if such discoveries and inventions are:

(1) results of research investigation performed by or under the direction of any faculty member, staff, student, trainee or volunteer of the University or affiliated organizations the cost of which was partially or wholly paid for with funds under the control of or administered by the University and/or affiliated organizations, or

(2) a result of efforts by a TSU faculty member, staff, student, trainee or volunteer utilizing TSU and/or affiliated organizations facilities, laboratories or other resources available to such faculty member, staff, student, trainee or volunteer because of their status within TSU or University-affiliated organizations.

Contracts for works for hire between TSU and/or affiliated organizations, and independent contractors should define the respective rights and responsibilities of the parties with respect to ownership of any intellectual property developed as a result of the contract.

-- back to top --

805.00 RESPONSIBILITY FOR UTILIZATION

The factors to be considered in establishing the responsibility for the utilization of any invention, discovery, or intellectual property as well as sharing of the proceeds are:

  • The University sponsorship of the project leading to the invention, discovery, technology transfer or intellectual property;
  • Significant use of the University’s facilities, services or equipment in the discovery or production process; and
  • Sponsorship of the project through the University by agencies or persons outside the University.

In the event that any one of these three factors exists, the University shall have an interest in the invention, discovery, copyrights, trademarks, or other intellectual property. The University's interest shall not be affected by whether or not the researcher continues to be employed by the institution after University resources are committed to the project.

-- back to top --

810.00 INVENTION DISCLOSURES

 Inventions, discoveries and other developments conceived or first reduced to practice in the furtherance of research conducted by University and personnel, as defined in Section 800.10 above, shall be promptly disclosed in writing to the Division of Research and Sponsored Programs through the Office of Technology Transfer and Licensing. The standard disclosure forms provided by the University should be used for this reporting process. Graduate students, visiting scientists, and post-doctoral fellows, are responsible for disclosure if inventions, discoveries, copyrightable material and trademarks directly result from classwork or programs of study, or if significant University resources were utilized.

-- back to top --

815.00 OWNERSHIP OF INTELLECTUAL PROPERTY

All rights to and interests in discoveries, developments, inventions or other intellectual property resulting from research or investigation conducted in the course of the discoverer's or inventor's employment with TSU and/or affiliated organizations (including but not limited to the performance of a grant, contract or award made internally or by an extramural agency) or with the use of University resources shall be the sole and exclusive property of TSU, and no other person or entity shall have any rights of ownership or interest in such discoveries, inventions or intellectual property. Any and all exceptions to this policy shall be determined and approved by the President upon the recommendation of the Vice President of Research and Sponsored Programs in consultation with the advisory committee.

Intellectual property developed outside an employee’s scope of employment, on the employee’s own time and without the use of significant University resources shall be the sole and exclusive property of the Inventor or Author. In consideration of University support in evaluating the intellectual property, seeking patent protection and/or pursuing commercialization activities, the University and the Inventor or Author may agree to assign all or a portion of the ownership rights to his or her invention or work to TSU.

The University will not assert ownership of "scholarly" works, regardless of whether the circumstances surrounding creation of the work satisfy one or more of the four tests outlined in this policy for determining University ownership. Disclosure of "scholarly" works is nonetheless required, subject to the condition that only those copyrightable works which could reasonably be expected to have commercial value must be disclosed.

-- back to top --

820.00 RIGHTS AND OBLIGATIONS OF THE PARTIES

All rights to and interests in discoveries, inventions or intellectual property arising in the course of research or investigation sponsored by TSU and/or university-affiliated organizations, any government or private agency or other sponsored research are controlled by the terms of the applicable research agreement, which must be reviewed, negotiated and approved by the Division of Research and Sponsored Programs prior to execution. In the absence of provisions to the contrary contained in any such research agreement, the following shall apply.

-- back to top --

820.05 INVENTOR RIGHTS

The inventor has the right to: (1) receive notice within a reasonable time of the University's intention to file a patent application or otherwise to retain title to the discovery or invention after disclosure to the University of a discovery or invention; (2) receive a share of any licensing fees or royalties received by the University from the commercialization of the discovery or invention according to the distribution schedule contained in Section 835.00 of this Policy; (3) receive from TSU title to any discovery or invention subject to this Policy in the event TSU elects not to retain title; and  (4) timely publication of their research findings.

-- back to top --

820.10 INVENTOR OBLIGATIONS

The inventor is obligated to: (1) report promptly to the Division of Research and Sponsored Programs through the Office of Technology Transfer and Licensing  by the preparation of an Invention Disclosure or Copyrightable Work Disclosure, a summary of the concepts, relevant data, observations and general claims with respect to any invention, discovery or development, as well as the name(s) of any collaborator(s); (2) assign title to the discovery or invention to the University; and (3) cooperate to the extent necessary as determined by the University in reasonably delaying of publication to allow for submission of a patent application, prosecuting all patent applications and other required documents, participating in the defense of such patents during prosecution for interference or infringement, and assisting with licensing or marketing efforts related to the discovery or invention.

-- back to top --

820.15 UNIVERSITY RIGHTS

TSU has the right to: (1) assign to the inventor title to any invention, discovery or development subject to this Policy for which TSU chooses not to retain title; and (2) make, use, license, assign or sell to a third party the rights and interests of any patented or unpatented discovery, invention or development owned by TSU, and exclude others from doing so.

-- back to top --

820.20 UNIVERSITY OBLIGATIONS

TSU is obligated to: (1) make faculty, staff, students, trainees and volunteers aware of this Policy and of any ongoing agreements with external sources to evaluate and/or market such discoveries and inventions; (2) after a discovery, invention or development is reported, act in a timely fashion to determine whether TSU chooses to retain title, to submit to an external source for evaluation, and/or determine whether a patent application is to be filed; (3) give notice to an inventor, within a reasonable time after disclosure of a discovery or invention, of the University's decision to file a patent application or otherwise retain title to the discovery, invention or development; (4) expedite intellectual property protection so as to minimize the delay of publication; and (5) distribute licensing fees or royalties received by the University for any discovery, invention or development according to the schedule contained in Section 835.00 of this Policy.

-- back to top --

820.25 INTELLECTUAL PROPERTY PROCEDURES

The Vice President of Research and Sponsored Programs with the assistance of the staff of the Office of Technology Transfer and Licensing and the advisory committee will:

  • advise   the   President  on  all   matters   relating   to  TBR Policy  No. 5:01:6:00,
  • conduct  investigations  to assess the rights and  responsibility of all parties involved in the process,
  • receive all disclosures made by employed members of the University community concerning all inventions, discoveries,  and intellectual property, and
  • act expeditiously to determine the extent to which the invention, discovery or intellectual property resulted from the University sponsorship or external funding sources.

In the event the determination is made that no University sponsorship, external funding or significant use of University resources was involved, the Vice President shall advise the University to waive all claims.  On the other hand, if the findings show that significant sponsorship by either the University or an external agency was involved in the project as well the use of University resources, the Vice President through the Office of Technology Transfer and Licensing shall determine the terms of the sponsorship agreement as it relates to patents and copyrights, and so advise the President. 

In evaluating inventions, discoveries, intellectual property, filing patents and copyrights applications, licensing, administration of patents and copyrights, the University is authorized to obtain legal and technical assistance or external services from independent patent and copyright organizations.

-- back to top --

825.00 APPEALS

The Inventor or Author may appeal decisions of the President or those of his or her designee. If the Inventor or Author disagrees with an initial decision, he or she may request a re-evaluation by the President. The President is not authorized to delegate responsibilities relative to appeals. The request must be received within thirty calendar days of notification to the Inventor or Author of the initial decision. The Inventor or Author may submit documents or other evidence in support of his or her position. A second and final decision by the President relating to ownership or royalty distribution may be appealed to the Chancellor of the Tennessee Board of Regents. Decisions of the TBR Chancellor shall be binding.

-- back to top --

830.00 LICENSING

It is the policy of the University to encourage the development, marketing and commercialization of inventions resulting from research so as to achieve a public usefulness and benefit. It is recognized that such a policy may require various forms of agreements including the granting of exclusive licenses.

The University may, in appropriate circumstances with due consideration to the perspective licensee and when consistent with law applicable to federally supported research, license a patented invention on an exclusive or nonexclusive basis for a reasonable period up to the full term of the patent, provided that such license shall contain provisions to promote the likelihood that the invention provides a public benefit, such as a requirement of due diligence and march-in rights when the licensee does not adequately perform. TSU also may elect to license unpatented technology on an exclusive or nonexclusive basis.

-- back to top --

835.00 DISTRIBUTION OF PROCEEDS

For all discoveries, inventions or developments for which TSU receives proceeds, TSU shall deduct all expenses incurred pertinent to the technology and not recovered previously for patent protection, copyright registration, or in pursuing commercialization of the intellectual property.

The remaining net proceeds shall be distributed as set forth below:

 

Cumulative Net Lifetime Proceeds

Inventor

Division

University and/or Affiliated Org.

0-$100K

50%

10%

40%

>$100K

40%

15%

45%

Inventor(s) retain the option of designating some fraction of these funds to support their laboratory research program.

In the event the Division is dissolved, this fraction reverts to the University and/or University-affiliated organization.

The University is authorized, subject to the approval of the Chancellor of the Tennessee Board of Regents System, to accept equity in lieu of cash in total or partial consideration for use of the University’s intellectual property rights. Dividend income and income received from the sale of equity shall be divided in accordance with the distribution rules adopted by the University.

-- back to top --

840.00 DEFINITIONS  

"Author" means the person or persons responsible for creation of a copyrightable work.

“Cumulative Net Lifetime Proceeds” is defined as gross revenues or other payments received by the University from a licensed technology minus applicable patent filing fees, other legal fees associated with the technology, fees for patentability and marketability searches, fees arising out of litigation, legal advice or any other fees or costs directly attributable to the invention being licensed. Indirect costs, overhead or other costs usually associated with operation of the University and not directly attributable to the invention shall not be deducted from gross revenues.

“Division” is the administrative subdivision, i.e. college, school or center, of the University that provided the environment in which the research program(s) of the inventor(s) is(are) conducted.

"Gross Income" means proceeds from the sale, lease, or licensing of intellectual property by the University; dividends derived from equity received in consideration for the sale, lease, or licensing of intellectual property by the University; or proceeds from the sale of equity received in consideration for the sale, lease, or licensing of intellectual property by the University.

"Intellectual Property" means inventions and works.

"Invention" means any discovery, invention, new use or application, process, composition of matter, article of manufacture, know-how, design, model, technological development, or biological material.

"Inventor" means the person or persons responsible for conception of an idea or ideas leading to an invention. An individual or individuals who has (have) made a contribution to the conception and/or reduction to practice of an invention, discovery or development and who is (are) identified as such on the licensed patent, patent application or unpatented technology. In the case of a patent or patent application, this contribution must be applicable to at least one claim. In cases of joint inventorship, it is not necessary that each inventor make the same type or amount of contribution to the invention and it is not necessary that each inventor make some contribution of each claim.

"Net Income" is gross income minus the direct costs associated with patent prosecution, copyright registration, commercialization, defense, maintenance, and administration of intellectual property.

"Scholarly works" include, but are not limited to, articles written for publication in academic journals, textbooks, works of art, musical compositions, and literary works. Theses and dissertations are not, for the purposes of this policy, scholarly works. Works by non-faculty employees shall not, for the purposes of this policy, be considered scholarly works.

"Scope of employment" refers to activities which have been assigned to an employee by his or her supervisor or which are performed during normal working hours or which fall within the employee’s job description.

"Significant use" means utilization of Institution funds, personnel, facilities, equipment, materials or other resources resulting in a cost to the Institution (direct, indirect, or depreciative) of more than $2,500 (in constant 2001 dollars).

"Work" means any copyrightable material, such as literary works; musical works, including any accompanying words; dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; architectural works; computer software or databases; circuit diagrams; architectural and engineering drawings; and lectures.

-- back to top --

ACKNOWLEDGMENTS

Portions of this intellectual property policy were derived from the policies of East Tennessee State University, the Tennessee Board of Regents, and the Cincinnati Children’s Hospital Medical Center.

-- back to top --

MWS 03 Jun 2004
TSU IP Policy.doc

 






webpage contact:
Research