(A) Purpose
Under Ohio law, all discoveries or inventions
resulting from research or investigations conducted in any college or
university are the sole property of the university. The purpose of this rule is
to establish a framework for university intellectual property protection and
development that will transfer the benefits of its innovations to society, and
at the same time, obtain appropriate financial gains for the university and its
inventors.
(B) Scope
(1) This rule applies to
all discoveries, inventions, or innovations made by any university employee if
such discovery or invention was:
(a) The result of research carried on by or under the
direction of any university employee, the cost of which was paid for, in whole
or in part, with funds of, under the control of, or administered by university;
or
(b) The invention, discovery, or innovation resulted from
efforts by a university employee using university facilities or resources
available as a result of his or her employee status.
(2) Inventions not
involving any university funds, equipment, facilities, or personnel are the
property of the inventor, so long as the invention, discovery, or innovation is
not in a substantive area of research in which the inventor is customarily
engaged on behalf of the university.
(C) Definitions
(1) "Composition of
Matter." Generally relates to chemical compositions and can include
mixtures of ingredients as well as new chemical compounds per se.
(2) "Conditions of
Patentability." The person who first invents or discovers must demonstrate
that it is new, unobvious and useful. Any process, machine, manufacture, or
composition of matter, or any new and useful improvements thereof. Obtain a
patent, subject to conditions and requirements of the patent statute. An
inventor must apply for a patent before one year has gone by from the date the
inventor first describes the invention in a printed publication or uses the
invention publicly; otherwise any right to a patent will be lost.
(3) "Copyright." Original works of authorship
fixed in tangible media of expression.
(a) "Works of Authorship" include but are not
limited to literary, musical, dramatic, audiovisual, architectural, pictorial,
graphic and sculptural works and sound recordings. Computer software are works
of authorship to the extent they are protected by the federal copyright
laws.
(b) "Tangible Media of Expression" include
physical, digital and other formats now known or later developed form which
copyrightable works may be stored, reproduced, perceived or otherwise
communicated, either directly or with the aid of a machine or
device.
(4) "Date of
Conception." The date the idea for a new product, process or composition
of matter first occurs to the inventor.
(5) "Direct and
Significant Allocation of Resources." A requested and approved allocation
of resources not routinely available to members of an employee's unit.
University resources include, but are not limited to, staff time, equipment,
funds, computer usage and release time from assigned duties. Clarification of
whether an allocation is "direct and significant" should be sought by
the employee at the time of the request for allocation.
(6) "Disclosure." Reporting of an invention or
discovery in sufficient detail to communicate an understanding of the invention
or discovery.
(7) "Discovery." The finding out of some
substance, mechanical device, improvement or application not previously known.
It is something less than invention and may be the result of industry,
application or be merely fortuitous.
(8) "Employee."
Any part-time or full-time faculty, staff or student or volunteer appointee of
the university whether paid a salary or not.
(9) "Intellectual
Property." Inventions, discoveries, innovations, and copyrightable
works.
(10) "Innovation." A new model, idea, or product.
A useful application of new inventions or discoveries.
(11) "Invention." The act or operation of finding
out something new; the process of contriving and producing something not
previously known or existing by the exercise of independent investigation and
experiment. Inventions include, but are not limited to, products, methods, or
uses, whether or not they are patentable.
(12) "Inventor." One who invents or finds out
something new; a contriver; especially, one who invents mechanical devices, new
drugs, new processes, or other useful objects or procedures.
(13) "Manufacture." (Noun) all manufactured
articles.
(14) "Net
Royalties." Gross royalties or other payments, such as option payments,
received by university, minus any fees or costs directly attributable to the
invention being licensed. Examples of such direct fees are patent filing fees,
fees for patent searches and legal advice, fees arising out of litigation,
marketing costs and maintenance fees. Indirect university overhead and other
costs normally associated with the operation of a university shall not be
deducted from gross royalties or otherwise allocated to costs or fees
associated with the invention.
(15) "Patent"
is a grant via the United States patent and trademark office to an original
inventor of certain rights as defined by the claims of the patent. The term of
a patent is seventeen years from the date of the grant. The right conferred by
the patent is the right to exclude others from making, using, or selling the
invention (as defined in the patent claims). Separate application must be made
for foreign patent rights.
(16) "Prior
Art." Existing patents or other publications which describe or teach the
subject matter proposed to be patented.
(17) "Publication." A published article or
abstract in a technical journal, bulletin, newspaper, textbook or other
tangible medium which gives sufficient information about the discovery or
invention to permit one skilled in the art to practice the
invention.
(18) "Reduction to
Practice." The act of successfully completing an invention, including
demonstrating its usefulness for its intended purpose.
(19) "Software." Computer instructions (algorithms
and code), data and accompanying documentation.
(a) "Algorithm" means a logical arithmetical or
computational procedure that if correctly applied ensure the solution of a
problem.
(b) "Source Code" means an original computer
program written by a programmer in human-understandable form. It is converted
into the equivalent object code (written in machine language) by the complier
or assembler in order to run on a computer.
(c) "Object Code" means the form of a program
that is executable by a machine, or usable by an assembler that translates it
directly to machine-understandable language. This form of software is not
readable or modifiable by human beings other than through extraordinary
effort.
(20) "Trade
Secret." Information, including a formula, pattern, compilation, program,
device, method, technique, or process that: (a) derives independent economic
value, actual or potential, from not being generally known to the public or to
other persons who can obtain economic value from its disclosure or use; and (b)
is the subject of efforts that are reasonable under the circumstances to
maintain its secrecy.
(21) "Unobvious." Not obvious to a person having
ordinary skill in the art to which said subject matter pertains.
(22) "Work Made for
Hire." Includes works prepared by an employee as a specific responsibility
of the position for which the employee is hired, works specifically
commissioned or ordered by university for which a written agreement specifying
copyright ownership has been executed prior to the completion of the work,
works created under a sponsorship/contractual agreement with copyright
provisions defined, and other work created through a direct and significant
allocation of university resources to a specified project. *Note: A faculty
member's general obligation to produce scholarly works does not constitute
a specific responsibility as included in this definition.
(D) Body of the rule
(1) General
considerations
(a) The university education and research missions are
preeminent over that of the transfer and commercialization of research
results.
(b) The university is committed to active engagement and
support of innovation, technology development and entrepreneurial activities
through the efficient and effective deployment of its resources for the
betterment of society and the generation of unrestricted revenue to support its
mission.
(c) University resources may be used for non-university
purposes so long as they are appropriately serve the public interest. Any such
use must be in conformance with university rule and set forth in appropriate
agreements between the parties.
(d) The university will respect the intellectual property
of its partners and collaborators.
(e) When the university owns intellectual property under
this rule, the inventor or creator may play an active role in the entire
licensing process, unless such participation is inconsistent with conflict of
interest regulations or university rule.
(2) Patent rule
Goals
The goals of the patent rule are to define the
rights and interests of all parties in the context of academic freedom, provide
incentives and institutional support to those employees whose research and
scholarly activities lead to inventions, discoveries, or innovations that might
be patented for societal use and to provide for equitable distribution of
income resulting from inventions, discoveries, and innovations between
university and the inventor.
(3) Publications
It is well understood that publication of
research results is an essential part of the activity of a university
researcher. The university rule recognizes this need; however, timing of the
publication of research results, in light of patent activity, can be of
critical importance. Failure to take timely steps to patent can result in
possible reduction in, or the entire loss of, adequate patent protection in the
United States or abroad.
The safest course is to file a United States
patent application before any public use, disclosure or sale of the invention
occurs. There is a period of one year from the date of publication to file an
application for a United Sates patent; however, in most foreign countries, the
publication itself bars valid patent protection with no grace period.
(4) Government grants
Under The Bayh-Dole Act or Patent and Trademark
Law Amendments Act, Pub. L. 96-517, (1980)
The university generally is able to obtain
title to inventions and patents arising under United States government
contracts/grants, subject to certain rights reserved by the government,
provided that invention reporting requirements and formalities are
followed.
(5) Technology
commercialization activity
Inventions disclosed to the university will be
evaluated to determine scientific merit, likelihood of patentability or other
protection, potential for societal benefit, market potential, barriers to
market and other criteria concerning commercialization potential..
(6) Rights and
obligations of the parties
(a) In accordance with section 3345.14 of the Revised Code,
unless otherwise modified by contract, all rights to and interests in
discoveries or inventions to which this rule is applicable shall be the sole
property of university. Rights to inventions arising in the course of
government and other sponsored research may be controlled by the terms of the
underlying research agreement.
(b) Inventor rights and obligations
(i) Confidential
disclosure of the invention to the general counsel shall precede an
inventor's public disclosure, publication of information concerning an
invention, discovery, or innovation. Once an invention, discovery or innovation
is reduced to practice, an invention disclosure form shall be promptly
submitted by the inventor to the general counsel. Invention disclosure forms
are available from the general counsel or on the university
website.
(ii) University requires
that researchers maintain adequate laboratory notebooks which document critical
information about the discovery or invention. Guidelines for the format of
these laboratory notebooks are outlined in attachment "C." Notebooks
and other materials pertaining to research activities leading to a patent
application are the property of university and will remain at university even
after termination of employment.
(iii) The inventor shall
assign title to the invention, discovery, or innovation to
university.
(iv) The inventor shall
cooperate in:
(a) Executing
applications and legal documents;
(b) Any litigation
arising out of the patent application; and
(c) Reasonable marketing
efforts related to the invention or discovery.
(v) The inventor has a
right to receive a share of any royalties or licensing fees received for the
discovery, invention or innovation according to the schedule contained in
paragraph (D)(10) of this rule.
(vi) If the general
counsel and the vice president for research recommends that university
surrender all rights in the discovery or invention and the president agrees
with this recommendation, the president will have the authority to surrender
all rights of the university with respect to the discovery, invention, or
innovation. After surrender, the inventor shall have the option to pursue a
patent application in the inventor's own name at his/her own expense, in
which case, any royalties or licensing fees received would be the sole property
of the inventor; however, the inventor will grant to university a royalty-free,
irrevocable, perpetual, non-exclusive license to make and use the invention for
its own purposes.
(vii) The inventor has a
right to timely publication of his or her findings as required by the
principles of academic freedom, subject to the university's right to
protect its interest in the intellectual property.
(7) University's
rights and obligations
(a) University has the sole right to license, sell, assign,
or otherwise dispose of the rights to inventions, discoveries, or innovations
which are owned by or have been assigned to university.
(b) The university shall timely determine whether it
chooses to retain or assign title, submit to an external source for evaluation
of patentability, file a patent application or surrender title to the
inventor.
(c) Should the university choose to file a patent
application, it shall file in a timely manner any documentation necessary to
prosecute a patent and shall pay all filing fees, maintenance fees, attorney
fees and other costs related to prosecuting and maintaining the patent. These
costs will be recovered by the university before any payments are made in
accordance with this rule.
(8) Administration
The general counsel and the vice president for
research shall have overall responsibility for administration of the
university's patent program, including assuring valuable property rights
are not lost. Specific responsibilities shall be to:
(a) Function as contact points and resources with regard to
this rule and procedure;
(b) Receive reports of all discoveries or inventions that
are subject to the university's patent rule;
(c) Conduct or cause to be conducted due diligence studies
to determine patentability, market potential, barriers to market, and other
criteria deemed necessary to determine commercial potential.
(d) Act upon the due diligence conducted to promote the
interests of the university and to the extent appropriate the university
inventors.
(9) The general counsel
and the vice president for research may utilize university funds to engage
appropriate consultants, legal and business professionals to evaluate all
discoveries and inventions disclosed to university for potential patentability
and commercialization. These reports will be sent directly to the general
counsel and will be protected from disclosure under attorney work
product.
(10) Royalties
(a) For all inventions for which the university receives
royalties or other payments, the net royalties will normally be distributed as
follows:
Forty per cent to the inventor(s)
Twenty per cent to the inventor's
department(s)
Twenty per cent to the university research
and office
Twenty per cent to the technology transfer
office
(b) All monies received by the departments, the university
research office, or university technology transfer office are considered
university funds and will be administered in accordance with established
accounting procedures.
(c) If multiple inventors are involved, the royalties as
specified above shall be distributed equally among the parties set forth in
paragraph (D)(10)(a) of this rule, unless a written proposal for an alternate
distribution is jointly presented by the inventors and approved by the general
counsel and the vice president for research.
(d) The inventor shall continue to receive the specified
share of royalties even when the inventor is no longer affiliated with
university. In the event of the inventor's death, royalties due and
payable under this rule will be paid to the inventor's estate for the
remainder of the royalty period.
(e) The inventor's department(s) shall continue to
receive the royalties specified in this rule as long as the inventor is
affiliated with said department. Should the inventor leave the university, all
departmental royalties shall become the sole property of university and will be
shared equally by the university research office and technology transfer
office.
(11) Research agreements
collaborators and industry involving patent rights
It is not uncommon for university employees to
receive awards to conduct research which are funded by private industry. It is
also not uncommon for employees to conduct research in cooperation with
colleagues at other institutions. University recognizes that, to continue these
relationships, it must be willing to consider a variety of contractual terms
and conditions. In order to protect traditional academic freedom, to assist
employees in evaluating proposals and to protect university's interest in
discoveries, inventions, or innovations, the following policies shall apply to
these external relationships:
(a) All written agreements with private industry or with
other institutions utilizing university resources to conduct research must
first be reviewed by the general counsel and the vice president for research.
The general counsel and the vice president for research will only approve those
agreements which assure that the rights of the university are appropriately
protected.
(b) In dealing with inventions which are conceived or
developed in the course of research sponsored by a third party and/or pursuant
to an agreement with another institution, the university will abide by the
terms of the agreement with that third party. Where an option exists, the
university will seek agreements and contracts, or waivers thereof, that will
allow patent rights to remain with university.
(c) University will not waive the right to publish results
of research. University will only agree to delay publication for reasonable
periods of time so appropriate action can be taken to protect patentable
discoveries or inventions. In agreeing to delay publication for a reasonable
period, university will not agree to delays that effectively inhibit a
student's timely completion of a course or degree.
(d) Title to all documents, records, biological materials,
software, databases, notebooks and other repositories of information from
research shall be held by university. Those materials must remain at university
should the inventor's employment at university be terminated for any
reason, unless specifically authorized by the university.
(e) University will agree that proprietary information
remains the property of private industry. However, written agreements must
clearly define what information is considered to be proprietary in
nature.
(f) University will agree to protect the trade secrets of
third party research sponsors. Trade secrets will be kept confidential and will
not be subject to disclosure under the provisions of section 149.43 of the
Revised Code. If a request for such information is received, the university
will notify the owner of the proprietary information of the request so that
they may timely file objections with a court of competent
jurisdiction.
(12) Copyright
rule
(a) The university copyright rule seeks:
(i) To maximize academic
freedom and creative expression for the public good;
(ii) To preserve
traditional academic practices and privileges with respect to the publication
of scholarly works;
(iii) To apply uniform
principles and procedures that provide allocation of income resulting from
commercial publication;
(iv) To apply funds
accruing to university from copyrighted materials to advance and encourage
scholarly endeavor;
(v) To disavow any claims
by university in an individual's copyrightable work simply because of the
individual's membership in the university community; and
(vi) To protect
university's assets and preserve its reputation of
excellence.
(b) Copyright ownership
(i) The university
encourages scholarly and creative activity by faculty, students and staff.
These activities include the production of works resulting from academic
research or scholarly study. Authors of copyrightable works may register the
copyrights and publish the works as their own except for "works made for
hire" or any other work specified in this rule or covered by an agreement
to the contrary. In the case of a "work made for hire", the employer
or contractor by law is the author, and hence the owner of the copyright.
University's general counsel in consultation with the author and the vice
president for research shall determine if work is made for hire.
(ii) Personal
copyrights
Works by a university employee which do not
use the significant resources of the university as set forth in this paragraph,
are not works made for hire, and are not subject to a written agreement to the
contrary are the property of the employee. This category includes the products
of research and scholarship, and other creative and artistic works. Employees
may contribute their copyright interests to university. If accepted, a
confirming agreement will be executed.
Individuals often use significant
university resources in their work. University requires that its resources be
used for university purposes and not for personal gain, commercial advantage,
or any other non-university purpose. Unless the author or creator of the work
obtained written authorization from the vice president for research and the
general counsel prior to using significant university resources, university may
claim copyright to works produced with significant use of its resources, are
considered university property. University property includes works that are
supported by a specific allocation of university funds or that are created at
the direction of the university for a specific university purpose.
The university will retain title to all
copyrighted software developed by, or substantially with, university resources,
unless prior written waiver of university rights is issued.
(iii) The following
notice is to appear on all university-owned material:
Copyright "C" (year) Northeast
Ohio medical university Rootstown, Ohio. All rights reserved.
The date in the notice should be the year
in which the work was first fixed in any tangible mode of expression.
(iv) The general rule of
the university is to register only those of its works which have potential for
royalty return. University copyright ownership may be relinquished only upon
the authorization of the vice president for research and the general counsel.
These officers are authorized by the board to surrender such rights if they
believe it is in the best interest of the university to do so. If such rights
are relinquished, the university will retain a non-exclusive, royalty free,
license to use these works.
(v) Sponsored
works
The disposition of copyrights of works
created with support from an outside sponsor shall be governed by an
agreement.
(c) Rule administration
The general counsel with the vice president
for research will:
(i) Determine the rights
of university in any copyrightable works created or to be created with
university resources;
(ii) Develop and approve
agreements for the use of university resources in the creation of copyrightable
works;
(iii) Provide assistance
as appropriate for securing the registered copyright to the works the
university deems it appropriate;
(iv) Provide assistance
in licensing or distributing copyrightable works in which university
holds;
(v) Distribute royalties
to the author or others as set forth in pertinent agreements.
