II:01:08 Intellectual Property

I. OBJECTIVES

In compliance with Tennessee Board of Regents (TBR) Policy 5:01:06:00 Intellectual Property (June, 2001) and definitions therein, it is the policy of Middle Tennessee State University to:

A. Create appropriate support mechanisms and incentives to encourage the production and disclosure of Inventions and copyrightable Works by employees and students of Middle Tennessee State University

B. Establish guidelines for University personnel, industrial sponsors, and funding organizations on the disposition of intellectual property ownership and licensing.

C. Define the rights and responsibilities of university faculty, staff, and students regarding involvement in and benefit from intellectual property decisions and processes.

D. Provide for the equitable sharing of any proceeds derived from the commercialization of Inventions and copyrightable Works in which Middle Tennessee State University is determined to have an interest.

E. Facilitate the widest and earliest dissemination of such Inventions and Works with the primary objective of social benefit. 

In accordance with these objectives, faculty, staff and students are obliged to disclose Inventions and Works within sixty days of discovery, and prior to publication regarding the Invention or Work.

II. TYPES OF INTELLECTUAL PROPERTY

Intellectual properties covered in this policy include all Inventions and Works.

III. APPLICABILITY

This policy applies to all persons employed (either as full-time, part-time or temporary employees) by Middle Tennessee State University, to students enrolled at Middle Tennessee State University, and to other persons making use of MTSU facilities and resources, including time, in connection with intellectual property activities. Contracts for works made for hire between Middle Tennessee State University 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.

IV. UNIVERSITY OWNERSHIP OF INTELLECTUAL PROPERTY

Intellectual property developed by persons to whom this policy applies shall be the sole and exclusive property of Middle Tennessee State University if the subject intellectual property is:

A. developed within the person's scope of employment with the Institution,

B. developed in the course of a project sponsored by the Institution,

C. developed with the significant use of the Institution's facilities, services, or equipment (personal office space, libraries and the Inventor or Author's personal computer provided by the Institution excluded), or

D. developed in the course of a project arranged, administered or controlled by the Institution and sponsored by persons, agencies or organizations external to the Institution, absent prior written agreement to the contrary.

The University shall 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 section for determining Institutional ownership. Disclosure of Scholarly Works is nonetheless required. 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.

V. STARTING THE PATENT APPLICATION AND COPYRIGHT REGISTRATION PROCESS

A. Inventors and Authors

Persons to whom this policy applies are responsible for disclosing to the University all Inventions or Works. Disclosure shall be made to the President of the Institution, or to such person as the President may designate (hereinafter the President's Designee) using an Invention Disclosure Form or Copyrightable Work Disclosure Form. The Inventor or Author shall fully cooperate with the President's Designee and the Office of Research in the disclosure process and in other subsequent activities associated with patenting and / or commercialization of the Invention or Work.

In the event that two or more persons are entitled to claim ownership of the intellectual property, the Inventors or Authors shall reach agreement between or among themselves regarding relative contributions for the purposes of distribution of net income from the Invention or Work. That agreement shall be in writing and be notarized, otherwise, equal distribution of net income will be assumed. The agreement will be required prior to the initial decision regarding whether to pursue patent protection or commercialization of the intellectual property.

Inventors should particularly note that certain acts (for example, enabling disclosure of the Invention in an academic journal) can constitute a statutory bar to patent protection. An Inventor contemplating public disclosure of activities prior to filing an MTSU Invention Disclosure Form must contact the President's Designee prior to engaging in those disclosure activities.

B. Intellectual Property Advisory Committee

The MTSU Intellectual Property Advisory Committee is composed of faculty, staff, and other persons experienced in intellectual property matters, appointed by the President, and nominated by the Vice Provost for Research. The Disclosure Form shall be forwarded to the Committee for an initial evaluation of the ownership, patentability and/or commercial potential of the Invention or Work. The Committee may conduct an interview with the Inventor or Author and other persons as needed to make this evaluation. A patentability evaluation shall in particular include a thorough evaluation of acts by the Inventor or items of prior art that would bar patent protection. The Committee shall provide the President's Designee its recommendations as to ownership of the intellectual property, whether patent protection should be sought, and whether to seek commercialization opportunities. The Committee shall conduct investigations as it deems necessary in the preparation of its recommendations to the President's Designee. The Committee is authorized to seek outside assistance in preparing its recommendations. Any compensated assistance obtained from private legal counsel must be approved in advance by the Attorney General of the State of Tennessee. The Committee shall also generally advise the President and the President's Designee in all matters relating to this Policy.

For those Inventions or Works in which the University is deemed to have an ownership interest, following a decision by the President's Designee to seek patent protection, copyright registration, and / or commercialization of the intellectual property, the Office of Research will arrange to have those activities undertaken in collaboration with the Office of General Counsel at TBR.

If the University decides not to seek patent protection for, nor to pursue commercialization of the intellectual property, and the University has an ownership interest in the intellectual property, the President's Designee may decide to assign the Institution's ownership interest to the Inventor or Author.

For Inventions made in the course of a project funded in whole or in part by the Federal Government, the Bayh-Dole Act (37 CFR 401) imposes certain reporting requirements associated with the technology transfer process. The Office of Research and Sponsored Programs is responsible for compliance with these requirements.

VI. APPEALS

The Inventor or Author may appeal decisions of the President's Designee. If the Inventor or Author disagrees with an initial decision, he or she may request a re-evaluation by the President. The request must be received within thirty calendar days of notification to the Inventor or Author of the initial decision. The Inventor or Author must 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.

VII. INCOME FROM INTELLECTUAL PROPERTY

A. Reimbursement of University Expenses

All income derived from the commercialization of intellectual property in which the University has an interest shall be first applied toward any direct expenses incurred by the Institution in seeking patent protection or copyright registration or in pursuing commercialization of the intellectual property.

B. Income Distribution

After the University is reimbursed for all expenses set forth in VII.A. above, the net income from royalties and any other intellectual property-related income shall be divided among the Inventor or Author, supporting university offices, and departments and colleges as set forth in Table 1:

Table 1. Net Income Distribution

Net income / year                              Inventor/Author     Dept       College     Office of Research    University E&G
Less than $500,000                                        50%               10%          10%                   20%                             10%
Greater than or equal to $500,000                 40%               10%           10%                   20%                             20%

VIII. DEFINITIONS

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

"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.

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

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

"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.

Revisions: December 1, 1983; January 7, 1992; March 18, 2010.

Cross-references: Tennessee Board of Regents (TBR) Policy 5:01:06:00 Intellectual Property; Bayh-Dole Act (37 CFR 401).