140  Intellectual Property

Approved by President
Effective Date: June 5, 2017
Responsible Division: President
Responsible Office:  Office of the University Counsel
Responsible Officer: University Counsel

I. Purpose

Middle Tennessee State University (MTSU or University) is authorized to seek and hold patents, copyrights, trademarks, and trade secrets, to assign its rights in intellectual property, and to execute agreements concerning royalty and non-royalty distribution. It is the intent of MTSU to:

A.  Create appropriate support mechanisms and incentives to encourage the production and disclosure of copyrightable works, inventions, ideas, novel devices, composition of matter, articles of manufacture, beneficial biological materials, processes, and the improvements thereto (intellectual property) by employees and students of MTSU.

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

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

D.  Establish whether the intellectual property is owned by the University or the individual. See Section IV. of this policy.

E.  Provide for the equitable sharing of any proceeds derived from the sale, lease, production, or licensing of intellectual property in which MTSU is determined to have an interest.

F.  Contribute to the economic growth of the state and region by facilitating the exploitation and utilization of such intellectual property to the benefit of the public, MTSU, and the members of the University committee.

II. Applicability

This policy applies to all persons employed by MTSU (either as full-time, part-time, or temporary employees) including faculty members, students enrolled at MTSU, and to other persons making use of MTSU facilities and resources (including time and personnel), in connection with intellectual property activities. When entering into works made for hire, agreements, and contracts requiring assignment of any works or inventions with respect to ownership of any intellectual property developed as a result should be defined. If no such agreement is in place, then any intellectual property produced is solely owned by MTSU.

Intellectual property covered in this policy includes all copyrightable works, inventions, ideas, novel devices, composition of matter, articles of manufacture, beneficial biological materials, processes, and the improvements thereto. This policy does not grant MTSU ownership to theses, dissertations, or scholarly works, as defined herein.

III. Definitions

A.  Author. The person or persons responsible for creation of a copyrightable work.

B.  Distance Education. Distance education occurs where there is a physical separation of the instructor and the learner and when communication and instruction take place through, or are supported by, any technological means such as, but not limited to, telephone, radio, television, computers, satellite delivery, interactive video, or any combination of present and future technology.

C.  Collective Work. Work such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole. (17 U.S.C. § 101).

D.  Compilation

1.  A work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.

2.  The term compilation includes collective works. (17 U.S.C. § 101).

E.  Copyright

1.  Under Federal law, copyright applies to any original works of authorship fixed in any tangible medium of expression. (17 U.S.C. § 102(a)).

2.  Generally, the owner of a copyright has the exclusive rights to reproduce the work, to prepare derivative works, to distribute copies by sale or other transfer of ownership, and to publicly display or perform the work. (17 U.S.C. § 106).

F.  Fair Use. The Copyright Act provides for some exceptions to the exclusive rights of the copyright owners.

1.  One of these exceptions permits fair use of a copyrighted work for purposes such as teaching, scholarship, or research. (17 U.S.C. § 107).

2.  The four (4) factors to be considered in determining fair use are:

a.  The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

b.  The nature of the copyrighted work;

c.  The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

d.  The effect of the use upon the potential market for or value of the copyrighted work.

G.  Gross Income. Proceeds from the production, 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.

H.  Intellectual Property. Includes all copyrightable works, inventions, ideas, novel devices, composition of matter, articles of manufacture, beneficial biological materials, processes, and the improvements thereto.

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

J.  Inventor. The person or persons responsible for conception of an idea or ideas leading to an invention.

K.  Joint Work. A work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. (17 U.S.C. § 101).

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

M.  Scholarly Works. Include, but are not limited to, articles written for publication in academic journals, textbooks, works of art, musical compositions, dramatic works, 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. Materials created as course materials for online or distance education courses are not scholarly works.

N.  Scope of Employment. Activities which have been assigned to an employee by his/her supervisor or which grow out of, or are related to, the intellectual area of pursuit for which an employee has been hired, or which fall within the employee’s job description.

O.  Significant Use. 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 three thousand five hundred dollars ($3,500.00) in constant 2017 dollars. Use of office personal computer alone is not considered a significant use of University resources.

P.  Work. Any copyrightable material, including, but not limited to, 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.

Q.  Work Made for Hire. A work created by an employee within the scope of his/her employment or a work created by a third party under contract with MTSU and which contract specifically provides that the contract is a work for hire or that the resulting deliverable (the work) is the property of, or is assigned to, MTSU.

R.  Commissioned Work. A work made for hire if it is specially ordered or commissioned under a written contract signed by the two (2) or more parties. (17 U.S.C. § 101, § 201 (b)).

IV. Ownership of Intellectual Property

A.  University Owned Intellectual Property.

1.  Intellectual property developed by persons to whom this policy applies shall be the sole and exclusive property of MTSU if the subject intellectual property is:

a.  developed within the person’s scope of employment with the University;

b.  developed in the course of a project sponsored by the University;

c.  developed with the significant use of the University’s facilities, services, or equipment (personal office space, libraries, and the inventor or author’s personal computer provided by the University excluded), or

d.  developed in the course of a project arranged, administered, or controlled by the University and sponsored by persons, agencies, or organizations external to the University, absent prior written agreement to the contrary. (The contract terms of externally sponsored projects will control ownership of work done pursuant to the contract or agent.)

2.  Subject to Section B. below, the University shall not assert ownership of scholarly works, regardless of whether the circumstances surrounding creation of the scholarly work satisfy one (1) or more of the four (4) tests outlined above for determining University ownership. Disclosure of scholarly works is nonetheless required of all intellectual property developed.

3.  Scope of Employment.

a.  MTSU will have sole ownership of intellectual property created by its non-faculty employees within the scope of employment.

b.  The University should ensure that the job description for each relevant non-faculty position includes the creation of or the assistance with the creation of distance education materials.

(1)  The University should also be certain to add to the employment contract, either on initial hire or with contract renewal, language which specifies that such works are made in the scope of employment.

(2)  In cases where there is a new assignment to the employee, an agreement in writing signed by both the employee and the University should be completed.

c.  In all cases, the University and the faculty member should sign a Work for Hire form.

4.  Commissioned Work

a.  Under the copyright laws, (17 U.S.C. § 101, § 201) a work specially ordered or commissioned is owned by MTSU if the parties expressly agree in a written instrument signed by both parties that the work will be considered a work for hire.

b.  Commissioned work is limited by the copyright law to contribution to a collective work, part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material to a test, or an atlas. (17 USC § 101, Work for Hire definition).

B.  Individually Owned Intellectual Property.

1.  The University wishes to encourage scholarly works. Therefore, the University will not assert an interest in scholarly works and creations related to the faculty member’s professional field. These include:

a.  faculty authored textbooks;

b.  scholarly writing;

c.  art works;

d.  musical compositions;

e.  dramatic and non-dramatic literary works.

C.  This policy does not apply to undergraduate or graduate students in the absence of an employment or other contract. Generally, ownership of student works is controlled by copyright law.

D.  Joint Ownership.

1.  Inventions and works may be created through the joint efforts of two (2) or more faculty members or of faculty and non-faculty employees working in the scope of their employment or working under contract to provide services.

2.  Anyone who contributes the kind of expression protected by the copyright law is a joint author, if the contribution is intended to be part of an integrated whole, or a joint inventor, if the work of each contributes patentable subject matter to the invention as a whole.

3.  MTSU will be the sole owner of any invention or work if the invention or work were created by employees of MTSU or by parties under contract with MTSU to provide the invention or work.

4.  At the beginning of a project involving multiple contributors, the contributors' intentions shall agree in writing to the percentage share each contributor shall be paid from any net proceeds that MTSU shall receive from exploiting the invention or work. If no such agreement is made, MTSU shall pay each of the contributors an equal share. 

5.  In the event that MTSU employees involved in a collaboration between MTSU and another organization(s) and/or private person(s) expect that the collaboration may generate intellectual property subject to this policy, the collaborators shall agree in writing to the percentage share each collaborating entity shall be paid from any net proceeds resulting from the exploitation of the intellectual property.

V. Patent Application and Copyright Registration Process

A.  Inventors and Authors.

Persons to whom this policy applies are responsible for disclosing to the University all intellectual property using the Invention Disclosure Form or Copyrightable Work Disclosure Form. The inventor/author shall fully cooperate with the designee and the Office of Research in the disclosure process and in other subsequent activities associated with patenting and/or commercialization of the intellectual property.

Inventors should particularly note that certain acts (for example, enabling disclosure of the Invention in an academic journal, a paper, a poster presented at a conference, or offering to sell rights in the invention before a patent application has been made) can bar an inventor from obtaining patent protection. An inventor contemplating public disclosure of activities prior to filing an Invention Disclosure Form must contact the Office of Research prior to engaging in those disclosure activities.

The inventor/author is also responsible for filing a Conflict of Interest Disclosure Form pursuant to Policy 12 Conflict of Interest.

B.  Intellectual Property Advisory Committee

The Conflict of Interest Disclosure Form shall be forwarded to the MTSU Intellectual Property Advisory Committee (Committee) for an initial evaluation of the ownership, patentability and/or commercial potential of the intellectual property. The Committee may conduct an interview with the inventor/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 Vice Provost for Research 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. 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 Vice Provost for Research in all matters relating to this policy. The Vice Provost for Research shall have the responsibility for approving any and all agreements associated with commercialization of intellectual property.

For intellectual property, in which the University is deemed to have an ownership interest, following a decision by the Vice Provost for Research to seek patent protection, copyright registration, and/or commercialization of the intellectual property, the Office of Research will arrange to have those activities undertaken.

If the University decides it will not seek patent protection for, or pursue commercialization of, the intellectual property and the University has an ownership interest in the intellectual property, the President may decide to assign the University’s ownership interest to the inventor/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 is responsible for compliance with these requirements. 

VI. Request for Re-Evaluation

If the inventor/author disagrees with an initial decision, he/she may request a re-evaluation. The request must be received within thirty (30) calendar days of notification to the inventor/author of the initial decision. The inventor/author must submit documents or other evidence in support of his/her position. The decision of the President shall be final.

VII. Income from Intellectual Property

Inventors and authors shall receive royalties from the net income that may accrue from the commercialization of the intellectual property created by the inventors or authors as follows:

A.  MTSU shall determine the net revenues generated by the invention or work by deducting all direct costs associated with patent prosecution, copyright registration, commercialization, defense, maintenance, and administration of intellectual property, and in the case of distance or online course materials, the monies advanced to the author at the time of creation from the gross revenues received. 

B.  After the University is reimbursed for all expenses, the net income from royalties and any other intellectual property related income shall be divided among the inventor/author, supporting University offices, and departments and colleges as set forth below:

Net Income Distribution

Inventor(s)/ Author(s)

Department

College

Center

Inventor(s)/ Author(s) Program

Office of Research

University E&G

50%

5%

5%

5%

5%

20%

10%

40%

5%

5%

5%

5%

20%

20%

C.  If any department, college, center, or inventor/author program does not exist, the designated net income will be divided equally among the others in that category. If no department, college, center, or inventor/author exist, the net income will be divided between the Office of Research and the University’s education and general fund.

Forms: 

Copyrightable Work Disclosure

Invention Disclosure 

Work for Hire

Revisions: none.

References: Policy 12 Conflict of Interest; Bayh-Dole Act (37 CFR 401).