140 Intellectual Property Policy
Approved by President
Effective Date: February 22, 2023
Responsible Division: President
Responsible Office: Office of the University Counsel
Responsible Officer: University Counsel
Middle Tennessee State University (MTSU or University) is authorized to seek and hold patents, copyrights, trademarks, applications therefor, trade secrets, or any other intellectual property or proprietary right, to assign any or all such rights to third parties, including the MTSU Research Foundation, and to execute agreements concerning royalty and non-royalty distribution of the same. It is the intent of MTSU to:
A. Create appropriate support mechanisms and incentives to foster innovation of Intellectual Property, as defined below, and contributions to the scientific community 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, including any protection thereof.
D. Establish whether the Intellectual Property is owned by the University.
E. Provide for the 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 responsible exploitation and utilization of such Intellectual Property to the benefit of the public, MTSU, and members of the University community.
This policy applies to all full- and part-time faculty, staff, and employees; students; postdoctoral fellows; and non-employees (e.g., visiting faculty or industrial personnel and fellows) making use of MTSU facilities and resources (including time and personnel), in connection with Intellectual Property activities, regardless of any obligations to other institutions or companies. For purposes of this policy, such an individual will be referred to as a "Covered Person".
From time to time, it may be in the best interests of the University to enter into agreements with third parties that are exceptions to the policies reflected in this document. Exceptions shall be made only upon written agreements signed by individuals authorized to grant such exceptions on behalf of the University.
When entering into works made for hire agreements or agreements requiring assignment of any works or inventions, the ownership of any Intellectual Property developed in accordance with the agreements should be defined in the agreements. If no such agreement is in place, then any Intellectual Property produced is solely owned by MTSU.
For the purposes of this policy, the following terms shall have the following meanings:
A. Author. A Covered Person who has, individually or jointly, fixed, developed, and/or contributed to a Creation, whether in whole or in part.
B. Creation. Shall include the following, whether published or unpublished, and whether or not copyrighted or copyrightable at any time under the Federal Copyright Act, as now existing or hereafter amended or supplemented:
1. All literary, dramatic, choreographic, and musical materials or works and all other materials or works including computer programs and software and/or codes;
2. Sound records, visual and audiovisual works (including television and/or motion picture films), disks, tapes, kinescopes, and/or other recordings or transcriptions; and/or
3. Pictorial, graphic, and sculptural works, including, but not limited to, paintings, sculptures, weavings, prints, and architectural and engineering drawings.
C. 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; and/or proceeds from the sale of equity received in consideration for the sale, lease, or licensing of Intellectual Property.
D. Invention. Any discovery, invention, new use or application, process, composition of matter, article of manufacture, know-how, design, model, technological development, biological material, computer program, and/or software code, and any associated or supporting material and/or technology that is required for the development or application of the foregoing, whether or not patented or patentable at any time under the Federal Patent Act as now existing or hereafter amended or supplemented.
E. Inventor. A Covered Person who has, individually or jointly, conceived of, developed, contributed to, fixed, and/or reduced to practice an Invention, whether in whole or in part.
F. Intellectual Property. Any patents, copyrights, trademarks, applications therefor, trade secrets, or any other Intellectual Property or proprietary right in or to an Invention and/or Creation, including any improvements thereto.
G. Net Income. Gross Income minus the direct costs associated with the Intellectual Property, including patent prosecution, copyright registration, commercialization, defense, maintenance, and administration, and all financial support advanced to the Inventor/Author.
H. Scholarly Works. Shall include, but not limited to, theses, dissertations, and works produced and/or written for academic journals and/or textbooks. Works by non-faculty employees shall not, for the purposes of this policy, be considered Scholarly Works.
I. Scope of Employment. Any activities which have been assigned to an employee by a 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.
J. Work Made for Hire. A work created by an employee within the scope of their employment or a work of a type enumerated in the definition of "work made for hire" in 17 U.S.C. § 101 created by a third party under contract with MTSU and which contract expressly 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.
IV. Ownership of Intellectual Property
The rights of the University to ownership and disposition of Intellectual Property are:
A. University-Owned Intellectual Property. Intellectual Property developed, created, and/or conceived of by an Inventor/Author shall be the sole and exclusive property of MTSU, if said Intellectual Property is developed:
1. within the Inventor's/Author's Scope of Employment with the University;
2. in the course of a project sponsored by the University, including, but not limited to, a Work Made for Hire;
3. with use of the University's funds, personnel, facilities, equipment, materials, and/or other resources; and/or
4. 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.
B. Assignment. An Inventor/Author shall assign all rights in, and interests to, Intellectual Property subject to Section IV.A. to the University and shall promptly execute and return any documents effectuating the same provided by the University.
C. Scholarly Works. The University shall not assert ownership of copyrightable original expression in Scholarly Works, except that the University has ownership in all other Intellectual Property described therein (e.g., any inventions, ideas, novel devices, composition of matter, articles of manufacture, beneficial biological materials, processes, improvements thereto, etc.). In the case of theses and dissertations, a student must, as a condition of a degree award, grant royalty-free permission to the University to reproduce and publicly distribute, including by electronic and digital technologies now known or developed in the future, on a non-commercial basis, copies of the thesis or dissertation.
D. Course Materials.
1. Faculty-Owned Course Materials. When a University employee develops course materials within their Scope of Employment, ownership of the materials belongs to the employee, who retains the copyright and the rights to update, edit, or otherwise revise the course materials and to place a time limit upon the use of the materials. Delivery systems and other supporting materials supplied by the University shall remain the property of the University where it is practical to separate them from the course content materials supplied by the employee. The right to control distribution is a right of ownership. However, the employee shall not distribute, sell, license, or lease the course materials to third parties, or permit the use, advertisement, or promotion of course materials with the University's name, logo, or other identifier by third parties, in a manner that might constitute a conflict of interest with the University, unless such action has been approved by the Provost.
2. University-Owned Course Materials. It is understood that University employees routinely develop and enhance their courses as part of their ordinary employment at the University. However, when any University employee is given specific direction from the University as a special assignment and/or contractual arrangement to create or enhance specific course materials (such as compensation to develop an online curriculum), ownership of the created and/or enhanced course materials belongs to the University, who retains the copyright and the rights to update, edit, or otherwise revise the course materials and to place a time limit upon the use of the materials.
E. Joint Ownership.
1. An Invention/Creation may be created through the joint efforts of two or more Inventor/Authors. In the absence of a written agreement to the contrary, the University is the sole owner of the joint Inventors'/Authors' rights to, and interests in, the Invention and/or Creation.
2. In the absence of a written agreement to the contrary, MTSU shall pay each joint Inventor/Author an equal share of the designated distribution of Net Income for an Inventor/Author, as set forth in Section VII below.
3. 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 MTSU employee shall promptly identify the non-MTSU collaborator(s) to MTSU. In such instance, the University shall enter into an agreement with the non-MTSU collaborator(s) to determine ownership and applicable revenue and/or royalty conditions.
V. Disclosure and Review Process
A. Inventors and Authors.
Inventors/Authors are responsible for promptly disclosing to the University all Intellectual Property using the Invention Disclosure Form or Copyright Disclosure Form. The Inventor/Author shall fully cooperate with the Office of Research and Sponsored Programs and any assignee(s)/designee(s) in the disclosure process and in other subsequent activities associated with pursuing applications for patents or copyrights and/or commercialization of the Intellectual Property, including licensing efforts.
Inventors should particularly note that certain acts (e.g., an enabling disclosure of the Invention in an academic journal, paper, poster presented at a conference, or offering to sell rights in the invention before a patent application has been made) can bar obtaining patent protection on the ideas contained therein. An Inventor contemplating public disclosure of activities prior to filing an Invention Disclosure Form must contact the Office of Research and Sponsored Programs prior to engaging in those disclosure activities.
B. Review Process
All disclosure forms shall be forwarded to the Vice Provost for Research or any designee(s), such as the MTSU Research Foundation, (the "Reviewer") for an initial evaluation of the Intellectual Property, including an evaluation of ownership, patentability, and/or commercial potential. The Reviewer may conduct an interview with the Inventor/Author and other persons as needed to make this evaluation. A patentability evaluation may, in particular, include a thorough evaluation of acts by the Inventor or items of prior art that would bar patent protection.
The Reviewer, in its sole discretion, will make a determination as to the ownership of the Intellectual Property, whether protection should be sought, and whether to seek commercialization opportunities. The Reviewer shall conduct investigations as they deem necessary in the preparation of its determinations. The Reviewer is authorized to seek outside assistance in preparing its determinations. The Reviewer shall have the responsibility to recommend for approval any and all agreements associated with the Intellectual Property, including commercialization and/or licensing efforts.
For Intellectual Property in which the University is deemed to have an ownership interest, following a decision by the Reviewer to seek patent protection, copyright protection, and/or commercialization of the Intellectual Property, and approval of any necessary agreements, the Reviewer will arrange to have those activities undertaken.
VI. Request for Re-Evaluation
If the Inventor/Author disagrees with an initial decision of the Reviewer, they may request a re-evaluation by the Provost. 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 their position along with the request. The decision of the Provost shall be issued within thirty (30) calendar days after receipt of the request for re-evaluation and said decision shall be final.
VII. Income from Intellectual Property
In the absence of a written agreement to the contrary, the Net Income that may accrue from the commercialization of the Intellectual Property shall be divided as set forth below:
|Inventor(s) / Author(s)||Department / Center||College||
Office of Research and
| University Education &
The Department/Center and College shall be those in which the Inventor/Author is employed, or which funded the Inventor's/Author's development of the subject Intellectual Property. If a Department/Center or College does not exist, the designated distribution for that unit will be assigned to the Office of Research and Sponsored Programs.
VIII. Waiver of Ownership
The University may elect to waive any claim of ownership under this policy. If the University asserts a claim of ownership but elects not to seek patent or copyright protection or otherwise pursue commercial development for an Invention/Creation, the University, in its sole discretion, may assign its ownership interest to the Inventor/Author.
IX. Assignment of Invention/Creation
The general policy of the University is to assign the title to an Invention/Creation of potential commercial value to the MTSU Research Foundation to commercialize the Invention/Creation on behalf of the University. The MTSU Research Foundation is an entity separate from MTSU that assists in obtaining patents and copyrights on Inventions and Creations and commercializing efforts of the same. The MTSU Research Foundation will ensure that Inventors/Authors are periodically informed of actions taken to commercialize their Inventions and Creations. Further, the MTSU Research Foundation encourages Inventors/Authors to advise it of potential avenues for commercial development of their Inventions or Creations.
The name of the University, any of its officers and departments, and the MTSU Research Foundation, or reference to the same, shall not be used in any form of publicity by a sponsor without prior written approval from the University.
This policy may be amended by from time to time. Any amendments go in effect immediately upon publication of the amended policy.
Revisions: June 5, 2017 (original); February 22, 2023.
Last Reviewed: February 2023.
References: Policy 12 Conflict of Interest; Federal Copyright Act; Federal Patent Act; 17 U.S.C. § 101.