Minot State University

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1 Minot State University Intellectual Property Policy Minot State University s Intellectual Property Policy is aligned with and subject to the North Dakota State Board of Higher Education Policy, Section 611.2, Employee Responsibility and Activities: Intellectual Property, as revised June 20, General Principles Intellectual property is the creative output of the human mind including, but not limited to, Copyrightable Work, Inventions, Trademarks, and Tangible Research Property. Such output is protectable under certain federal, state, and international laws. In academia, intellectual property is plentiful and an important result of the university education and research programs. Intellectual property is a personal property right and as the possessor of a personal property right, the individual has certain benefits including ownership and the ability to control most use of the product. The primary purpose of the following policy is to protect the intellectual property of individuals, Minot State University (MSU), and research/grant sponsors while at the same time encouraging and promoting research and scholarship based on the traditional principles of the academic profession. Products of this research and scholarship may constitute Intellectual Property with potential for financial benefit to the individual(s) involved, MSU, and any external sponsors. This policy establishes guidelines to support faculty, staff, and students in identifying, protecting, and administering Intellectual Property and defining the rights and responsibilities of all involved. This policy aligns with the policy of the North Dakota University System (NDUS) and governs all Intellectual Property discussion involving MSU. Any person who is uncertain as to how to identify a potential Copyrightable Work, Invention, Trade Secret, or Tangible Research Property, or how MSU implements any of these polices should contact the Dean of Research and Sponsored Programs. 1

2 2. Definitions a. Author(s): Person who creates a Copyrightable Work. The Author s Copyright protection exists from the time the authored work is created in a fixed tangible form. The authored Work immediately becomes the property of the Author who created it. b. Copyright: A form of protection that is provided for under the U.S. constitution to the author(s) of an original Work of authorship that is in tangible form. c. Copyright Agreement: A written and signed agreement between the Author(s) and MSU that explicitly defines the ownership of the Copyrightable Work, any control rights in cases of Mediated Courseware, any reimbursement for Significant Use of MSU s resources, and the sharing of royalties in licensing agreements. d. Copyrightable Work: An original Work of authorship which has been fixed in any tangible medium of expression from which it can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Examples of Copyrightable Work include writings such as books or journals; software; computer programs; musical works (including accompanying words); dramatic works (including any accompanying music); pantomimes and choreographic works; pictorial, graphic, and sculptural works; videos; multimedia products; sound recordings; motion pictures and other audiovisual works; sound recordings; and architectural works. Not protected by Copyright law is anything that is not in tangible form, such as choreographic work that has not been notated or recorded; ideas or concepts; lists showing no originality; type styles; titles; names; short phrases; slogans; factual information; public domain information; data or know-how; works that contain no originality; works created by the U.S. Government. Any Work that is also an Invention shall be governed by the General Patent Policy and not the General Copyright Policy. e. Cumulative Net Royalties: The cumulative lifetime gross royalties and licensing or assignment fees less the expenses incurred by MSU in procuring, protecting, preserving, maintaining, marketing, and licensing the Patent and related property rights including legal fees associated with the Invention, fees for patentability and marketability searches, fees arising out of litigations, fees for legal advice or any fees or costs directly attributable to the Invention 2

3 being licensed. Indirect costs, overhead, or other institution costs usually associated with operation of MSU and not directly attributable to the Invention will not be deducted from gross revenues. f. Intellectual Property: Collectively, all forms of property created by the mind including, but not limited to, Inventions, Copyrightable Work, Trademarks, and Tangible Research Property. g. Intellectual Property Protection Procedures: The procedures established by MSU for review of Inventions. h. Invention: A process, method, discovery, device, plant, composition of matter, or other Invention that reasonably appears to qualify for protection under the United States patent law (including, but not limited to, utility patent, plant patent, design patent, certificate of Plant Variety Protection, etc.) whether or not actually patentable. An Invention may be the product of a single inventor or a group of inventors who have collaborated on a project. An Invention is something that is new, did not exist before, and is not known to others who have the same ordinary skill in the art to which the Invention pertains and is created by independent investigation and experiment. i. Invention Disclosure and Assignment: A written document which allows one skilled-in-the-art to fully understand and practice an Invention. j. Inventor: An individual(s) who contributes to the conception or the reduction to practice of an Invention. An Inventor may be a student, technician, employee in any capacity, or a junior or senior faculty; and under U.S. patent law all inventors are treated equally. k. Investigator: An investigator is any MSU employee, researcher, or student engaged in the conduct of research, or anyone using MSU support, unless otherwise agreed in a prior contractual agreement. l. Mediated Courseware: Teaching aids created and/or deployed electronically, including online delivery courses. Mediated Courseware may incorporate text, graphics, video, and audio elements. Examples of such materials include, but are not limited 3

4 to, hypertext modules, simulation software, web sites, and databases containing numbers, images, or text. m. Patent: A Patent is a grant to the owner of or the assignee of the Patent the right to exclude others from making, using, or selling the invention for a term of twenty years from the date of the Patent application. A Patent will be issued for any Invention of a new or useful process, machine, manufacture or composition of matter or any new and useful improvement thereof. A Patent does not give anyone, including the owners of an issued Patent, the right to practice the Invention. A Patent is made by the U.S. Patent and Trademark Office (PTO), usually within 3-4 year s submission of the application. n. PMO: A PMO, or Patent Management Organization, is a third party, nonprofit organization described in section 501(c)(3) of the Internal Revenue Code of 1986, that has as one of its primary functions the management an institution s Inventions and receives Licensing Revenue and gifts. o. Public Disclosure: Describing an Invention in a printed publication, a patent application or at a conference, meeting, or other public gathering in the United States or any other country; sale or offered for sale of Invention; use of the Invention, other than as part of experimental use in the United States; or disclosure to any person who is not required to maintain the Invention s confidentiality. p. Research Data: Recorded factual material commonly accepted in academic study as necessary to validate research findings, but not any of the following: preliminary analyses, drafts of scientific papers, plans for future research, peer reviews, or communications with colleagues. Data may be a property right but is not considered Copyrightable Work (see Tangible Research Property). q. Significant Use of MSU s Resources: An Author s use of another employee s time (including that of student employees) or MSU s facilities or equipment that appreciably increases MSU s costs beyond those normally incurred in support of an MSU employee. Significant Use does not include the normal use of an MSU employee s time, facilities, or equipment commonly available to faculty, staff, or the public, such as libraries, internet access, office space, office equipment, computers, and/or office supplies. 4

5 Unless otherwise agreed, Significant Use also does not include the use of MSU s developmental leave time, so long as it does not appreciably increase MSU s costs beyond those normally incurred in support of an MSU employee. Significant Use also does not include the first $5,000 of MSU costs on a project. r. Service Mark: The same as a Trademark except that it identifies and distinguishes the source of a service, rather than that of a product, that is performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise. s. Tangible Research Property: Tangible items produced in the course of research including, but not limited to, such items as biological materials, engineering drawings, integrated circuit chips, computer databases, prototype devices, circuit diagrams, and equipment. Individual items of Tangible Research Property may be associated with one or more intangible properties, such as inventions, Copyrightable Work, and Trademarks. An item of Tangible Research Property may be the product of a single Author or a group of individuals who have collaborated on a project. t. Trade Secret: Information, including a formula, pattern, compilation, program, device, method, technique or process, that derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use. u. Trademark: A distinctive word or combination of words, name, symbol, or device that is used in interstate trade of goods to indicate the source of the goods, their physical commodities, which may be natural, manufactured, or produced, and to distinguish them from the goods of others. v. Work Made for Hire: Defined pursuant to Federal Copyright Law which includes a Work prepared by an employee (staff, faculty, or student employee) within the scope of employment or a Work specifically ordered, commissioned, or created pursuant to a written agreement identifying the Work as a Work Made for Hire. Unless a Copyright Agreement provides otherwise, software created by employees within the scope of their employment and not treated as Mediated Courseware shall be treated as a Work Made for Hire. 5

6 3. General Copyright Policy a. Except as otherwise explicitly provided under this policy or applicable law, an employee who creates a Work retains Copyright ownership of the Work. If there has been Significant Use of MSU s Resources, the provisions of section 3b of this policy shall apply. b. If there has been Significant Use of MSU s Resources (as defined in section 2q) to create a Copyrightable Work, the ownership of which is vested in the individual employee, MSU shall be reimbursed out of the royalties, licensing, or assignment fees; in accord with a Copyright Agreement between the employee and MSU, up to that amount that constitutes MSU s Significant Use (section 2q). c. If an employee is employed or commissioned by MSU or agencies of MSU for the creation of Work (Work Made for Hire), or if by prior agreement they are assigned to produce or develop Work in the course of their regular duties (Work Made for Hire), and if such Work is deemed appropriate for copyright, it must be reported to MSU pursuant to its copyright review procedure. In such instances, MSU shall have the first option to secure Copyright in the name of MSU. Should MSU decide, in writing, it would not be appropriate to secure Copyright, the employee then may proceed to personally secure the Copyright. d. Copyright ownership of Work developed as a result of Work supported partially or fully by an outside agency through a contract or grant shall be determined in accordance with the terms of the contract or grant. In those cases where Copyright ownership is shared between the sponsor and MSU, the employee may share in the royalties produced by the Work in accord with a Copyright Agreement between the employee and MSU. In those cases where Copyright ownership is vested in MSU, MSU shall have the first option to secure Copyright in the name of MSU. Should MSU decide, in writing, it would not be appropriate to secure Copyright, the employee then may proceed to personally secure the Copyright. e. Royalties received as a result of Copyright ownership by MSU will be disbursed with a minimum of 30 percent to the employee(s). The remainder would be distributed according to the negotiated Copyright Agreement. No limit shall be set on the absolute 6

7 amount of royalty income the employee(s) may earn, except that it shall be in keeping with NDUS policy. f. When an Author creates a Copyrightable Work, the following steps should be followed to establish a Copyright Agreement between the Author and MSU: (1) The Author will initiate the process by delivering a copy of the Work and a proposal for the terms of the Copyright Agreement to the Dean of Research and Sponsored Programs. (2) After review, the Dean of Research and Sponsored Programs will forward a proposed Copyright Agreement for review and approval by the appropriate department or division chair, academic dean, the Vice President for Academic Affairs, and the Vice President for Administration and Finance. Generally, the NDUS Board Attorney will also review the Copyright Agreement prior to final approval by MSU. (3) A Copyright Agreement will be entered into between the Author and the Vice President for Administration and Finance on behalf of MSU. (a)the Dean of Research and Sponsored Programs shall be responsible for Copyright registration of Work owned by MSU, and for administering contracts with its Authors, including the responsibilities associated with maintaining records for Copyright registration, royalty collection and distribution, marketing, and such other actions as are appropriate. (b) Authors of Work for which ownership vests in MSU shall warrant that such Work does not infringe any preexisting Copyright and shall cooperate with MSU in pursuit of Copyright protection. g. Copyright is conveyed automatically when the work is created and fixed in a tangible form. To convey Copyright, the author is advised to do the following: (1) Use the seal, Copyright or Copr. (2) Note year first created (3) Name of the author of the Copyright: 2008, John Doe h. Authors wishing to register a Copyrightable Work with the United 7

8 States Copyright Office may consult with the Dean of Research and Sponsored Programs for assistance. Costs of copyright registration will be assumed by the Author. 4. Mediated Courseware. a. Self-initiated Mediated Courseware. When an employee develops Mediated Courseware, other than an online delivery course, without specific direction by MSU, unless otherwise agreed, the ownership of the courseware shall remain with the employee. Normally, no royalty, rent or other consideration shall be paid to the employee when that Mediated Courseware is used for instruction at MSU and such Mediated Courseware shall not be used or modified without the consent of the employee. b. MSU-directed Mediated Courseware. When MSU directs in an employment contract the authoring of a specific Mediated Courseware, such as but not limited to an online delivery course, the resulting Mediated Courseware belongs to MSU and MSU, in coordination with the department or division here the courseware is applied, shall have the right to revise it and decide who will utilize the Mediated Courseware in instruction. MSU may specifically agree to share revenues and control rights with the employee. c. Self-Initiated Online Delivery Courses. Self-Initiated online delivery courses developed and delivered by the Author while an employee of MSU belong jointly to the Author and to MSU. Sections 4d and 4e apply. d. While the Author is an employee of MSU, the MSU-directed Mediated Courseware, including both self-initiated and MSUdirected online delivery courses, shall not be sold, leased, rented or otherwise used in a manner that competes in a substantial way with the for-credit offering of the employee s own Institution, Minot State University, unless that transaction has received the approval of the Vice President for Academic Affairs. MSU shall have a perpetual, non-exclusive royalty-free right to use such courseware for archival research purposes. Should approval be granted to the Author to offer an online delivery course outside MSU, the provisions of section 4f of this policy apply. e. Development and use of MSU directed Mediated Courseware shall be reported to the department or division chair, academic dean, and the Dean of the Center for Extended Learning. 8

9 f. If the Author of Mediated Courseware seeks and is granted approval to use MSU-directed Mediated Courseware outside of MSU either during or after the Author s employment with MSU, a Copyright Agreement between the Author and MSU must be completed. The Copyright Agreement will be established between MSU and the Author through the Dean of the Center for Extended Learning and the Dean of Research and Sponsored Programs. 5. Copyrightable Software. Unless a separate written agreement provides otherwise, software created by employees within the scope of their employment and not covered under Mediated Courseware in section 4 of this policy shall be treated as a Work Made for Hire, owned by MSU and commercialized pursuant to the General Patent Policy, with the employee(s) getting a minimum of 30 percent of the net royalties and fees. 6. Student Work. a. The ownership of Copyright of student Work is governed by the following: (1) Copyright ownership of student Work that is performed in whole or in part by the student with financial support in the form of wages, salaries, stipend, or grants from funds administered by MSU shall be determined in accordance with the terms of the support agreement, or in the absence of such terms, shall become the property of MSU. (2) Copyright ownership of student Work generated by research performed in whole or in part utilizing equipment or facilities provided by MSU under conditions that impose Copyright restrictions shall be determined in accordance with such restrictions. (3) Students will own the Copyright to their Work produced as students of MSU, but not within the provisions of (1) and (2) above, as follows: (a) Intellectual property (writings, artwork, projects, etc.) produced as a result of general coursework assignments are the property of the student or students. Assignments requiring multiple students to participate are the property of 9

10 those students, and they have the requirement to decide for themselves rights and distribution. (b) Intellectual property produced as a result or by-product of guided supervision of a faculty member on a special project is the property of the faculty member. Such work arrangements should be documented in a separate agreement between the faculty member and the student(s) involved. (c) MSU recognizes that copyright for master s theses and projects remains with the students. (d) A student must, as a condition to a degree award, grant royalty-free permission to MSU to reproduce and publicly distribute, including by electronic means, copies of the student's Work. (4) Where there is Significant Use of MSU s Resources, Copyright ownership shall be determined under section 3b of this policy. b. Ownership of student Inventions shall be governed by the Patent Policy in section 7 of this policy. 7. Research Data In its role as grantee or contractor, MSU owns research data as a result of its contractual obligations. By tradition, and as a practical matter, the investigator retains possession of data on behalf of MSU. Thus investigators are custodians or stewards of research data, while MSU retains ownership of such data. Both MSU and the investigator have rights and responsibilities with regard to access, use, and maintenance of research data. In addition, consistent with MSU policy, these broad guidelines apply to internally funded and unfunded research. 8. General Patent and Trade Secret Policy. a. The North Dakota State Board of Higher Education and Minot State University encourage the faculty, staff, and others associated with MSU to seek Patents on Inventions as a method of bringing recognition and remuneration to all parties involved. 10

11 b. Section 9 outlines the procedures for processing such Inventions or discoveries. The Inventor(s) shall submit an Invention Disclosure to MSU, through the Dean of Research and Sponsored Programs, at the earliest possible time after the conceptualization or creation of the Invention but at least 60 days prior to Public Disclosure of the Invention. At any time during the processing of such an Invention, the rights, title and/or interest of such Inventions may be assigned to a PMO. MSU s Vice President for Administration and Finance, or designee, shall sign appropriate documentation acknowledging the assignment. The PMO will assume obligations as appropriate and provide timely documentation to MSU, if requested. c. A patentable discovery may arise from the development of a new and useful process, device or apparatus, article of manufacture, composition of matter (including chemical compounds, microorganisms, and the like), plant, or related improvement, or a new use for a known material or device. A public enabling disclosure is one which will enable others in the same or a related field to fully understand and practice the invention. MSU s patent review procedures shall assure provision of guidelines to the Inventor(s) in defining what constitutes a public enabling disclosure. d. All rights to and interests in patentable discoveries resulting from research or investigation conducted in the course of the Inventor s employment with MSU including, but not limited to, the performance of a grant, contract, or award made internally, by an extramural agency, or by a third party, or with the use of MSU s resources shall be the sole and exclusive property of MSU; no other person or entity shall have rights of ownership or interest in such Inventions. Any and all exceptions to this Policy shall be determined and approved by the Vice President of Academic Affairs and the Vice President for Administration and Finance, in consultation with the Dean of Research and Sponsored Programs. In all other cases, MSU shall have the right of first refusal to the title of all patentable discoveries derived with the use of MSU s facilities, gifts, grants, or contract funds through MSU, subject to restrictions arising from the overriding obligations of MSU pursuant to gifts, grants, contracts or other agreement with outside organizations. The Inventor shall provide all necessary declarations, assignments, or other documents as may be necessary in the course of processing the Invention evaluation, patent prosecution, or protection of patent 11

12 rights to assure that title in such Inventions shall be held by MSU or other parties as may be appropriate under the circumstances. e. This Policy applies to all Inventions made by MSU faculty, staff, students, trainees, volunteers, or others if such Inventions are: (1) the result of research performed by or under the direction of any faculty member, staff, or student, the cost of which was partially or wholly paid for with funds under the control of or administered by MSU and/or (2) the result of an investigation by the faculty, staff, students, trainees, volunteers, or others utilizing MSU s facilities, laboratories, or other resources available to such faculty, staff, students, trainees, volunteers or others because of their status within MSU. f. All Inventions conceived or actually or conceptually reduced to practice in the furtherance of research or investigation conducted by MSU s faculty, staff, students, trainees, volunteers, or others shall be promptly disclosed in writing to the Dean of Research and Sponsored Programs. The Invention Disclosure form should be used for the reporting process and may be obtained from the Research and Sponsored Programs web site ( or from the Dean of Research and Sponsored Programs. g. All rights to and interests in Inventions arising in the course of research or investigation sponsored by MSU, any government or private agency, or other sponsored research are controlled by the terms of the applicable Intellectual Property agreement, which must be reviewed, negotiated and approved by the Dean of Research and Sponsored Programs and the Vice President for Administration and Finance. In the absence of provision to the contrary contained in any such research or investigation agreement or under Federal law or regulations, the following shall apply: (1) The Inventor has the right to: (a) receive notice within six (6) months of MSU s intention to file a Patent application or otherwise to retain title to the Invention after the Invention Disclosure is made to MSU 12

13 (b) receive a share of any licensing fees or royalties received by MSU from the commercialization of the Invention according to the distribution Schedule contained in section 7i. (c) receive from MSU title to any Invention subject to this Policy in the event MSU elects not to retain title; and (d) promote timely publications of his/her research findings provided that an Invention Disclosure has been made. (2) The Inventor is obligated to: (a) promptly file an Invention Disclosure including the name of any collaborator. (b) assign title to the Invention to MSU. (c) cooperate to the extent necessary as determined by MSU in the reasonable delay of publication to allow for a timely submission of a Patent application; (d) cooperate in prosecuting all Patent applications and other required documents; (e) participate in the defense of such Patents during prosecution for interference or infringement; and (f) assist with licensing or marketing efforts related to the Invention. (3) The Institution has the right to: (a) assign to the Inventor title to any Invention, subject to this Policy, for which MSU chooses not to retain title. (b) assign the rights or interests of any Patented or unpatented Invention owned by MSU to a PMO, or (c) make, use, license, sell, or exchange rights to a third party the rights or interests of any Patented or unpatented Invention owned by MSU, and exclude others from doing so. (4) The Institution is obligated to: 13

14 (a) make faculty, staff, students, trainees, volunteers or others aware of this Policy and of any ongoing agreements with external sources to evaluate and/or market such Inventions; (b) after the Invention Disclosure is filed, determine whether MSU chooses to retain title and/or file a Patent application and give notice of MSU s intention and/or Patent application to an Inventor within six (6) months after the Invention Disclosure is made; (c) expedite Intellectual Property protection, and (d) distribute Licensing Revenue received by MSU for any Invention according to the distribution Schedule contained in section 7i. h. In no instance, and regardless of ownership of the Patent, may MSU s name be used in connection with the marketing of the Invention without the express written permission of MSU. i. Subject to restrictions arising from obligations of MSU pursuant to gifts, grants, contracts, or other agreements with outside organizations, MSU agrees, for and in consideration of the assignment of Invention rights, to pay annually to the named inventor(s), or to the inventor(s) heirs, successors, or assigns, Cumulative Net Royalties according to the Distribution Schedule below. Distribution Schedule Cumulative Net Royalties Inventor Department/ Division Institution/PMO <$25,000 50% 10% 40% $25,000-50,000 45% 10% 45% >$50,000 40% 10% 50% j. When there are two or more Inventors, each Inventor shall share equally in the Inventor s share of Cumulative Net Royalties, unless all Inventors have agreed in writing to a different distribution of such share. The Department/Division s share shall follow the Inventor s distribution share of Cumulative Net Royalties. The Vice President of Administration and Finance, 14

15 along with the Vice President for Academic Affairs, will have final authority in resolving any dispute between Inventors as to the sharing of royalties between them. k. Cumulative Net Royalties received by MSU and the Department/Division must be used to support research, to further the development of Intellectual Property, and/or to protect MSU s Inventions. l. An Inventor voluntarily leaving the employment of MSU for employment elsewhere will have the Cumulative Net Royalties due Inventor reduced by 75%, except in the event that the Inventor participates in the formation of a new business affiliated with MSU using the Invention technology. m. The Inventor obligations under section 7g(2) will not be terminated upon termination of employment from MSU. n. the provisions of this section apply to plan variety protection unless inconsistent with MSU policy. 9. Intellectual Property Protection Procedure (Patent Review Process) The Dean of Research and Sponsored Programs is responsible for the administration of this Intellectual Property Policy. The Dean of Research and Sponsored Program is also responsible for the administration of the Intellectual Property Protection Procedure, financial rights, negotiation, and management of Invention records. If an Invention is assigned to a PMO during the Intellectual Property Protection Procedure, the PMO shall be responsible for its administration and will provide MSU with the appropriate documentation if requested. This Intellectual Property Protection Procedure serves as a guide to the MSU community in meeting the disclosure and reporting requirements of Minot State University, North Dakota State Board of Higher Education, and cooperating agencies. a. Intellectual Property and/or Invention Agreement Review. Prior to executing any contract that binds MSU or the Inventor with regard to Intellectual Property, such contract will be submitted to the Dean of Research and Sponsored Programs, who will ascertain that the Intellectual Property clauses in sponsored projects are acceptable to the principal investigator and MSU and are consistent with policies of the North Dakota State Board of Higher Education, and if appropriate, to Federal Law. Such 15

16 agreements include confidentiality, non-disclosure, material transaction, consulting and like agreements containing provisions for proprietary information and contractor, sponsored research or development, licensing or like agreements containing provisions for Intellectual Property. The Dean of Research and Sponsored Programs will verify that the terms of a contract will not willfully or knowingly infringe on any background technology on which MSU has previously secured a Patent or on any proprietary agreement that MSU may have with another party. b. Documentation and Tracking. Inventors are responsible for recording and maintaining the discovery records of all potentially patentable discoveries derived through MSU activity. Bound, dated, witnessed documentation is the encouraged method for maintaining such records. Any questions regarding the proper method for maintaining such records should be directed to the Dean of Research and Sponsored Programs. c. Invention Disclosure. The Invention Disclosure will be completed by the Inventor and submitted to the Dean of Research and Sponsored Programs at the earliest possible time after the conceptualization or creation of the Invention but no less than 60 days prior to Public Disclosure of the Invention. The Dean of Research and Sponsored Programs, the Vice President of Academic Affairs, and the Vice President of Administration and Finance will review the Invention Disclosure and recommend whether MSU request that the Inventor sign an agreement with MSU to assign rights to MSU for the Invention. Upon completion of the Invention Disclosure and Assignment, the Invention will be considered approved by MSU for pursuit of Patent. The Dean of Research and Sponsored Programs will then work with the Inventor and an external third party to file a U.S. Patent application on the Invention. The Dean of Research and Sponsored Programs will also contact the appropriate Federal agency providing grant support of the Invention Disclosure, in compliance with U.S. 37 CRF Part 401 and 35 U.S.C d. The Vice President for Academic Affairs and the Vice President for Administration and Finance will review each Invention before committing MSU or other funds in the pursuit of a Patent covering the Invention, protection of the Invention as a Trade Secret, protection of the Invention under Copyright or any other form of protection of the Invention as Intellectual Property. Such an evaluation should consider all aspects of the Invention, 16

17 prior art search and assessment, discovery s gross market potential, potential licensees, financial return, obligation to sponsoring parties, and other factors impacting the investment of time and funds to complete the patent application process. The review may entail the commission of market, patentability, or similar studies. The Invention rights may be returned to the Dean of Research and Sponsored Programs and the Inventor at any time during the review with a request for additional information. e. The Vice President for Academic Affairs and the Vice President for Administration and Finance will review, recommend filing or not filing, and prioritize, if necessary, the filing of a Patent application on the invention f. Patent Application. Upon approval by MSU to pursue protection of the Invention, the Dean of Research and Sponsored Programs will: (1) notify, if necessary, the appropriate Federal agency of MSU s desire to retain title to the invention; (2) work with the Inventor and a third party to file a U.S. Patent application on the Invention within the appropriate period. g. Documentation. As necessary to protect the interests of the Inventor and MSU, and as allowed by law, the records supporting the Invention protection and appropriate documents with any commercialization organization will be maintained as confidential. The official Invention file shall include the following items, if and when they are created: (1) Documentation identifying the sources of funds used to cover the costs of the Invention. (2) The costs of Invention protection. In the event that third party pays for prosecution costs, said costs will be reduced accordingly. (3) Any obligatory contract or grant terms and conditions under which the discovery was conceived or developed. (4) Initial records of the Invention (ie notebook references, drawings, sketches, etc.). 17

18 (5) Any formal records of the Invention required by sponsors. (6) Invention Disclosure documents submitted by the Inventor(s). (7) Invention Disclosure documents submitted to a Patent agent or attorney. (8) Inventor and MSU assignment agreements. (9) Documentation of the approval by the Vice President for Administration and Finance and the Vice President for Academic Affairs decisions to proceed in securing a Patent, the source(s) of funds used in covering the costs, and the Patent attorney or other professional service involved in securing the Patent. (10) The Patent agent s/attorney s findings and assessment from a preliminary Patent search. (11) The final draft of a Patent application as filed. (12) Any Patent assignment. (13) A disbursement of funds agreement identifying financial returns to the Inventor, MSU, and any Patent development/commercialization entity. (14) The issued Patent. (15) Any licenses, equity positions, or other commercialization documents which determine financial returns to the Inventor and MSU and its entities. (16) Obligatory confirmatory licenses to any sponsor. (17) Documentation of any abandonment of any Patent by MSU, any agreements transferring title back to the Inventor, or any obligatory transfer of title to the sponsor. The Inventor shall be provided copies of the items 1-17 to the Dean of Research and Sponsored Programs who will establish the for official MSU Documentation file for the Invention. 18

19 h. Commercialization. Upon the decision to pursue commercialization of an Invention, the Dean of Research and Sponsored Programs shall assist the Inventor in outlining a commercialization plan. The commercialization plan should give careful consideration to steps that could be taken to protect the value of the Invention, including the appropriate use of confidentiality agreements, material transaction agreements, and other Intellectual Property agreements. A copy of this plan and annual progress reports shall be provided by the Inventor to the Dean of Research and Sponsored Programs, the Vice President for Academic Affairs, the Vice President for Administration and Finance, and any applicable cooperating agency. The principal elements of this plan shall be incorporated into any licensing agreement between MSU and any commercialization organization. i. Patent and/or Intellectual Property Assignment and/or Licensing. MSU authorizes the Vice President for Administration and Finance to establish a means of administering and managing MSU s Invention assets which (1) expedites their commercialization, (2) provides means for defense of a Patent, (3) maintains the secrecy of Trade Secrets and (4) provides financial returns to the Inventor and MSU. For non-pmo commercialization organizations, the Vice President for Administration and Finance will be responsible for reviewing with General Counsel, negotiating and approving all agreements with third parties relating to the assignment of Invention rights. The Vice President for Administration and Finance is authorized to sign licensing or like agreements on behalf of MSU. j. Licensing Revenue Collection and Cumulative Net Royalties Distribution. Unless assigned to a PMO, the Vice President for Administration and Finance will be responsible for the collection of all Licensing Revenue and the payment of all fees under section 8i as appropriate, upon approval by General Counsel, and the distribution of Cumulative Net Royalties under section 8i. Documentation of the distribution of funds to the Inventor, MSU, any cooperating agencies, and other parties will be prepared by the Vice President of Administration and Finance or PMO, as appropriate, and signed by all parties. A PMO will provide MSU a copy of such documentation if requested. 10. General Trademark Policy 19

20 Trademarks developed by faculty, students, and staff of the Institution shall be treated in the same manner as Inventions. See Section 9 (above). 11. Transfer of Rights MSU may assign or transfer ownership rights in Intellectual Property to independent foundations created for the purpose of obtaining or administering and marketing MSU s Intellectual Property, receiving gifts, or supporting or promoting MSU or MSU s research. MSU employees are responsible for ensuring that the terms of their consulting agreements with third parties do not conflict with their commitments to MSU. Each employee shall make the nature of the employee s obligations to MSU clear to any third party for whom the employee expects to consult. Specifically, the scope of the consulting services must be distinguished from the scope of research commitment to MSU. ***Upon approval, this policy will be published in the MSU Faculty Handbook, Staff Handbook, and Student Handbook. It will also be provided as a link on the MSU website, under Research and Sponsored Programs, Intellectual Property Policy. 20