Chapter 4: Business & Administration
04:37:00 Patents & Copyrights
(TBR Policy 5:01:06:00)
It is the policy of the Tennessee Board of Regents to: (1) encourage inventions, discoveries, and the production of copyrightable materials by members of the institutional communities; (2) facilitate the utilization of such discoveries and materials to the benefit of the public, the institution, and the members of the institutional community; and (3) provide for the equitable sharing of any proceeds derived from the commercial exploitation of inventions, discoveries, and copyrightable materials in which, pursuant to this policy, the institution is determined to have an interest.
The basic factors to be considered in establishing the responsibility for the utilization of any invention, discovery, or copyrightable materials, and sharing of the proceeds are: (1) institutional sponsorship of the project leading to the discovery or development of materials; (2) significant use of the institution's facilities, services, or equipment (libraries excluded) in the discovery or production process; and (3) the sponsorship of the project through the institution by agencies or persons outside the institution. In the event that any one of these three factors exists, the institution shall have an interest in the invention, discovery, or copyrightable materials. In defining the mutual responsibilities and rights, the following principles and procedures are to be followed.
Title to all inventions, discoveries, or copyrightable materials developed solely through individual initiative or personal time and not involving assignment or the significant use of institutional facilities or services (libraries excluded), shall be vested in the employee producing the patentable or copyrightable materials. Furthermore, the general obligation of faculty members to produce scholarly and creative works shall not for purposes of this policy be construed as an institutional assignment affecting title claims to inventions, discoveries, or copyrightable materials. Significant use of institutional facilities, services, or equipment shall be defined to include a cost to the institution in the amount of $1,000 or more (in constant 1982 dollars).
- Applications for the Titles of Patents and Copyrights: Subject to the approval of the chancellor or his/her designee, the College is authorized to seek and hold patents and copyrights, to assign their rights, and to execute royalty-sharing agreements. The institution's share of income accruing from patents and copyrights (net of costs incurred for obtaining, licensing, or administering the patents and copyrights) is to be deposited in a restricted account. Funds in this account are to be used solely for the enhancement of research and instructional programs.
- Disclosure: Prior to seeking patents, copyrights, or commercial exploitation, employed members of the institutional community shall disclose to the president, or his/her designee, all inventions, discoveries, and copyrightable materials which are derived from work supported by or through the institution, or which involved a significant use of the institution's resources. Graduate fellows, postdoctoral fellows, and medical residents are responsible for disclosure if inventions, discoveries, and copyrightable materials directly result from class work or programs of study, or if significant institutional resources were utilized.
- Advisory Committee on Patents and Copyrights: A committee of faculty and staff experienced in research, innovation, and the production of copyrighted materials shall be established at each institution. A majority of this committee shall be selected from the faculty.
- Responsibilities and general process guidelines for the Advisory Committee are as follows:
- The committee shall advise the president in all matters relating to this policy.
- The committee shall conduct such investigation as may be necessary to assess the rights and responsibilities of all parties.
- The committee will receive from the president, or his/her designee, referral of any disclosure made by employed members of the institutional community concerning inventions, discoveries, and copyrightable materials as described in section 2 above (Disclosure).
- The committee shall expeditiously seek to determine the extent to which the invention, discovery, or copyrightable materials resulted from institutional or other sponsorship, or involved a significant use of institutional resources. The committee may advise the president as follows:
- If the committee establishes that no institutional or external sponsorship or no significant use of institutional resources were involved, it shall advise the institution to waive all claims.
- If the committee establishes that institutional sponsorship, external sponsorship, or significant use of institutional resources were involved, it shall so advise the president.
- If the committee establishes that external sponsorship was involved, it shall determine the terms of the sponsorship agreement as it related to patents and copyrights and advise the president and those providing disclosure of such terms. Where the terms of the external sponsorship do not provide for the disposition of patents and copyrights, the institutional and Board policies shall be followed.
- In all cases where the institution requires the assignment of patents and copyrights to it, or when the institution assigns its rights to the person disclosing discoveries or copyrightable materials, and when institutional sponsorship or significant use of institutional resources were involved, the Patents and Copyrights Committee shall recommend to the president a royalty-sharing agreement. The recommended agreement should take into account contributions by the individual and the institution (see item 4d below).
- Role of the President Relative to Patents and Copyrights: The president, or his/her designee, will receive from employed members of the institutional community disclosure concerning inventions, discoveries, and copyrightable materials as described in section 2 above (Disclosure). Following receipt, the following process is applicable
- The president shall refer the disclosure to the Advisory Committee on Intellectual Property and request its study and recommendations (see section 3 above).
- On receiving recommendations from the Advisory Committee, the president in a reasonable time will inform the committee and the employed individual who has interest in the patent or copyright as follows:
- If the committee recommends that the institution waive all claims, the president will indicate whether or not he/she concurs and whether or not the institution waives all claims.
- If the committee advises the president that institutional sponsorship, external sponsorship, or significant use of institutional resources were involved, the president will indicate in a reasonable time whether or not the institution intends to hold and pursue its rights.
- If the committee advises the president of a royalty-sharing arrangement, the president will indicate in a reasonable time whether or not the institution accepts the recommended arrangement.
- In evaluating inventions, discoveries, and copyrightable materials, filing patents and copyrights applications, and licensing and administration of patents and copyrights, the institutions are authorized to obtain outside services from independent patents and copyrights assistance organizations.
- In considering a royalty-sharing agreement, the president will take into account contributions by the individual and by the institution. The shares of the parties are to be based on the relative contributions of the parties to the invention, discovery, or copyrightable materials developed. The royalties shall be shared, net of the costs of obtaining, licensing, and administering the patents and copyrights, and the agreement shall be approved by the president and the chancellor or his/her designated representative. In no case shall the employee's share of the net royalties be less than 25 percent. Where institutional sponsorship or significant institutional resources were involved, the agreement shall also provide for reservation to the Board of Regents of a nonexclusive, irrevocable license in the invention, discovery, or copyrightable materials with power to grant licenses for all governmental and educational purposes.
- If the content of materials developed by a member of the institutional community, and for which the institution holds a copyright, is changed during the period of the original copyright, the authors shall have the options of being credited, or not credited, for the materials retained. Such action shall not abrogate any royalty-sharing agreement.
- Nothing in this policy shall preclude mutually agreed on contractual arrangements between the institution and members of the community wherein either party may agree to waive rights to patents, discoveries, or copyrightable items. All employees shall cooperate with the institution in obtaining patents and copyrights, including the execution of all necessary documents.
- Appeal Procedure: The employee may appeal to the president matters related to rights or royalty sharing agreement. A final decision by the president may be appealed to the Board of Regents in accordance with TBR Policy 1:02:11:00.
- Copyrightable Materials: Those materials or works which reasonably appear to qualify for protection under the copyright laws of the United States or other protective statutes. Copyrightable materials include, but are not limited to: (1) books, texts, glossaries, bibliographies, study guides, laboratory manuals, syllabi, tests, and proposals; (2) computer programs; (3) films, film-strips, charts, transparencies, and other visual aids; (4) lectures, musical or dramatic compositions, unpublished scripts; and (5) video or audio tapes, cassettes.
- Patentable Materials: Those innovations, inventions, discoveries, or developments which reasonably appear to qualify for protection under the patent laws of the United States or protective statutes. The United States Code Annotated, Title 35, Section 101, as amended, provides that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
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