Ohio Administrative Code
Title 3349 - Northeast Ohio Medical University
Chapter 3349-20 - Policy on Funds, Transfers, Unallowable Costs and Financial Conflict of Interest
Section 3349-20-50 - Intellectual property
Universal Citation: OH Admin Code 3349-20-50
Current through all regulations passed and filed through September 16, 2024
(A) Purpose
Under Ohio law, all discoveries or inventions resulting from research or investigations conducted in any Ohio public college or university are the sole property of the university. The purpose of this rule is to establish a framework for university intellectual property protection and development that will transfer the benefits of its innovations to society, and at the same time, obtain appropriate financial gains for the university and its inventors as appropriate.
(B) Scope
(1)
This rule applies to all discoveries, innovations, or
inventions, made by any university employee if such discovery, invention, or
innovation was:
(a)
The result of research by, or under the direction of,
any university employee, the cost of which was paid for, in whole or in part,
with funds from, under the control of, or administered by, the university. This
includes all grant funds under the control of a university employee regardless
of the source; or
(b)
The discovery, innovation, or invention resulted from
efforts that utilized more than a de minimus amount of university facilities or
resources.
(2)
Inventions not involving any university funds,
equipment, facilities, or personnel (or a de minimus amount) are the property
of the inventor, so long as the discovery, innovation, or invention is not in a
substantive area of research in which the inventor is customarily engaged on
behalf of the university.
(3)
In general, students at the university are entitled to
own any invention made in their student capacity; and will not be required to
assign their ownership to the university. Students who receive compensation
from the university for work performed for the university, however, are
considered employees under this rule and must assign their ownership interest
to the university. Students are not obligated to participate in projects or
activities that require the students to license or assign their intellectual
property to the university.
(4)
Absent other
facts or as otherwise agreed to in writing, if a student takes any course for
credit and develops an invention as part of a class project using no greater
university resources than those generally available to all other students
within the class, the intellectual property associated with that invention
belongs to the student.
(5)
The university will only protect intellectual property
that has been assigned to it. Prior to investing in any property protection,
the university will investigate the intellectual property landscape to identify
any prior art or encumbrances related to the technology, evaluates technical
merit, competition, market need, stage of development, and potential licensees.
Students requesting that the university protect their intellectual property
must execute an assignment agreement that will set forth the rights and
responsibilities of the student and the university.
(C) Definitions
(1)
"Confidential
information" refers to all proprietary or confidential information of the
university, the affiliated entities of the university, research sponsors,
foundations, governmental agencies, or others, whether provided or made
available verbally, in writing, electronically, by observation or through any
other means, as well as all information generated during the review of such
information or concerning the existence, scope or terms of any past, present or
potential future research project, study, collaboration, grant, contract or
other agreement. Confidential information includes, by way of example, but
without limitation, the following: all business, financial, or scientific
information; contractual arrangements and methods of operating; lab notes,
graphic materials, work papers; patent applications and trade secrets; research
protocols or other information; biological materials; reagents; software or
documentation; prototypes; mask works; information pertaining to any directors,
officers, medical staff members, employees, consultants, representatives, or
agents of university affiliates or relating to actual or potential sponsor,
patient, supplier, customer, or licensee identities, accounting and patient
records; and any other information or materials not specifically mentioned in
this rule that is designated as confidential, that affiliated entities have an
obligation to keep confidential; that the university designates as confidential
or designate as requiring permission to release; or that would constitute a
trade secret under applicable law.
(2)
"Composition of
matter" generally, refers to chemical compositions and can include mixtures of
ingredients as well as new chemical compounds per se.
(3)
"Copyright"
refers to the protection that is accorded to original works of authorship fixed
in tangible media of expression. Copyright protects the owner of the work if
others copy, present, or display the work without the permission of the
owner.
(a)
"Works of authorship" include but are not limited to
scholarly articles, literary, musical, dramatic, audiovisual, architectural,
pictorial, graphic, and sculptural works, and video and sound
recordings.
(b)
"Tangible media of expression" include physical,
digital, and other formats now known or later developed from which
copyrightable works may be stored, reproduced, perceived, or otherwise
communicated, either directly or with the aid of a machine or
device.
(c)
Copyright may be used to protect software source codes
from being copied or infringed.
(4)
"Direct and
significant amount of university resources" refers to a requested and approved
allocation of resources not routinely available to members of an employee's
unit. University resources include, but are not limited to, staff time,
equipment, college, departmental and grant funds, computer usage, and release
time from assigned duties. Clarification of whether an allocation is "direct
and significant" should be sought by the employee at the time of the request
for allocation.
(5)
"Disclosure" refers to printed publication, or in
public use, or sale, or otherwise made available to the public. An invention
disclosure to the university is a confidential reporting of an invention or
discovery in sufficient detail to communicate an understanding of the invention
or discovery to the university personnel responsible for evaluating and
protecting the discovery, innovation or invention.
(6)
"Discovery"
refers to the process of finding out about some substance, mechanical device,
improvement, or application not previously known. It is something less than
invention and may be the result of industry, application, or be merely
fortuitous.
(7)
"Employee," for the purposes of this rule, refers to
faculty, staff, and volunteers of the university regardless of any compensation
paid or the amount of hours worked. This includes any visiting
scholars/researchers who are working or studying within the university and
students who are paid for rendering services.
(8)
"Intellectual
property (IP)" refers to any and all rights resulting from endeavors of the
mind including those that protect the application and/or expression of ideas,
inventions, creations, works, developments, improvements products, processes,
procedures, techniques, devices, software, designs, materials and compositions
of matter, as well as the embodiments of all such rights, whether in tangible
or intangible form, including but not limited to, those items specifically
referred to in the definition of confidential information. Intellectual
property rights may be protected under federal law under patents, trademarks,
service marks, copyrights, and trade secrets.
(9)
"Innovation"
refers to a new model, idea, or product. A useful application of new inventions
or discoveries.
(10)
"Invention" refers to, but is not limited to, products,
methods, or uses, even if not patentable.
(11)
"Inventor"
refers to one who, alone or with others, first invents a new and useful
process, machine, composition of matter, or other patentable subject matter. An
Inventor conceived of, not just contributed to the reduction-to-practice, of at
least one claim to a patent.
(12)
"Manufactured"
refers to all manufactured articles.
(13)
"Net income"
refers to gross income from royalties or other payments, such as option
payments received by university, minus any fees or costs directly attributable
to the invention being licensed. Examples of such direct fees are patent filing
fees, fees for patent searches, legal advice, consulting fees, fees arising out
of litigation, necessary travel, marketing costs, and maintenance fees.
Indirect university overhead and other costs normally associated with the
operation of the university shall not be deducted from gross royalties or
otherwise allocated to costs or fees associated with the
invention.
(14)
"Patent" refers to the grant of a property right to the
inventor issued by the united states patent and trademark office. Generally,
the term of a new patent is twenty years (fifteen years for design patents)
from the date on which the application for the patent was filed in the United
States, subject to the payment of maintenance fees. U.S. patent grants are
effective only within the United States, U.S. territories, and U.S.
possessions. The right conferred by the patent is the right to exclude others
from making, using, or selling the invention (as defined in the patent
claims).
(15)
"Publication" refers to a published article or abstract
in a technical journal, bulletin, newspaper, textbook, or any other tangible
medium which gives sufficient information about the discovery or invention to
permit one skilled in the art to practice the invention.
(16)
"Software"
refers to computer instructions, data, and accompanying documentation. To be
patent-eligible, software must perform features that are novel and proprietary.
Computing code itself isn't patentable; the patent application must be directed
to the process of execution of the software code on a computer. This is
commonly referred to as a "software-implemented invention."
(17)
"Trade secret"
refers to 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 the public or to other
persons who can obtain economic value from its disclosure or use, and is the
subject of efforts that are reasonable under the circumstances to maintain its
secrecy.
(18)
"Unobvious" refers to a characteristic that is not
obvious to a person having ordinary skill in the art to which said subject
matter pertains.
(19)
"Work made for hire" refers to a specific type of
relationship in which ownership of the work belongs to a third party, not the
creator of the work. Under this rule, there are two situations in which a work
made for hire is produced; when the work is created by an employee as part of
the employee's duties and when work is undertaken or created because of an
express written agreement, such as a grant or sponsored research agreement, to
the university. When a work is produced under these conditions, the university
or the party sponsoring the work is considered the owner. A faculty member's
general obligation to produce scholarly works does not constitute a specific
responsibility as set forth in this definition.
(D) Body of the rule
(1)
General
considerations
(a)
The university education and research missions are
preeminent over that of the transfer and commercialization of research
results.
(b)
The university is committed to active engagement and
support of innovation, technology development, and entrepreneurial activities
through the efficient and effective deployment of its resources for the
betterment of society and the generation of unrestricted revenue to support its
mission.
(c)
University resources may be used for non-university
purposes so long as they are appropriately serving the public interest. Any
such use must conform to university rule and be set forth in appropriate
agreements between the parties.
(d)
The university
will respect the intellectual property of its partners and
collaborators.
(e)
When the university owns intellectual property under
this rule, the inventor or creator may play an active role in the entire
licensing process unless such participation is inconsistent with
conflict-of-interest regulations or university rules.
(2)
Patents
(a)
Under this rule and in accordance with section
3345.14 of the Revised Code, all
rights to and interests in patents that result from research or investigation
conducted in any experiment station, bureau, laboratory, research facility, or
other facility of the university, or by employees acting within the scope of
their employment or with funding, equipment, or infrastructure provided by or
through the university, shall be the sole property of the
university.
(b)
No person, firm, association, corporation, or
governmental agency which uses the facilities of the university in connection
with such research or investigation and no employee of the university
participating in or making such discoveries or inventions shall have any rights
to or interests in such discoveries or inventions, including income therefrom,
except as may, by determination of the university's board of trustees, be
assigned, licensed, transferred, or paid to such persons or entities in
accordance with the terms of this rule.
(c)
The board has
delegated to the president of the university, unless the president is an
inventor of the invention, the authority on behalf of the board of trustees, to
retain, assign, license, transfer, sell, or otherwise dispose of, in whole or
in part and upon such terms as the board of trustees has set forth in this
rule, or may otherwise direct from time to time. Such dispositions may be to
any individual, firm, association, corporation, or governmental agency, or to
any employee, as the president or in the case where the president is an
inventor, the board of trustees may direct. All income or proceeds derived or
retained from such dispositions shall be applied to the general or special use
of the university as determined by the board of trustees.
(d)
The university
has established these rules within the scope of academic freedom, consistent
with its goal to provide incentives and institutional support to those
employees whose research and scholarly activities lead to discoveries,
innovations, or inventions, or that might be patented for societal use and to
provide for equitable distribution of income resulting from discoveries,
innovations, and inventions between the university and the
inventor.
(3)
Publications
It is well understood that publication of research results is an essential part of the activity of a university researcher. While this rule recognizes this need, the timing of the publication of research results can be of critical importance when considering patent activity. Failure to take timely steps to patent can result in a possible reduction in, or the entire loss of, adequate patent protection in the United States or abroad.
The safest course is to file a United States patent application before any public use, publication, disclosure or sale of the invention occurs. There is a period of one year from the date of publication to file an application for a United States patent; however, in most foreign countries, the publication itself bars valid patent protection with no grace period.
(4)
Government grants under the Bayh-Dole Act or Patent and
Trademark Law Amendments Act, Pub. L. 96-517, (1980).
The university generally can obtain title to inventions and patents arising under United States government contracts/grants, subject to certain rights reserved by the government, if invention reporting requirements and formalities are followed.
(5)
Technology commercialization activity
Inventions disclosed to the university will be evaluated to determine scientific and technical merit, the likelihood of patentability or other protection, the potential for societal benefit, market potential, barriers to market, and other criteria concerning commercialization potential.
(6)
Rights and
obligations of the parties
(a)
In accordance with section
3345.14 of the Revised Code,
unless otherwise modified by contract, all rights, title and interest in
discoveries or inventions made by employees, as defined herein, shall be the
sole property of the university. Rights to inventions arising during government
sponsored research must be assigned to the to protect the government's interest
against competing claims. Inventions arising from privately sponsored research
must be assigned to the university unless otherwise agreed to in writing at the
time the research commences. The university is required to report federally
sponsored research discoveries to the federal government.
(b)
Inventor rights
and obligations
(i)
Confidential disclosure of the invention to the general
counsel must precede an inventor's public disclosure, publication of
information concerning a discovery, innovation, or invention. Once a discovery,
innovation, or invention is reduced to practice, an invention disclosure form
shall be promptly submitted by the inventor to the general counsel. The
invention disclosure form is available through the office of general counsel
and on the university website.
(ii)
The university
requires that researchers maintain adequate laboratory notebooks documenting
critical information about the discovery or invention. Notebooks and other
materials pertaining to research activities leading to a patent application are
the property of university and will remain at university even after termination
of employment.
(iii)
The inventor shall assign title to the invention,
discovery, or innovation to university.
(iv)
The inventor
shall cooperate in the following:
(a)
Executing applications and legal
documents;
(b)
Any litigation arising out of the patent application;
and
(c)
Reasonable marketing efforts related to the discovery
or invention.
(v)
The inventor has a right to receive a share of any
royalties or licensing fees received for the discovery, invention, or
innovation according to the schedule contained in paragraph (D)(10) of this
rule.
(vi)
If the general counsel and the vice president for
research recommend that university surrender all rights in the discovery or
invention, and the president agrees that this recommendation is in the best
interests of the university, the president will have the authority to surrender
the rights of the university with respect to the discovery, invention, or
innovation unless the president is an inventor, in which case, the board must
approve the surrender. After surrender, the inventor shall have the option to
pursue a patent application in the inventor's own name at the inventor's
expense, in which case, any royalties or licensing fees received would be the
sole property of the inventor; however, the inventor will reimburse the
university for its out of pocket expenses, if any, and grant to university a
royalty-free, irrevocable, perpetual, non-exclusive license to make and use the
invention for its own research and educational purposes.
(vii)
The inventor
has a right to timely publication of his or her findings as required by the
principles of academic freedom, subject to the university's right to protect
its interest in the intellectual property.
(7)
The
university's rights and obligations
(a)
The university has the sole right to license, sell,
assign, or otherwise dispose of the rights to discoveries, innovations, or
inventions that are owned by or have been assigned to
university.
(b)
The university shall timely determine whether it
chooses to retain or assign title, submit to an external source for evaluation
of patentability, file a patent application, or surrender title to the
inventor.
(c)
Should the university choose to file a patent
application, it shall file, in a timely manner, any documentation necessary to
prosecute a patent and shall pay all filing fees, maintenance fees, attorney
fees, and other costs related to prosecuting and maintaining the patent. These
costs will be recovered by the university before any payments are made in
accordance with this rule.
(8)
Administration
The general counsel and the vice president for research shall have overall responsibility for administration of the university's patent program, including assuring valuable property rights are not lost. Specific responsibilities shall be to:
(a)
Function as
points of contact and resources with regard to this rule and
procedure;
(b)
Receive reports of all discoveries or inventions that
are subject to this rule;
(c)
Conduct or cause to be conducted due diligence studies
to determine patentability, market potential, barriers to market, and other
criteria deemed necessary to determine commercial potential;
(d)
Act upon the due
diligence conducted to promote the interests of the university and to the
extent appropriate to the university inventors.
(9)
The general
counsel and the vice president for research may utilize university funds to
engage appropriate consultants and legal and business professionals to evaluate
all discoveries and inventions disclosed to university for potential
patentability and commercialization. These reports will be sent directly to the
general counsel and will be protected from disclosure under attorney-client
work product.
(10)
Income, including royalties and other payments
(a)
For all
inventions for which the university receives royalties or other payments, the
net income will normally be distributed as follows:
(i)
Fifty per cent to
the inventor(s);
(ii)
Ten per cent to the inventor's
department(s);
(iii)
Twenty per cent to the university research office;
and
(iv)
Twenty per cent to the technology transfer
office.
(b)
All monies received by the departments, the university
research office, or university technology transfer office are considered
university funds and will be administered in accordance with established
accounting policies and procedures.
(c)
If multiple
inventors are involved, the royalties as specified in this rule shall be
distributed equally among the parties set forth in paragraph (D)(10)(a) of this
rule unless a written proposal for an alternate distribution is jointly
presented by the inventors and approved by the general counsel and the vice
president for research.
(d)
The inventor shall not receive the specified share of
royalties when the inventor is no longer affiliated with the university unless
otherwise agreed to, in writing, by the university and the inventor at the time
the inventor leaves the university it is the responsibility of the inventor to
notify the general counsel in writing of the inventor's address. In the event
of the inventor's death, royalties due and payable under this rule will be paid
to the inventor's estate for the remainder of the royalty period if the person
responsible for the administration of the estate provides written authority and
instructions from a court of competent jurisdiction concerning the payments.
The inventor's department(s) shall continue to receive the royalties specified
in this rule as long as the inventor is affiliated with said department. Should
the inventor leave the department or the university, all departmental royalties
shall become the sole property of university and will be shared equally by the
university research office and technology transfer office, unless otherwise
agreed to in writing.
(11)
Research
agreements between collaborators and industry involving patent rights
It is not uncommon for university employees to receive awards to conduct research funded by private industry. It is also not uncommon for employees to conduct research in cooperation with colleagues at other institutions. The university recognizes that to continue these relationships, it must be willing to consider a variety of contractual terms and conditions. To protect traditional academic freedom, assist employees in evaluating proposals, and protect university's interest in discoveries, innovations, or inventions, the following policies shall apply to these external relationships:
(a)
All written agreements with private industry or with
other institutions utilizing university resources to conduct research must
first be reviewed by the general counsel and the vice president for research.
The general counsel and the vice president for research will only approve those
agreements which assure that the rights of the university are appropriately
protected.
(b)
In dealing with inventions that are conceived or
developed during research sponsored by a third party and/or pursuant to an
agreement with another institution, the university will abide by the terms of
the agreement with that third party. Where an option exists, the university
will seek agreements and contracts, or waivers thereof, that will allow patent
rights to remain with university.
(c)
University will
not waive the right to publish results of research. University will only agree
to delay publication for reasonable periods of time so appropriate action can
be taken to protect patentable discoveries or inventions. In agreeing to delay
publication for a reasonable period, university will not agree to delays that
effectively inhibit a student's timely completion of a course or degree or
impair a faculty member's application for promotion or tenure.
(d)
Title to all
documents, records, biological materials, software, databases, notebooks, and
other repositories of information from research shall be held by university
unless otherwise provided for in a written agreement with the private research
sponsor. Those materials must remain at university should the inventor's
employment at university be terminated for any reason unless specifically
authorized by the university.
(e)
The university
will agree that confidential information remains the property of private
industry and will agree to protect the trade secrets of third- party research
sponsors. Written agreements with the third party must clearly define what
information is proprietary in nature. Trade secrets will be kept confidential
and will not be subject to disclosure under the provisions of section
149.43 of the Revised Code. If a
request for such information is received, the university will notify the owner
of the confidential information of the request and mutually agree to the
appropriate response.
(12)
Visiting
scholars and researchers
(a)
For the purposes of this rule, visiting scholars and
researchers will be treated as employees (as defined in this rule) and are
required to adhere to the provisions of the visiting scholar/researcher
agreement, which is available through the office of general
counsel.
(b)
The faculty member hosting the visiting
scholar/researcher is responsible for, and expected to, ensure the
following:
(i)
The visiting scholar/researcher agreement has been properly
executed with the office of general counsel;
(ii)
That a copy of
this rule has been provided to the visiting scholar/researcher;
and
(iii)
That all departments have been properly notified of
visiting scholar/researcher's presence at the university.
(13)
Copyright
(a)
For the purposes of copyright, the university seeks the
following:
(i)
To maximize academic freedom and creative expression for the
public good;
(ii)
To preserve traditional academic practices and
privileges with respect to the publication of scholarly works;
(iii)
To apply
uniform principles and procedures that provide allocation of income resulting
from commercial publication;
(iv)
To apply funds
accruing to university from copyrighted materials to advance and encourage
scholarly endeavor;
(v)
To disavow any claims by university in an individual's
copyrightable work simply because of the individual's membership in the
university community; and
(vi)
To protect
university's assets and preserve its reputation of excellence.
(b)
Copyright ownership
(i)
The university
encourages scholarly and creative activity by faculty, students, and staff.
These activities include the production of works resulting from academic
research or scholarly study. Authors of copyrightable works may register the
copyrights and publish the works as their own except for works made for hire,
those where a direct and significant amount of university resources have been
used in the creation of the work, or any other work covered by an agreement to
the contrary.
(ii)
Personal copyrights
Works by a university employee that are not works for hire, do not use a direct and significant amount of university resources, and are not subject to a grant or sponsorship agreement to the contrary are the property of the employee.
In the case of a dispute concerning copyright ownership the general counsel will review information concerning the work with the employee's department chair or supervisor, and in consultation with the vice president for research, make a recommendation to the president. The president's decision will be final.
The university will retain title to all copyrighted software developed by, or substantially with, university resources unless prior written waiver of university rights is issued.
(iii)
The
following notice is to appear on all university-owned material:
Copyright © (year) Northeast Ohio medical university
Rootstown, Ohio. All rights reserved.
The date in the notice should be the year in which the work was first fixed in any tangible mode of expression.
(iv)
The general rule of the university is to register only
those of its works that have the potential for royalty return. University
copyright ownership may be relinquished only upon the authorization of the vice
president for research and the general counsel, who are authorized by the board
to surrender such rights if they believe it is in the best interest of the
university to do so. If such rights are relinquished, the university will
retain a non-exclusive, royalty-free license to use these
works.
(v)
Sponsored works
The disposition of copyrights of works created with support from an outside sponsor shall be governed by an agreement.
(c)
Rule
administration
The general counsel with the vice president for research will:
(i)
Determine, promote and protect the rights of the
university in any copyrightable works created or to be created with university
resources;
(ii)
Develop and approve agreements for the use of
university resources in the creation of copyrightable works;
(iii)
Distribute
royalties to the author or others as set forth in pertinent agreements.
Replaces: 3349-20-50
Disclaimer: These regulations may not be the most recent version. Ohio may have more current or accurate information. We make no warranties or guarantees about the accuracy, completeness, or adequacy of the information contained on this site or the information linked to on the state site. Please check official sources.
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