10/19/2017 update · Web viewOffice of University Compliance and Integrity 21 E. 11th Ave Columbus, OH 43201 compliance.osu.edu Intellectual Property University Policy Applies to:

Office of University Compliance and Integrity21 E. 11th Ave

Columbus, OH 43201

compliance.osu.edupolicies.osu.edu

10/19/2017 update

The comment period for the Intellectual Property policy has closed.

The policy continues through the university policy process and will be reviewed by theUniversity Policy Review Committee (UPRC) on November 9th.

The Request for Feedback, Summary of Changes, and the Proposed Revised Draft follow.

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Columbus, OH 43201


MEMORANDUM – UNIVERSITY POLICIES

TO: President’s Cabinet Alex Wesaw, Council of Graduate StudentsVice Provosts Sara Adelman, Inter-Professional CouncilSenior Management Council Andrew Jackson, Undergraduate Student GovernmentCouncil of Deans All faculty members (via University Senate) Department ChairsSenior Fiscal OfficersSenior Human Resource ProfessionalsBlaine Lilly, Sharon Schweikhart, Mike Hogan, Faculty LeadersElizabeth Gordon-Canlas, Tom Gessells, Megan Hasting, Nikole Prete, University Staff Advisory Comm.

FROM: Kim Potter, Policy and Training Director, Office of University Compliance and IntegrityAlexandra Schimmer, Associate Vice President and Deputy General Counsel, Office of Legal AffairsBen Givens, Secretary, University SenateGuy Rub, Chair, University Senate Committee on Intellectual Property, Patents, and Copyrights

DATE: September 21, 2017

SUBJECT: University Policy Process Request for Feedback on a Business and Finance draft revised policy: Intellectual Property

In accordance with the University Policy Process, we are soliciting your feedback on the draft revised Intellectual Property policy (currently Patents and Copyrights) which has a target effective date of April 15, 2018. Your feedback is valued and will be considered as the policy is finalized. We need to receive your feedback by October 18, 2017 at [email protected].

A memorandum from the IPPC is included (pp. 3-9) which provides the Committee’s account of the revision process and the proposed changes it entails. This memorandum is not intended to be a dispositive interpretation of the proposed policy language. While it represents the committee’s interpretation of the proposed revised policy, if your reading of the proposed revised policy differs from that described in the memorandum, please do not hesitate to bring that to our attention along with any other feedback you have on the proposed revised policy.

The proposed revised policy is included (pp. 10-19) and also available on the University Policy Website at: policies.osu.edu under the ‘Policies Under Review’ tab. The current policy is available at: tco.osu.edu/wp-content/uploads/2013/09/PatentCopyrightPolicy.pdf. While we usually provide a “redline” that compares the existing policy to the proposed revision, creating such a redline is not feasible in this case. The revisions suggested by the proposed revised policy are too significant to make a redline helpful.

The policy revision was drafted by the University Senate Committee on Intellectual Property, Patents, and Copyrights (IPPC), in consultation with the Technology Commercialization Office and Office of Legal Affairs. Individuals from the Office of Research and Office of University Compliance and Integrity were also consulted during the revision process.

Because the current policy was last revised in 1989, the proposed revised policy is nearly a complete re-write. While the IPPC memorandum provides additional context, the following is a high-level list of the major changes from the current policy to this proposed revision:

Clarifies the rights of faculty members with respect to their scholarship, instructional works, and artistic works. Addresses the rights of software creators. Revises the process for the commercialization of inventions, discoveries, and patents. Addresses the rights of staff members with respect to their intellectual creation. Adjusts the royalties-sharing mechanism. Establishes a dispute resolution mechanism.

If you have any questions about the content of the policy, please contact: Guy Rub, Chair, Committee on Intellectual Property, Patents, and Copyrights, 614-688-5819, [email protected] Michael Steffensmeier, Legal Affairs, 614-292-6482, [email protected] McNair, Technology Commercialization Office, 614-688.1624, [email protected]

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mailto:[email protected]



http://tco.osu.edu/wp-content/uploads/2013/09/PatentCopyrightPolicy.pdf

http://policies.osu.edu/



Columbus, OH 43201


If you have questions about the University Policy Process, please contact:Kim Potter, University Compliance and Integrity, 614-292-8728, [email protected] Krystal Reeb, University Compliance and Integrity, 614-292-6585, [email protected] Schimmer, Legal Affairs, 614-292-0582, [email protected]

Copies:Geoff Chatas, Business and FinanceBruce McPheron, Academic AffairsGates Garrity-Rokous, University Compliance and IntegrityChris Glaros, University Compliance and IntegrityMatt McNair, Technology Commercialization OfficeMichael Steffensmeier, Office of Legal AffairsAssistants to members of President’s Cabinet and Senior Management CouncilUniversity Policy Review CommitteeUniversity Senate Committee on Intellectual Property, Patents, and Copyright

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ADDENDUM TO INTELLECTUAL PROPERTY POLICY REVISION FEEDBACK REQUEST

From

:

Guy A. Rub, Chair, Committee on Intellectual Property, Patents, and Copyright on behalf of the committee

EXECUTIVE SUMMARY

For the past three years the Committee on Intellectual Property, Patents, and Copyrights (IPPC) has been drafting a proposed revised intellectual property policy for the university, its faculty, staff, and students. At this stage, the committee is soliciting feedback and comments from other members of the OSU community. This memorandum explains the history of the revision process, the main changes that are introduced by the proposed revised policy, and the steps going forward.

We hope that the proposed revised policy will foster collaboration across campus, strengthen academic freedom, improve commercialization, and support the university academic mission. The main changes introduced by the proposed revised policy include:

Clarifying and strengthening the rights of faculty members with respect to their scholarship, instructional works, and artistic works. This includes removing certain limitations to faculty ownership. As part of that change, the proposed revised policy clarifies that instructional works—those works that were created for teaching—belong to the faculty-creator (something that is in doubt under the current policy), subject to a limited temporary license to the university.

Providing extensive rights to software creators. Those rights are not part of the current policy. Under the proposed revised policy they will include exclusive right to use and commercialize software for scholarly, instructional, and artistic purposes. In addition, faculty-creators will be allowed to distribute the software for free if they wish to do so.

Setting forth a robust process for the commercialization of inventions, discoveries, and patents. This collaborative process will include periodic updates by the university’s Technology Commercialization Office (TCO) to the inventors and in some extreme circumstances, it will allow those inventors to receive full rights over their inventions and their commercialization.

Authorizing a process that would allow some staff members—whose responsibilities and activities resemble those of faculty members—to be given rights in their intellectual creation.

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Establishing a more generous royalties sharing mechanism, under which creators whose works belong to the university will get a greater share of the income they generate.

Forming a dispute resolution mechanism, including the possibility of bringing certain issues before the IPPC for further consideration.

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THE REVISION PROCESS

The Ohio State University’s current policy on Patents and Copyrights1

is decades-old. Since 2014 the University Senate Committee on Intellectual Property, Patents, and Copyrights (IPPC) was charged with revising that policy.

IPPC is a standing university senate committee. The committee represents various stakeholders with respect to the intellectual property that is created on campus. The committee consists of four tenured faculty, two probationary tenure-track faculty, two non-tenure track faculty, one graduate student chosen by the Council of Graduate Students, the Vice President for Economic and Corporate Engagement, and the Senior Vice President for Research. In addition, other members of the university community regularly attend the committee’s meetings, including representatives of the university’s Technology Commercialization Office (TCO) and the university’s Office of Legal Affairs. More information on the committee can be found here: http://senate.osu.edu/?page_id=5187.

The committee started the revision process in the 2014-2015 academic year, under the leadership of Professor Yael Vodovotz. That year-long process concluded in a draft policy that was circulated broadly to the university community for comments. That draft received dozens of comments. The following year, academic year 2015-2016, the committee, under the leadership of Professor Jim Fowler, decided to abandon the 2015 draft and draft a new policy. In addition, the committee decided to initially focus on drafting a new patent policy. The drafting process was completed in January 2016 but the separate draft patent policy was not enacted. Later, the committee started to draft a copyright policy and it circulated an initial draft of that policy to the university community in May 2016.

During the 2016-2017 academic year, the committee, under the leadership of Professor Kristi Williams, redrafted a copyright policy and merged it with the newly drafted patent policy. The merged draft policy was unanimously approved by the committee and it was submitted to the Office of University Compliance and Integrity. That office edited the draft policy to make sure it is consistent with the format of other university policies. That edited version, which was further revised and unanimously approved by the committee, is in front of you for feedback.

While the committee represents many stakeholders it, of course, cannot include all of them and it is possible that it overlooked certain issues that might be obvious and pertinent to other stakeholders. The committee therefore now asks members of the OSU community for feedback, comments, and suggestions. The committee promises to carefully consider any response it receives.

1 That policy can be found here: https://tco.osu.edu/wp-content/uploads/2013/09/PatentCopyrightPolicy.pdf.

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https://tco.osu.edu/wp-content/uploads/2013/09/PatentCopyrightPolicy.pdf

The next steps in this process depend on the feedback the committee receives. After the committee considers that feedback and revises the draft policy accordingly, it will decide whether to progress to the next stages. If the committee decides to proceed, the draft will proceed through the remaining stages of the university policy process and be forwarded to other bodies within the university, including the Faculty Council, the President’s Cabinet, and the University Senate, for their review. The proposed revised policy, if reviewed and endorsed/approved by those bodies, will then be presented to the Board of Trustees for their final approval. It is our hope that this process will conclude and a revised policy will be in effect before the end of this academic year.

CHANGES IN THE PROPOSED REVISED POLICY

This memorandum does not and cannot list and explain all the differences between the current policy and the proposed revised policy. Instead, it introduces just some of the main revisions. Most of those changes have to do with the rights and obligations of faculty and this memorandum will, therefore, focus on those rights. The end of this memorandum addresses the relatively modest changes in the rights of staff members and students.

FACULTY RIGHTS WITH RESPECT TO COPYRIGHTED WORKS

The proposed revised policy clarifies, and possibly changes, some of the rights of faculty with respect to the copyrighted works they create. Those clarifications and changes are consistent with customary notions regarding the ownership of such works, and in particular, with the well-established tradition of letting faculty members own the copyright for the bulk of their creation.

Rights in traditional (non-software) works

The ownership of certain copyrighted materials can be unclear under the current policy. The current policy states that “copyrights in textbooks, monographs, papers, musical compositions, works of art, unpublished manuscripts, and the like will be the sole and exclusive property of the faculty creator.” There are various issues with this statement. First, the list seems to be limited in nature. For example, it ignores works that faculty members create purely for teaching, such as slides, class notes, exercises, and videos. Not listing such materials as belonging to the faculty creators might suggest that the university is their owner. That last view was expressed by some in the committee meetings.

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In addition, the current policy limits the faculty ownership over “textbooks, monographs, papers” etc. when they are “part of a Sponsored Program or of specifically assigned duties of a faculty member” and in some cases if they were created “with more than insignificant use of facilities or equipment provided by the University,” for example if “the use of such University facilities, equipment, or other resources is substantially in excess of the norm for educational purposes.”

The committee was determined to clarify that faculty members are provided with robust rights over their academic creation and that those rights are not subject to vague standards. For many in the committee, the issue of faculty ownership of their creation is a matter of academic freedom that is crucial to the university academic mission.

The proposed revised policy strengthens the faculty ownership and control over copyrighted works through several changes. First, the faculty ownership extends to all “Scholarly Works,” “Instructional Works,” and “Artistic Works.” Those terms include many examples—such as articles, monographs, textbooks, slides, novels, illustrations, and more—but they are not limited to those examples and are designed to be read broadly. Importantly, unlike the current policy, the proposed revised policy makes clear that Instructional Works, such as exercises and class notes, belong to their faculty creators.

Second, the faculty ownership is not subject to the same type of vague limitations. Many committee members believed that those limitations on ownership under the current policy are unclear and are not needed. Therefore, after long discussions, the committee decided that the proposed revised policy will not tie the faculty ownership of copyrighted works to the use or lack-of-use of university resources. In other words, faculty members cannot be denied ownership just because they used “substantial university resources.” In addition, the ambiguous notion of “specific assigned duties,” which limits the faculty ownership under the current policy, was deleted. Thus, ownership will not depend on the “specific assigned duties” of the faculty member.

Third, while the proposed revised policy deviates from the current policy by not directly limiting faculty ownership interest by the mere existence of “a Sponsored Program,” it adopts what can be called “a contractual approach.” The proposed revised policy allows the university to enter specific written agreements with faculty members that might set forth different arrangements with respect to intellectual property rights. In addition, faculty members will be bound by agreements with third parties, if they know or should have known about them. The most common of such agreements are those that govern sponsored research. In other words, when faculty members are knowingly working on sponsored research, it is quite likely that they will be bound by a sponsorship agreement that will limit their rights with respect to the product of that research. The value in this approach is that when faculty members are not working under such agreements they can be sure of their copyright ownership.

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Fourth, some procedural guarantees that do not exist under the current policy are provided to creators of copyrighted goods. Those include a more generous royalty payment scheme in those cases in which the university owns the copyright to the work, as well as the availability of appeal process through the IPPC. Those mechanisms apply to all works and not just copyrighted work and are discussed at the end of this memorandum.

Finally, the proposed revised policy addresses the internal use of instructional works. Members of the university community raised concerns regarding the ability to use instructional works by others. Specifically, the university sometimes needs to find instructors to teach existing courses in short notice and denying those instructors access to materials that were created by previous instructors can be burdensome to the university and the instructors and harmful to students. To address those concerns, the university, under the proposed revised policy, will be granted a license that would allow it to use those materials. The license is limited: it lasts only for a year after the creator leaves the university and it allows the university to use the materials only for teaching on campus and for administrative purposes. In addition, the license expires as soon as the materials are available for purchase on the market. In other words, this license does not allow the university to have free access to commercially available materials. Those will need to be purchased by the university if it wishes to use them.

Rights in software

Software presents difficult questions. On one hand, software is a medium of academic expression, and for some it is the main way to distribute their scholarship. Software is also used for instructing students and as artistic manifestation. Therefore, it seems reasonable that the proposed revised policy will grant the same set of rights to all those who create scholarship, instructional works, and artistic works whether or not they publish it in the form of software or otherwise. On the other hand, in many cases, software has significant commercial potential. Moreover, it is not uncommon that software that is produced in academic institutes has commercial potential that has relatively little to do with scholarship, instructing students, or artistic expression. More traditional forms of creativity typically do not show similar potential.

The current policy’s treatment of software is partial and unsatisfactory. The current policy states that “computer software prepared primarily for instructional use, and therefore similar to textbooks, shall be treated as textbooks” and it seems to imply that all other software belongs to the university.

The proposed revised policy takes a different approach. First, with respect to patentable inventions, software is not treated differently than any other inventions. In other words, patentable software, like any other patentable inventions, will typically initially belong to the university. We expect those cases to be relatively rare because software is seldom

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patentable and is more commonly protected by other forms of intellectual property rights, in particular copyright.

When it comes to copyright, under the proposed revised policy the rights in the software will depend on its use. Any use for scholarly, instructional, or artistic purposes will be exclusively controlled by the faculty creator. For example, the faculty-creators, and only faculty-creators, can include their created software in their scholarship. Commercial (for-profit) use of software is also the exclusive right of the faculty-creator, as long as that use is scholarly, instructional, or artistic. For example, only the faculty-creator can commercialize software for instructional purposes. The university has the right to pursue other forms of commercialization of software.

In addition, the faculty-creator is allowed to license any use of the software if the faculty member is not being paid for that license. This would allow faculty members to release their software on open software platforms under appropriate licenses, such as the GPL, if (and only if) they wish to do so. Finally, as with any other form of intellectual property, the university and the faculty-creator are allowed to enter agreements that would set forth different arrangements. For example, it is quite possible that if faculty members would like the TCO to assist in the commercialization of software they created, the TCO will require them to refrain from releasing the software on open platforms.

Rights in Inventions, Discoveries, and Patentable Technologies

The proposed revised policy does not change the core principles regarding ownership of inventions, discoveries, and patentable technologies. Under the proposed revised policy, inventions that were created by university employees within the scope of their employment or with more than insignificant use of university resources will belong to the university. The proposed revised policy, unlike the current policy, clarifies the term “insignificant use of university resources”. It makes clear that if, for example, professors sporadically use their office phone in connection with an invention that is outside of the scope of their employment, the invention will be theirs. On the other hand, if professors use a university laboratory to create an invention, that invention will belong to the university, even if not within the scope of the professors’ employment.

While the core principles regarding ownership of inventions did not materially change, the procedures of commercialization, and the central role of inventors in that process were clarified and revised. Indeed, the proposed revised policy provides inventors with more meaningful rights throughout the commercialization process. Spelling out certain aspects of the commercialization process and the role of the inventors were designed to address the concerns of some faculty members and inventors and to cultivate a more collaborative and smooth commercialization process. It was the committee impression that the TCO is eager to foster an effective and

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efficient two-way process and the committee trusts other members of the OSU community to do the same.

Specifically, the proposed revised policy, like the existing policy, requires inventors to disclose certain inventions to the TCO although the proposed revised policy limits that disclosure to IP with commercial value as well as IP that must be disclosed pursuant to an obligation to a third party, such as a sponsorship agreement. Unlike the current policy, the proposed revised policy provides inventors with significant rights following such a disclosure. Those rights include regular updates by the TCO, and even rights, in unusual cases, to be assigned the IP and commercialize it independently of the TCO, if the TCO does not decide on commercialization within a reasonable time. The committee hopes that these mechanisms will encourage transparency and collaboration between inventors and the TCO.

In addition, the proposed revised policy includes a more generous royalty sharing scheme as well as a new dispute resolutions mechanism. Those are discussed separately at the end of this memorandum.

Rights of non-faculty

While staff members are treated like faculty with respect to inventions, the rights of staff in the copyrighted works they create is a complicated matter. The university employs thousands of staff members, and they significantly vary in their responsibilities, independence, expectations, skills, and more. Coming up with a policy that is sensitive to those differences is challenging.

Under the current policy, every work that is created by staff members within the scope of their employment belongs to the university.

By default the proposed revised policy adopts a similar approach. However, the proposed revised policy acknowledges that some members of the OSU community that are technically staff have responsibilities that are quite similar to those of faculty members and therefore it would be unfair and inadvisable to treat them like other staff members and in particular to deny them rights in the copyrighted works they create. Therefore, under the proposed revised policy the TCO will set forth a procedure under which units will be able to, together with the TCO, let those staff members have more control over their creation. This will allow the university to create flexible arrangements that would properly address the various needs of different members of our community.

The proposed revised policy does not significantly change the rights of students with respect to the intellectual property they create. Under the current policy and the revised one, students are granted broad rights. There are minor differences however. The current policy suggests that in some cases, for example when working on Sponsored Research or when using significant university resources, the work created might belong to the university. Under the proposed revised policy, students will own the

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copyright for the work they create regardless of the use of university resources. Inventions might be owned by the university under certain circumstances, like Sponsored Research. However, the proposed revised policy adds that the university must notify students in writing in advance of its intention to own such inventions.

Other procedural rights

In addition to the above-mentioned revisions, the proposed revised policy includes several additional noteworthy changes that apply to all forms of intellectual property.

First, the royalty sharing mechanism was revised to provide more generous compensation to creators whose works and inventions belong to the university. Under the current policy, the creator is entitled to 50% of the first $75,000 of royalties that the work generates and, subject to deduction of certain expenses, 1/3 thereafter. Under the proposed revised policy, the creator is entitled to 50% of the first $100,000 of income and 1/3 thereafter. The royalty sharing mechanism applies to all form of intellectual property that is owned by the university, but it is exceptionally important to inventors, as their creation typically belongs to the university.

Second, a separate royalty sharing mechanism was created in connection with technology access fees that are received in connection with sponsored research. Those fixed fees are paid by the university’s industry partners that are sponsoring a certain research project for potential intellectual property rights before any intellectual property is created. The fees are typically kept by the university even if no intellectual property is eventually created. The committee believes that the researchers involved in such sponsored research should receive a share of those fees, but that the distribution of that share should not be limited or determined by those who created intellectual property (even if intellectual property is created). Furthermore, the committee does not believe it is prudent for the committee to develop detailed rules for the distribution of those fees. It would be exceptionally challenging to develop a scheme that would be flexible enough to account for all the various research projects that are expected to take place by the university in years to come. Instead, the revised proposed policy envisions a process under which the primary investigators of any such sponsored research project will propose a distribution scheme for those fees that will take into account the specific circumstances of their unique project. Such distribution schemes will need to be approved by the Office of Research.

Third, a dispute resolution mechanism was added to the proposed policy. It is unavoidable that parts of the proposed revised policy will need to be interpreted in the future. Close calls regarding the rights of faculty, staff, students, and the university will need to be made. Those situations might leave members of our community unsatisfied with those decisions that were made and actions that were taken. The committee hopes and expects that

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the vast majority of those situations will be handled directly and informally among the parties involved, if needed, with the assistance of the Office of Academic Affairs and/or the Office of Legal Affairs. If, however, the informal process fails, any unsatisfied party may bring the matter before the IPPC. IPPC will then inquire into the issue and will submit its recommendations to the senior vice president for business and finance and to the provost. Those recommendations as well as the senior vice president or provost decisions will be made public and will guide future decisions of the TCO and IPPC.

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Intellectual PropertyUniversity Policy

Applies to: Faculty, staff, students

Responsible Office Office of Business and Finance

POLICY Issued: 05/03/1985Target Revision Date: 04/15/2018

The university encourages faculty, staff, and students to engage in the creation and dissemination of knowledge, including works of authorship, discoveries, inventions, patents, and tangible property that can serve the public through open academic exchange and commercial development. The university is committed to creating a culture and infrastructure that nurtures these activities and highlights the capacity of its faculty, staff, and students to contribute to society. The university recognizes the importance of intellectual freedom and autonomy of faculty, staff, and students.

Purpose of the PolicyThe purpose of The Ohio State University is to advance the well-being of the people of Ohio and the global community through the creation and dissemination of knowledge. This policy establishes rules regarding the ownership, distribution, and commercialization of intellectual property created by university faculty, staff, and students

Table of Contents

POLICY..................................................................................................................................................................................1Purpose of the Policy.........................................................................................................................................................1Table of Contents..............................................................................................................................................................1Definitions.........................................................................................................................................................................1Policy Details.....................................................................................................................................................................3

PROCEDURE........................................................................................................................................................................6Responsibilities..................................................................................................................................................................9Resources...........................................................................................................................................................................9Contacts...........................................................................................................................................................................10History.............................................................................................................................................................................10

DefinitionsTerm DefinitionArtistic work Works created primarily for their artistic value. Such works may include, but are not limited to,

plays, poems, novels, paintings, illustrations, sculptures, and musical compositions.

Copyrighted materials

Works protected by copyright, authored by the university, its faculty, staff, and students, provided, that for purpose of this policy copyrighted materials will not include inventions.

Creator Creator(s) may be faculty, staff, or students.(a) With respect to copyrighted materials, creator means the author, as the term is defined

under U.S. copyright law, provided that if the author is the university as the employer of an individual creator(s), then, for the purpose of this policy, the creator(s) will be that individual(s) who would have been considered the author(s) if he or she was not performing the work within the scope of employment.

(b) With respect to inventions that are eligible for patent protection, as well as know-how and any other inventions related to such inventions that are eligible for patent protection,

The Ohio State University – University Policies policies.osu.edu Page 14 of 22


Term Definitioncreator means any inventor, as the term is construed under U.S. patent law.

(c) With respect to tangible research property, creator means any individual who has taken part (a) in the conception of the idea of the specific tangible research property that is to be made and/or (b) substantially in making the tangible research property but only when making the tangible research property was not a routine or known practice. A person will not be considered a creator of a new tangible research property solely because of providing materials to be used to produce the new tangible research property.

(d) With respect to any other intellectual property, creator means any individual who provided substantive and substantial intellectual contribution to the creation of an intellectual property.

Direct expenses Costs, expenses, taxes, and losses paid or incurred by the university or on its behalf that are directly attributable to the intellectual property being transferred, commercialized, or exploited, or relating to the creation, preservation, marketing, licensing, and legal protection of such IP, and the costs, including taxes, to acquire, manage, transfer, or liquidate equity to be used for the transference, commercialization, or exploitation of such intellectual property.

Gross proceeds All cash received from the transfer, commercialization, or other exploitation of intellectual property including, but not limited to, royalties, option fees, license fees, reimbursement of expenses, and/or cash from dividends or distributions on, or the sale or liquidation of, equity. In the case of sponsored research the cash or other consideration received by the university from the sponsor of such research to do the research, except for royalties for intellectual property, will not be considered part of the gross proceeds. TAF proceeds will not be considered part of the gross proceeds. Unless an agreement pursuant to section II under Policy Details provides otherwise, the proceeds received from the commercialization of the intellectual property created in sponsored research, except for any TAF proceeds, will be part of the gross proceeds.

Instructional works Works created primarily for the instruction of students. Such works may include, but are not limited to, slides and presentation content to be used in class, class notes, exercises and class assignments, syllabi, and examinations.

Intellectual Property

All inventions and copyrighted materials.

Inventions All discoveries, inventions, and patents covered by Ohio Revised Code §3345.14(B), as well as tangible research property.

Net Proceeds Gross proceeds less direct expenses.

Ohio State Innovation Foundation (OSIF)

A 501(c)(3) organization, formed in 2013 by the university to manage intellectual property developed at or created by the university and to facilitate the commercialization of such intellectual property. OSIF shall include any successive entity to Ohio State Innovation Foundation.

Ohio State Proceeds

The amount of net proceeds received by the university directly or as a distribution from the OSIF.

Researcher Any university faculty, staff, or student involved in the performance of a research project for which TAF proceeds are received.

Scholarly works Works created primarily to express and preserve scholarship as evidence of academic advancement or academic accomplishment. Such works may include, but are not limited to, scholarly publications, journal articles, research bulletins, monographs, books including textbooks, and electronic-books.

Software The source code and/or object code of computer applications and subroutine libraries. Software, for the purposes of this policy, does not include other works in the form of computer software including computer-generated works of art or music or the content of other forms of works, such as traditional scholarship, that is recorded in a software medium.

Sponsored Research

Research projects that are supported by funding provided in response to a request or proposal to a government or industrial sponsor, or by specific deliverables in a grant from a funding entity, including a research or other activity undertaken by the university or one of its units that is subject to specific written obligations to another party.

TAF proceeds Any non-refundable, fixed upfront or fixed delayed fees (including related option fees), such as



Term Definitiontechnology access fees, paid by a sponsor of sponsored research in addition to the research project funding that entitles the sponsor to rights in intellectual property arising under university’s performance of such sponsored research project.

Tangible Research Property

Research results that are in a tangible form as distinct from intangible property. Examples of tangible property include, but are not limited to, cell lines; data; human, animal, and plant tissue; transgenic animals; antibodies; biological organisms; and integrated circuits. Tangible mediums of expression in which copyrighted materials are fixed, including, but not limited to, books, copies of articles, and music sheets are explicitly excluded and will not be considered tangible research property.

University IP All Intellectual Property owned by the university, pursuant to this policy.

Policy DetailsI. This policy is subject to all effective laws including federal and Ohio law, and in particular Ohio Revised Code

§3345.14. II. Conflicting agreements:

A. Notwithstanding any other provision in this policy to the contrary, nothing in the policy will be construed to limit the university from entering into specific written agreements with any faculty, staff, or student or with any third party (including in connection with sponsored research) that will specify different terms regarding the ownership, distribution, and commercialization of intellectual property. Provided that the creator knew, or should have known, of the existence of such an agreement prior to creating the intellectual property, or that the creator is a party to such an agreement, then if any term in such an agreement conflicts with any term of this policy, the term of the agreement will govern.

B. Nothing in the policy will be construed to limit the university from entering into agreements with respect to the commercialization of the university IP. Subject to subsection A, those agreements would not undermine the university’s obligations under this policy, and in particular, the arrangements set forth in section VII.

III. With the exception of specific written agreements to the contrary (see section II above), and without limiting the general disclosure obligations (see section I.C under Procedure below) nothing in this policy shall be interpreted to prevent any faculty, staff, or student from sharing the results of her or his or her research and other academic activities with others, including by publishing those results. Faculty, staff, and students should however be aware that under certain circumstances disclosure can jeopardize the ability to secure a patent for an invention and they are therefore advised to consult with the Technology Commercialization Office (TCO) prior to such public disclosure.

IV. Ownership of inventions. Subject to the terms of section II.A aboveA. All rights, title, and interests in inventions are the sole property of the university. The university hereby

assigns to the creator(s) every invention:1. developed by faculty or staff acting outside of the scope of their employment provided that such

intellectual property was developed with no more than insignificant use of university resources, or2. developed by a student, provided that such intellectual property is not owned by the university pursuant

to subsection C and was not developed by a student who is an employee within the scope of such student’s employment or with more than insignificant use of university resources.

B. Insignificant use of university resources includes, but is not limited to, de minimis use of the following: university network and email system, office space, libraries and their resources, traditional desktop and laptop personal computers and software that is traditionally installed thereon. Insignificant use of university resources shall not include the use of:1. other university employees or students in developing, testing, or distributing the inventions, or2. university laboratories or equipment besides the computers referenced to above in this subsection.

C. Inventions developed by non-employee students are owned by the university when the student created the inventions as part of a sponsored research project, special program or a course (e.g., a capstone project or a design laboratory or project), provided that the university notified the student in writing of its intent to own such inventions prior to its development. Such written notification can be published in any reasonable way including as part of the policies or rules of the unit with which the student is affiliated or in the syllabus or other written notifications published in connection with the special program or course in which the invention is to be developed. Except for the foregoing, but subject to subsection A, all other inventions created by a



student are the property of the student. Every student hereby grants the university a perpetual, worldwide, nonexclusive, royalty-free license to use any inventions created as part of the requirements for a university degree program for administrative purposes, such as assessment of a work, accreditation purpose, and to prevent fabrication, falsification, and plagiarism.

V. Ownership of copyrighted materials. Subject to the terms of section II.A above:A. It is the intent of this policy that all copyrights in instructional works, scholarly works, and artistic works

whose creator is a faculty member, except for software, shall remain with their creators. The university hereby assigns any of its copyrights in such works, insofar as it exists, to their creators. Such works will not be deemed university IP under this policy. The copyright in all other copyrighted materials whose creators are faculty members that were created within the scope of the creators’ employment belong to the university.

B. The university hereby grants every creator of software that is not eligible for patent protection who is a faculty member a perpetual, exclusive, worldwide, sublicensable, royalty-free license to use the software for any scholarly, instructional, and artistic purpose, and a perpetual, nonexclusive, worldwide, royalty-free license to allow others, for no consideration, to use the software, subject to terms and conditions determined by the creator. Without limiting the foregoing, the university may require faculty members to agree to limits on their rights under those licenses as a condition for commercialization of the software.

C. Each creator who is a faculty member hereby grants the university a nonexclusive, worldwide, royalty-free license to use every instructional work used for the instructions of Ohio State University students. Such a license is limited to use within the university’s programs of teaching on the university’s campus as well for administrative purposes such as accreditation. The license with respect to each instructional work expires at the earliest of (i) that work becoming reasonably and in good faith available on the market and (ii) one year after the creator ceases to be an employee of the university.

D. Copyright of works whose creators are staff created within the scope of their employment is owned by the university. However, the university acknowledges that a limited number of staff members have certain prerogatives to set their own research, scholarly, instructional, artistic, or creative tasks and in certain circumstances personal ownership of copyright arising from these professional endeavors would be appropriate. The TCO will establish procedures to allow unit heads and deans to submit an application to the TCO to request that the university assign copyright of specific works or classes of works to their staff-creator. TCO, in consultation with the relevant head of unit or dean may grant, deny, or modify such requests. Post-doctoral research employees will have the same rights in copyrighted materials they create in their capacity as post-doctoral research employees that faculty have.

E. Copyright in copyrighted materials whose creator is a non-employee student or whose creator is a student employee that are not within the scope of the student’s employment, remains with the creator. The university hereby assigns any of its copyrights in such works, insofar as it exists, to their creators. Such works will not be deemed university IP under this policy. Every student hereby grants the university a perpetual, worldwide, nonexclusive, royalty-free license to use such copyrighted materials in any way for administrative purposes, such as assessment of the work, accreditation purpose, and to prevent fabrication, falsification, and plagiarism. In addition, the university may require a student to provide a single copy of their thesis or dissertation for non-commercial library use.

F. If a copyrighted material has multiple creators, the right of each creator will be determined separately according to the provision on this section V, and those creators will hold the work as joint owners. For example, if a manuscript is created jointly by a faculty member, a staff member, and a non-employee student then subsection A will dictate whether the faculty member or the university will own, as a joint owner, a third of the work, subsection D will dictate whether the staff member or the university will own, as a joint owner, another third of the work, and subsection E will dictate whether the non-employee student or the university will own, as a joint owner, another third of the work.

VI. Faculty, staff, and students are bound by this policy by accepting or continuing university employment or by using university resources or facilities and hereby irrevocably assign all rights, title, and interests in the university IP to the university.

VII. Proceeds DistributionA. For university IP transferred to OSIF for which OSIF receives gross proceeds, net proceeds will be

distributed as follows:1. For net proceeds up to $100,000, OSIF will retain 50% of the net proceeds and will distribute the

remaining 50% of the net proceeds to the university as Ohio State proceeds for distribution to creators



pursuant to subsection B.1. The retention of 50% of the net proceeds by OSIF under this subsection A.1. will be used to cover unreimbursed patent expenses.

2. When net proceeds exceed $100,000, the first $100,000 will be distributed in accordance subsection A.1, and any portion of the net proceeds beyond the first $100,000 will be distributed as follows: 15% of these net proceeds will be retained by OSIF and 85% of these net proceeds will be distributed to the university as Ohio State proceeds pursuant to subsection B.2.

B. Ohio State proceeds received as a distribution from OSIF will be distributed as follows:1. For Ohio State proceeds up to $50,000, the creator(s) will receive 100% of these Ohio State proceeds.2. When Ohio State proceeds received as a distribution from OSIF exceed $50,000, the first $50,000 will

be distributed in accordance with subsection B.1. and any portion of the Ohio State proceeds beyond the initial $50,000 will be distributed as follows:a. 40% to the creator(s), b. 20% to the university, and c. 40% to the creators’ colleges, departments, and centers, according to instructions and policies

established by the provost. C. Ohio State proceeds received by the university directly will be distributed as follows:

1. For Ohio State proceeds up to $100,000, the creator(s) will receive 50% of these Ohio State proceeds and TCO will receive 50% of these Ohio State proceeds.

2. Any portion of these Ohio State proceeds beyond the initial $100,000 will be distributed as follows:a. 34% to the creator(s), b. 33% to the university, and c. 33% to the creators’ colleges, departments, and centers, according to instructions and policies

established by the provost. D. TAF proceeds will be distributed as follows:

1. For TAF proceeds up to $100,000, the researchers will receive, in accordance with subsection D.3 and D.4, 50% of these TAF proceeds, and TCO will receive 50% of these TAF proceeds.

2. Any portion of these TAF proceeds beyond the initial $100,000 will be distributed as follows:a. 34% to the researchers, in accordance to subsections D.3 and D.4. b. 33% to the university, and c. 33% to the researchers’ colleges, departments, and centers, according to instructions and policies

established by the provost. 3. The primary investigator(s) of the research project for which TAF proceeds are to be received or that

were received can propose to the Office of Research a distribution plan for the researchers’ share of these proceeds. Such a distribution plan should be created at the commencement of the research project and communicated to the researchers who are identified by it. The distribution plan may include details such as what portion of the researchers’ share each researcher will be granted, if any, when distributions to the researchers will be made, and whether the portions may or may not be adjusted according to actual contribution of the researchers. The distribution plan will need to be approved by the Office of Research, which may develop, in consultation with the IPPC and TCO, guidelines for the review and approval of such distribution plans.

4. The researchers’ share will be distributed only after a distribution plan, pursuant to subsection D.3, is approved by the Office of Research and according to the approved plan. If no such distribution plan is approved before the completion of the research project, the researchers’ share will be distributed equally among all researchers who provided substantive and substantial intellectual contribution to the research project, unless all those researchers agree in writing to a different distribution.

E. In case of more than one creator of the university IP, the creators will equally share the creators’ share under subsection B, unless all the creators agree in writing to a different distribution of the creators’ share. For the avoidance of doubt, a subset of the creators can agree in writing among themselves to have a different distribution of their own share.

F. When multiple Intellectual Property assets are licensed or otherwise commercialized under a single agreement, TCO, after consulting with the creator(s), shall reasonably determine and designate the share of Ohio State proceeds to each intellectual property asset.

G. When there are no identifiable creator(s) of tangible research property, the portion of the Ohio State proceeds distributable under subsections B and C to creator(s) will be distributed instead to the colleges, departments, and centers that obtained the tangible research property, according to guidelines established,



in consultation with the IPPC and TCO, by the Office of Research. When multiple colleges, departments, and/or centers are involved in obtaining the tangible research property, the Ohio State proceeds will be divided equally among these units, unless otherwise specified by the guidelines established by the Office of Research.

H. Notwithstanding the other provisions in this policy, for licensed plant varieties, proceeds will be distributed pursuant to Special Circular 178-01 entitled “OSU-OARDC Plant Germplasm Release Guidelines and Practices – Policy for Royalty Distribution Associated with Plant Varieties.”

I. Creator(s) and researcher(s) will be entitled to receive a share of the Ohio State proceeds and TAF proceeds as provided by this policy even if their status vis-à-vis the university changes, including, for example, after their employment or program of study was terminated or completed. Following a change in the university IP policy, the creator(s) will be entitled to receive, with respect to any distribution made after such a change, the greatest of (i) the share of the net proceeds as provided by the university policy at the time the intellectual property was disclosed and (ii) the share of the net proceeds as provided by the university policy at the time the distribution is made. Following a change in the university IP policy, the researcher(s) will be entitled to receive, with respect to any distribution made after such a change, the greatest of (i) the share of the TAF proceeds as provided by the university policy at the time the research project for which the TAF Proceeds were received commenced and (ii) the share of the TAF proceeds as provided by the university policy at the time the distribution is made. For the avoidance of doubt, creator(s) and researcher(s) will not be entitled to receive any additional distribution or any other compensation with respect to distributions that were made prior to such a change in the policy.

J. Nothing in this policy is intended to limit the transferability of rights of creators or researchers to their heirs and assigns. Without limiting the foregoing, the distribution of proceeds to creators and researchers under this section VII shall be made to creators and researchers, their heirs and assigns, as applicable.

PROCEDUREIssued: 05/03/1985Target Revision Date: 04/15/2018

I. Intellectual Property Evaluation, Protection, and Dissemination A. The senior vice president for business and finance and the provost will be in charge of the implementation of

this policy on behalf of the university. All or a portion of the administration of activities with respect to this policy, except with respect to the responsibilities to administer disputes as set forth in section II below, may be delegated to other university officials. In consultation with the senior vice president for business and finance, the provost, the committee on Intellectual Property, Patents, and Copyrights (IPPC), and the vice president of research, the vice president responsible for TCO operations will establish operational guidelines and procedures, subject to the terms of this policy, for the administration of university IP, including but not limited to determination of ownership, assignment, protection, licensing, marketing, maintenance of records, and oversight of revenue collection.

B. In all its decisions pursuant to this policy TCO will strive to reasonably (i) advance the well-being of the people of Ohio and the global community by supporting the creation and dissemination of knowledge, and (ii) maximize the commercial value of university IP. Without limiting the foregoing, TCO will:1. facilitate evaluation of university IP, and such evaluation shall include consideration of the market for

such university IP and the competitive market landscape;2. identify potential commercial partners for university IP. This may include using multiple networks of

contacts, including those made available from the creator(s), alumni, and other sources;3. negotiate agreements, licensing or otherwise, in connection to the commercialization of university IP;

and4. take any other actions reasonably necessary to facilitate the commercialization of university IP.

C. The university trusts faculty, staff, and students to participate throughout the intellectual property creation and preservation process. All university IP with commercial value, or otherwise required to be disclosed pursuant to an obligation to a third party (such as obligations in connection with sponsored research arrangements), must be promptly disclosed in writing by the creator(s) to TCO, using a disclosure form.1. The disclosure must:

a. provide a full and complete description of the university IP;



b. describe the funding sources used in development of such university IP; and c. identify all persons participating in the creation and development of the university IP.

2. Upon reasonable request from TCO, the creator(s) will furnish any additional reasonable information, including the know-how related to the invention or discovery, and will execute documents in connection with the university IP, such as assignments and declarations.

3. Faculty, staff, and students may ask the TCO to verify that pursuant to this policy a specific intellectual property is not university IP or that it is available for a certain specific use.

D. Upon receipt by TCO of a disclosure form as described in subsection C, the case will be assigned to a TCO representative. The assigned representative will facilitate evaluation of the intellectual property with respect to patentability, commercial potential, and obligations to sponsors or other third parties. This process will include:1. a discussion with the creator(s) led by the TCO representative;2. a search of prior art, if necessary. The TCO representative may reasonably request that the creator(s)

participate in such search; and3. determination of whether intellectual property protection, and in particular patent protection, should be

pursued, taking into consideration, among other things, commercial potential. Although patent protection is sometimes sought for various noncommercial reasons, such as professional status, the university will not seek protection for university IP, including patent protection, that is not deemed to have commercial potential (even if the university IP is intellectually meritorious), unless such protection (i) is requested by the sponsor of sponsored research and such sponsor pays for such protection, or (ii) is authorized by the senior vice president for business and finance or the provost, at their sole discretion.

4. The evaluation of the commercial potential will be based upon, among other things, patentability, scope of potential patent coverage, size of market, competition, and potential market share.

E. TCO will regularly update the creator(s) on the status of the university IP disclosed by such creator(s):1. TCO will provide the first status update within three months of receiving the disclosure form and a

second status update within six months of the date of receipt of a disclosure form. Such status updates will include, but not be limited to, any filing decisions regarding Intellectual Property protection or transfer of the university IP.

2. TCO will provide a detailed summary of substantive decisions regarding protection, commercialization, and/or transfer of intellectual property promptly after those decisions are made.

F. In some cases university IP will be assigned to its creator(s).1. Under the following circumstances, creator(s) will be allowed to require (subject to any third party

approvals required, e.g., approval of a federal funding agency) assignment, free of charge, of university IP to them, and TCO will promptly effect such assignment:a. If the creators(s) provide TCO with evidence of a concrete potential commercialization partner for

the university IP, such as a potential licensee thereof, and TCO does not complete, in good faith, its review and determination of the university’s interest in such opportunity within six months.

b. If the university IP may reasonably be protected by a patent, and TCO does not complete, in good faith, its review and determination of the university’s interest in such university IP, within six months of TCO becoming aware of a public disclosure of such university IP. Public disclosure under this section includes any disclosure that will make the university IP ineligible for patent protection in the United States, unless patent application is filed within one year of such disclosure.

c. If TCO does not complete, in good faith, its review and determination of the university’s interest in such university IP, within twelve months of receipt of a disclosure form.

2. The assignment of university IP under subsection F.1 will be subject to the following:a. The TCO may reasonably delay, and in extreme cases deny, a request pursuant to subsection F.1 if

the creator’s disclosure pursuant to subsection C lacks material details in bad faith or if the creator failed to cooperate in good faith with TCO’s reasonable requests.

b. The creator who is assigned the university IP pursuant to subsection F.1 will grant the university a perpetual, worldwide, nonexclusive, royalty-free license limited to non-commercial use of such intellectual property.

c. The assignment of university IP to the creator pursuant to subsection F.1 will not affect any other obligations of the creator, including the obligation of disclosure and cooperation, set forth in subsection C, with respect to any other university IP.



3. TCO is encouraged to cause assignment to creator(s) any university IP which, in TCO’s discretion, is not currently commercialized by the university or on its behalf and that is not expected to be commercialized by the university or on its behalf in the foreseeable future, unless such assignment would have an adverse impact on the ability to commercialize other university IP or such assignment cannot be legally made for any reason (e.g., a required third party approval was not secured). The university and OSIF may place terms on such assignment including requiring, at TCO’s discretion, payment in consideration for such assignment.

4. In case of multiple creators, the university or OSIF will assign the intellectual property to all creators according to this subsection F as joint owners, unless all creators agree in writing to a different arrangement. Except for assignment to the creator(s) according to this subsection F (or an assignment from the university to OSIF), TCO will not assign the university IP for no consideration.

G. University employees engaged in external consulting work or business, and those charged with approving such activities, are responsible for ensuring that agreements with external entities are not in conflict with this policy; any other university policy, including the Faculty Paid External Consulting policy and the Conflict of Interest and Work Outside the university policy; or the university’s contractual commitments.

II. Policy Interpretation and Dispute ResolutionA. This policy and its implementation may require interpretation and review. University constituents (such as

creator(s), employees, and TCO) should make every attempt to resolve disputes informally among themselves and, if needed, with the assistance of the Office of Academic Affairs and/or the Office of Legal Affairs.

B. If informal processes and consultation do not provide resolution of a dispute regarding this policy, the following actions may be taken:1. Any person or entity directly affected by decisions or actions of any other person or entity in connection

with this policy, may appeal such decisions or actions to the IPPC if such person or entity (hereby, the claimant) believes such decisions or actions are inconsistent with this policy.

2. The claimant will submit the complaint in writing to the chair of the IPPC, who will determine whether the claimant has made a reasonable effort to resolve the dispute informally and whether the substance of the dispute appears to be within the scope of the IPPC’s review authority under this policy.

3. Proceedings will be informal, but all parties will have adequate notice and an opportunity to be heard. The IPPC may establish additional procedures for resolving such disputes, and may designate a sub-committee of its members for such procedures.

4. After considering all relevant information and within 30 days of receipt of the complaint, the IPPC will prepare and send to the senior vice president for business and finance and the provost a report of its findings on the issues raised by the complaint and any corrective actions it recommends, within the scope of this policy.

5. Within 30 days of receipt of the IPPC report, the senior vice president for business and finance and the provost will review the IPPC report and make a final decision on behalf of the university and provide this decision to all the parties involved and the IPPC.

6. IPPC will publish its reports (after removing relevant information, if needed for addressing reasonable privacy or secrecy concerns) and the decisions of the senior vice president for business and finance or the provost. The publication should be reasonably accessible to the university community and preferably be available online. Those reports and decisions will guide future actions and decisions by the TCO and IPPC.

III. Policy Review and RevisionsA. IPPC shall maintain this policy. IPPC shall review all proposed changes to this policy, and shall have the

power to initiate its own proposed changes to this policy. The chair of IPPC shall be a member of the policy writing group for any revisions to this policy. Revisions to this policy shall be promulgated through the university policy process and then recommended to faculty council and the university senate. All revisions to this policy must be approved by the faculty council and the university senate, in addition to the other approvals required by the university policy process.

IV. This policy replaces the existing “Policy on Patents and Copyrights”.



Responsibilities Position or Office ResponsibilitiesCreator(s) [Language to be added after feedback is integrated to summarize overarching responsibilities listed above

for each individual or group with responsibilities designated within the policy.]

Employees engaged in external consulting

IPPC

IPPC Chair

Provost

Sponsor

Senior vice president for business and finance (SVP-B&F)

Technology Commercialization Office (TCO)

Unit heads and deans

Vice president responsible for the technology commercialization office

Resources [More resources to be added after feedback is integrated. Resources will be hyperlinked]Disclosure form Ohio Revised Code §3345.14, codes.ohio.gov/orc/3345.14OSU-OARDC Plant Germplasm Release Guidelines and Practices Special Circular 178-01,

Royalty Distribution Associated with Licensed Plant VarietiesCommittee on Intellectual Property, Patents, and Copyrights

ContactsSubject Office Telephone E-mail/URL[To be added prior to policy finalization]

The committee on Intellectual Property, Patents, and Copyrights (IPPC)

614-292-2423 [email protected] senate.osu.edu

[To be added prior to policy finalization]

Technology Commercialization Office 614-292-1315 [email protected]

HistoryIssued: 05/13/1985 Approved by BOT, 05/03/1985, Resolution #85-117, Issued as Patents and CopyrightsRevised: 05/04/1989 Approved by BOT, 05/04/1989, Resolution #89-97Target Revision Date: 04/15/2018 Approved by BOT, xx/xx/xxxx. Resolution #xx-xx, Renamed Intellectual Property


http://www.tco.osu.edu/


http://www.xxx.osu.edu/xxx



Documents

10/19/2017 update · Web viewOffice of University Compliance and Integrity 21 E. 11th Ave Columbus, OH 43201 compliance.osu.edu Intellectual Property University Policy Applies to: