6.5 Intellectual Property

6.5

Intellectual Property

Proposed: August 31, 2016

Effective: September 30, 2016

Section 1.            Purpose

Section 2.           Definitions

Section 3.           Policy Details

Section 4.           Procedures

Section 5.           Responsibilities

Appendix A.      Intellectual Property Disclosure Form

Section 1. PURPOSE

Middle Georgia State University (MGA) is dedicated to scholarship that enhances the region through professional leadership, innovative partnerships and community engagement, particularly through applied research and experiential learning. Such scholarship entails the production of new knowledge and the dissemination of knowledge.

Inherent in these objectives is the need to encourage contributions to the various arts, the development of new and useful devices and processes, the publication of scholarly works, and the development of computer software. Such activities contribute to the professional development of the individual, enhance the reputation of the University, provide additional educational opportunities for participating students, and promote the general welfare of the public at large. The dissemination of intellectual property is integral to the purpose and mission of the University.

The purpose of the MGA Intellectual Property (IP) Policy is to encourage and recognize research and innovation by members of the University community, clarify ownership and intellectual property rights, and create opportunities for public use of University innovations. This policy provides for a fair and consistent procedure for defining IP rights. The circumstances under which IP is created determine ownership rights to such property. This policy establishes the procedure for disclosure, determination of interests, and management of intellectual property, and recognizes the rights of the creators while safeguarding the rights of the University.

The University recognizes and encourages the publication of scholarly works as an integral part of its mission. The University acknowledges the rights held by individuals who publish articles, pamphlets, books, and other works created through individual effort and initiative that are protected by copyright. The University also recognizes that some publications may result from work supported, either partially or completely, by the University. Generally while the University retains the right to intellectual property developed at the University, it releases rights in scholarly works, as such are defined in this policy, to the creators of such works.

Patentable inventions may come about because of the activities of faculty, staff, or students who have been aided, wholly or in part, through the use of the University’s resources and/or through the course of their employment by the University. It becomes significant, therefore, to ensure the utilization of such intellectual property for the public good and to expedite its development and marketing.

The MGA Intellectual Property Policy serves to clarify the circumstances under which intellectual property ownership resides with the creator or with the University.

 

Section 2. DEFINITIONS

Term Definition
Copyrighted

Materials

Term shall include the following: (1) books, journal articles, texts, glossaries, bibliographies, study guides, laboratory manuals, syllabi, tests, and proposals; (2) lectures, musical or dramatic compositions, unpublished scripts; (3) films, filmstrips, charts, transparencies, and other visual aids; (4) video and audio tapes or cassettes; (5) live video and audio broadcasts; (6) programmed instructional materials; (7) Mask Works; and (8) Software and other subject matter or works which qualify for protection under the copyright laws of the United States (see 17 U.S.C. § 102 et seq.) or other protective statutes whether or not registered there under.
Course Material Term shall include course syllabi, tests, course assignments, lectures, lecture notes, and other materials prepared by the instructor of a course at Middle Georgia State University for the purpose of course instruction or evaluation.
Creator Defines as the individual or group of individuals who authored, or were otherwise responsible for the production of the Intellectual Property.
Intellectual

Property (IP)

Term shall be deemed to refer to Patentable Inventions, Biological Materials, Copyrighted Materials, Software, and Trade Secrets, whether or not formal protection is sought. Trademarks are specifically excluded from this definition.
Patentable

Inventions

Term shall be defined as subject matter (a new, nonobvious, useful process, machine, manufacture, composition of matter or improvement thereof) which reasonably appears to qualify for protection under the patent laws of the United States or other protective statutes.
Scholarly Work Term shall be defined as books, articles and other publications, artistic creations, literary manuscripts, visual and auditory creations, and musical works, irrespective of their medium of storage or presentation. The former items are meant to include Software, computer programs, and databases but only if they are accessory to or part of a scholarly text. Textbooks and related Software developed as a Specific University Assignment are not considered Scholarly Work for the purpose of this definition.
Significant Use of University Resources Term shall be defined as the use of University resources that is over and above the normal usage of library resources, secretarial help, word processing equipment, or other support services. Prior to the completion of the creation of Intellectual Property, or as early as possible in the creation of Intellectual Property, the Creator shall seek a determination of whether this definition applies to the Intellectual Property by fully and openly disclosing the facts surrounding the creation of Intellectual Property to the Creator’s Department Chair or Director who shall issue a written opinion. The Creator may appeal this decision, in writing, to the Provost or VP over his/her division.
Software Term shall be defined as one or more computer programs existing in any form, or any associated operational procedures, manuals or other documentation, whether or not protectable or protected by patent or copyright. The term “computer program” shall mean a set of instructions, statements or related data that, in actual or modified form, is capable of causing a computer or computer system to perform specified functions.
Specific University Assignment Term shall be defined as Intellectual Property specifically ordered or commissioned pursuant to a written, signed agreement between the University and Creator.
Trademarks Term shall be defined as all trademarks, service marks, trade names, seals, symbols, designs, slogans, or logotypes developed by or associated with the University. (See 15 U.S.C. § 1127.)
Trade Secrets Term shall be defined as information including, but not limited to, technical or nontechnical data, a formula, a pattern, a compilation, a program, a device, a method, a technique, a drawing, a process, financial data, financial plans, product plans, or a list of actual or potential customers or suppliers which: (1) derives economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and (2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. (See O.C.G.A. § 10-1-761.)

 

Section 3. POLICY DETAILS

This policy addresses both individual and University intellectual property rights, and applies to all persons creating intellectual property at Middle Georgia State University. The policy applies to students and all University employees, including but not limited to, faculty and staff. The policy also extends to persons receiving compensation or funding from the University, or funds administered by the University, and volunteers or other persons performing research on campus using University resources, such as visiting scholars.

 

Rights and Equities in Intellectual Property

Pursuant to Board of Regents Policy 6.3.3, ownership in Intellectual Property will be determined in accordance with the following categories of creation:

 

  • Individual Effort: Ownership rights to Intellectual Property developed by faculty, staff, or students of the University shall reside with the inventor or creator of such Intellectual Property provided that:
    • There is no use, except in a purely incidental way, of University resources in the creation of such Intellectual Property, unless such resources are available without charge to the public.
    • The Intellectual Property is not prepared in accordance with the terms of a University contract or grant.
    • The Intellectual Property is not developed by faculty, staff or students as a specific University assignment. The general obligation to produce scholarly and creative works does not constitute a specific assignment for this purpose. The nature and extent of the use of University resources shall be subject to University regulations and shall be determined by the University.

It shall be the responsibility of the Creator to disclose Intellectual Property to the University, through his/her Department or Office, and demonstrate that this classification applies, which is in accordance with the Disclosure Section of this Policy.

  • Sponsor-Supported Effort: The grant or contract between the sponsor and the University, under which Intellectual Property is produced, may contain specific provisions with respect to disposition of rights to these materials. The sponsor may:
    • Specify that the materials be placed in the public domain;
    • Claim reproduction, license-free use, or other rights; or,
    • Assign all rights to the University. In those cases where royalty income is realized by the University, the inventor or creator may appropriately share in the royalty income. The nature and extent of inventor or creator participation in royalty income, however, shall be subject to sponsor and University regulations.
  • University-Assigned Effort: Ownership rights to Intellectual Property developed as a result of a Specific University Assignment shall reside with the University.
  • University-Assisted Effort: Ownership rights to Intellectual Property developed by individuals with Significant Use of University Resources shall reside with the University.
  • Other Effort: Ownership rights to Intellectual Property developed under any circumstances other than those listed in the Rights and Equities in Intellectual Property section (A-D) of this policy shall be determined on an individual basis in consultation with the Intellectual Property Committee, and approved by the Provost and Executive VP for Finance and Operations.

 

Disclosure

Individuals covered by this policy must:

  1. Disclose to the Intellectual Property Committee fully, and in a timely manner, all Intellectual Property, excluding Scholarly Work as delineated under Individual Effort, above, and Course Material. Disclosure is initiated by the submission of an Intellectual Property Disclosure Form to the Department Chair or Unit Director.
  2. Treat intellectual property in a manner that is consistent with laws regarding Trade Secrets.
  3. As creators, execute such declarations, assignments, or other documents as may be necessary in the course of evaluating and protecting the ownership rights of intellectual property to ensure that tile in such property shall be held by the University, or by such other parties as may be appropriate under the circumstances.

 

Intellectual Property Committee

The Intellectual Property Committee, appointed by the President, shall consist of no fewer than three (3) or more than nine (9) members, one of whom shall be designated by the president to serve as chair. In each case the committee shall include a representative of the Office of Finance & Operations. The committee shall meet as necessary, and shall act in an advisory capacity to the President or his/her designee. The committee shall recommend to the President or his/her designee the rights and equities in intellectual property created by faculty, staff, or students of the University.

In the implementation of its policies and procedures, the University may elect, through its Intellectual Property committee and with the approval of the President or his/her designee, to:

  1. Develop and manage a licensing program for intellectual property;
  2. Seek patent and trademark protections through filings with the US Patent and Trademark Office; and/or
  3. Release intellectual property to which the University has title or an interest to the inventor or creator for management and development as a private venture after the execution of an agreement providing for a suitable division of royalty income.

 

Investment in Business Entity

A Creator who holds an investment in a business entity that intends to license and commercialize University owned Intellectual Property shall disclose his/her investor status and obtain the written approval of the Creator’s Department Chair, Dean, and Provost or Office Director, Vice President, and Executive VP for Finance and Operations before the Intellectual Property is licensed. A Creator is encouraged to limit his/her role in such business entity to that of scientific or technical founder, member of a scientific advisory board, or consultant. A Creator is discouraged from serving on such entity’s Board of Directors or as an officer. When necessary, a Creator may assume such roles upon the written approval of the applicable administrators. A Creator who holds an investment in an entity shall not negotiate nor attempt to influence the licensing terms between the University and such entity, unless the University consents.

Before a Creator may accept sponsorship from an entity that has licensed Intellectual Property developed by the Creator, the Creator must fully disclose the existence of the license, the research proposal, statement of work, budget, and other details to the Creator’s Department Chair, Dean, and Provost or Office Director, Vice President, and Executive VP for Finance and Operations, and obtain approval from each.

 

Publication

Nothing in this Policy shall be construed as affecting the rights of a Creator to publish the results of scientific work, except that the Creator must agree to observe a period of delay in publication or external dissemination if the University so requests, and such a delay is necessary to permit the University to secure protection for Intellectual Property disclosed to it by the Creator.

 

Copyrights and Fair Use

When using Copyrighted Materials, as described above, students, faculty, and staff of Middle Georgia State University must respect Creator rights and abide by standards of fair use.

Fair use is a concept embedded in Title 17, section 107 of U.S. law that recognizes that certain uses of copyright-protected works do not require permission from the copyright holder. Under this section fair use is determined by four factors:

  1. The purpose of the use (e.g. commercial vs. educational)*
  2. The nature of the copyrighted work
  3. The amount of the material used (the greater the amount copied, the less likely it is fair use)
  4. The effect of use on the potential market for or value of the work

* Not all uses in an academic context are automatically considered fair use!

The Fair Use Doctrine is probably the most important exemption to copyright protections for educational settings, allowing many uses of copyrighted works for the purposes of teaching and research. The complexity of fair use and its importance in academia make it imperative that every member of the University community understands how to make judgements concerning fair use.

An overview of fair use from Standford’s Copyright & Fair Use site.

From the U.S. Copyright Office

From the Copyright Crash Course at the University of Texas

Explanation of the four factors in determining fair use, from the University of Minnesota University Libraries.

Best practices for fair use by discipline from the Center for Social Media

A downloadable Fair Use check list for the University System of Georgia. When using the Fair Use Checklist you should use one checklist for each usage instance and keep a copy of each for your records.

From the Association of Research Libraries; Center for Social Media, School of Communication, American University; and the Program on Information Justice and Intellectual Property, Washington College of Law, American University.

Information on making fair uses of images in scholarly works.

If you have questions regarding fair use, please consult the University Library and/or send them to University Counsel at legalaffairs@mga.edu.

 

Trademark Licensing

The University reserves the right to trademark any logo or mark depicting the institution and/or its programs, whether academic, co-curricular or athletic. Any unit wishing to use the university marks or identity must follow the Brand Identity Guidelines. The University has engaged Learfield Licensing to run its licensing program. For questions regarding licensing, units should contact Auxiliary Services, which serves as primary point of contact for our licensing company.

 

Prevailing Policy

In the event of a conflict between the Middle Georgia State University Intellectual Property Policy and any policy of the Board of Regents of the University System of Georgia, the latter shall prevail. In the event of a conflict between the Middle Georgia State University Intellectual Property Policy and a grant or contract to the University the latter shall prevail.

 

Heirs and Assigns

The provisions of this Policy shall inure to the benefit of and be binding upon the heirs and assigns of those individuals covered by this Policy.

 

Changes in Policy

This Policy will be reviewed and amended, as appropriate, by the Intellectual Property Committee. This Policy may be changed by the President, on the recommendation of the Intellectual Property Committee, and the approval of the appropriate committee of the Faculty Senate.

 

Compliance

Failure by a Creator to comply with the provisions of this Policy, including the Disclosure requirements of this Policy, is a violation and may result in legal action and discipline of an individual in accordance with applicable University policies and procedures. Failure by a Creator to comply with the provisions of this Policy may also violate the terms and conditions of a funding grant or contract with a third party.

 

Section 4. PROCEDURES

 

Administrative Procedures

Once the Intellectual Property Committee has received the Intellectual Property Disclosure Form from the Creator, the University’s interest in patenting and/or licensing the disclosed Intellectual Property must be determined in a timely fashion. After preliminary evaluation, the Chair of the Intellectual Property Committee, in consultation with the Dean of the Creator’s school or college or the Division VP of the Creator’s office, will initiate one or more of the following actions within ninety (90) business days of receiving the disclosure:

  1. Submit the disclosed Intellectual Property to the Intellectual Property Committee for its evaluation and recommendation;
  2. Engage outside counsel to a patent application or trademark registration;
  • If rights in the disclosed Intellectual Property are subject to the terms of a grant or contract, comply with the terms of the grant or contract; and/or
  1. Assign title to the disclosed Intellectual Property to the Creator.

If the disclosure is referred to the Committee for a recommendation, the Committee shall review the disclosure and, if appropriate, hear an oral presentation by the Creator, supported by such visual material as may be required for clarity. Use may be made of appropriate ad hoc members, including external agencies, who can best assist in evaluating the Intellectual Property. The Committee shall recommend whether the University should exert an interest in the Intellectual Property, based on a determination that the disclosed Intellectual Property is novel, useful, non-obvious and/or has commercial potential.

Within sixty (60) business days of the disclosure being submitted to the Committee, the Committee will make a recommendation to the Provost and Executive VP for Finance and Operations as to whether the University should pursue development of the Intellectual Property. If the Committee requires additional time, it shall request such additional time from the Provost and EVP, in writing, including a justification for the request. Such additional time must be at the agreement of the involved parties and shall not exceed an additional thirty (30) business days.

The Provost and EVP will consider the recommendation of the Committee and reply to the Chair of the Intellectual Property Committee, who will respond to the Creator, in writing, whether the University intends to pursue development of the Intellectual Property. This determination will be due to the Creator no later than thirty-five (35) business days from the Provost and EVP’s receipt of the Intellectual Property Committee’s report.

The Provost and EVP will complete consideration of the Intellectual Property and the Intellectual Property Committee will inform the Creator within 180 business days of submission regardless of the action(s) chosen. If no decision is documented within this 180 business day period, the University shall have decided it has no interest in pursuing the development of the Intellectual Property, and the procedures of the following paragraph apply.

If it is decided that the University will not pursue development of the Intellectual Property, or such agreed upon decisions are not made or responded to in writing during the specified time period, or a mutually agreeable extended time period, the University shall assign its rights to pursue development of the Intellectual Property back to the Creator(s), except that the University will retain royalty‐free license rights to the Intellectual Property.

 

Appeals

Disputes regarding the application of this Policy may be appealed, in writing, to the Provost and Executive VP for Finance and Operations. The Provost and EVP will refer all appeals to the Intellectual Property Committee, which will make a recommendation within thirty (30) business days of receipt of the appeal. The Provost and EVP will then make a final decision concerning the appeal, which shall be made no later than forty-five (45) business days from receipt of the appeal. If an individual wishes to appeal the decision of the Provost and EVP, or if a decision is not made within the time specified above, the individual may appeal to the President in writing within forty‐five (45) business days of the Provost and EVP’s decision. The President shall make a decision within forty-five (45) business days from the President’s receipt of the appeal. If the individual wishes to appeal the decision of the President, or if the decision is not made within the specified time period, then the individual may appeal to the Board of Regents in accordance with Article IX of the Bylaws of the BOR.

 

Section 5. RESPONSIBILITIES

 

Position or Office   Responsibilities  
Creator Initiate disclosure process and complete IP Disclosure Form to notify the IP Committee through Department Chair or Office Director and Dean or VP; Assist in preparing patent application or trademark registration submissions; Initiate copyright process; Assist in process of adding to University licensing agreements.  
Department Chair / Office Director   Assist Creator in drafting the IP Disclosure Form and other forms; Review IP Disclosure Form.
Dean / Vice President Evaluate IP disclosures for patent potential and assist in preparing patent application if deemed appropriate Approve IP Disclosure Form.
Provost Provide IP disclosure and patent progress reports to sponsors; Forward decisions on approval and/or recommendations on patent applications and licensing agreements to University Counsel; Inform Dean/VP of all IP progress in his/her college, school, or division and EVP of all IP income; Make recommendations to President.
University Counsel   Chair Intellectual Property Committee; Engage outside counsel to file all patent and trademark applications; Approve licensing agreements; Make recommendations to President.
EVP for Finance & Operations   Provide institutional oversight for the implementation of IP registration; Approve any distribution of proceeds; Make recommendations to President.


Appendix A

Form currently under development.

 

Recognition is given to Georgia State University, upon whose Intellectual Property Policy this policy was modeled.