Research Policies and Procedures
Research Policies
POLICY ON INTELLECTUAL PROPERTY
Introduction
This document covers the policy and procedures related to the ownership, distribution, and commercial development of technology produced by AUB faculty, staff, students and others participating in University research programs. University Research shall be defined, for the purpose of this Policy, to include all research conducted in the course of an inventor's employment with the University (including but not limited to the performance of a grant contract or award made to the University by an extramural agency) or with the use of University Resources. The ownership rights to the new technology is referred to as “Intellectual Property Rights” (IPR) and includes patents, copyrights, trademarks, and trade secrets. Distribution and commercialization of technology may be accomplished by transfer or licensing of IPR. Responsibility of transfer of AUB technology for public use and benefit is accomplished solely through the “Technology Transfer Unit” (TTU), in the Office of Grants and Contracts (OGC).
Mission of the TTU
The primary mission of the TTU is to encourage and assist technology development at AUB; to facilitate the transfer of intellectual property to business and industry which will provide benefits to the University and local and regional community economy; and to improve the overall quality of life.
Guided by this mission, TTU has developed a set of five core goals:
1. Provide guidance to faculty members, staff and students to consider alternate applications of
technology developed as part of their research; with time, develop an effective and efficient
technology transfer.
2. Program and assess, document and communicate the full value of technology transfer activities.
3. Increase research and development income to AUB, from public and private sources, through appropriate business agreements that are in compliance with the University’s intellectual property policy.
4. Protect and help market the intellectual property resulting from the scholarly activities at the University.
5. Enhance national economic development by building strong ties between the public and private sectors, without compromising academic principles.
General Statement
The University has among its primary purposes teaching, research , the expansion and dissemination of knowledge, and the application of that knowledge to advance the common good. It is in the context of advancing the common good that the University supports and encourages efforts directed toward bringing the results of university research and other works in diverse fields of knowledge to public use and benefit, and encouraging such creations’ commercial development and applications, subject always to protecting the University’s rights.
Scholarly activities in a University setting create Intellectual Properties (IPs) i.e. (research papers, books, software programs, new inventions, journal articles, etc.). Dissemination of such IPs in the most efficient and effective manner possible is in line with the university mission statement. The identification and optimization of opportunities for the industrial/commercial utilization of some IPs is also part of this mission, as is the protection of the ownership rights of both the individuals and the University. While many IPs are best disseminated by publication and placing in the public domain, there are a significant number that are most effectively handled by protection under the IP laws (i.e., patenting and copyright) and licensing (or other transfer) to private sector entities. Such IPs can provide the Univeristy with a financial return to encourage further research and innovation.,
All the University’s academic staff, non-academic staff, and students (“University members”) engaged in service to the University will be required to execute an agreement (substantially in the form of the Inventions and Proprietary Agreement located at the end of this policy) acknowledging and implementing this policy. This agreement will remain in force regardless of whether or not the university member leaves the University.
The purpose of this policy statement is to:
1. Promote, preserve, and encourage research, inventions, discoveries, and intellectual works created in
the course of the University's research and activities.
2. Establish ownership criteria and resolve ownership questions if such arise.
3. Encourage, assist, and provide rewards to members of the university community for their creations.
4. Establish standards for determining the rights and obligations of the University and creators of intellectual property (e.g., inventors, developers, authors) within the University;
5. Support further research and development by securing for the University a share in the proceeds of such intellectual property.
6. Develop basic guidelines for the administration of the Technology Transfer Policy (under procedures for
Technology Transfer).
Definitions
1. Patent
A patent for an invention is the grant of a property right to the inventor of a useful product or process and the privilege to exclude others from making that invention. A U.S. patent is a grant issued by the US Government giving an inventor the right to exclude all others from making, using, or selling the invention within the United States, its territories and possessions for a period of 20 years.
Patents are forms of intellectual property that cover new inventions or any new and useful improvement of an existing invention. Patents offer inventors monopolies on their creations for specific periods, and thus provide incentives for research and development. Patents are also a means of technological exchange. They are made public specifically to promote the sharing of knowledge.
Three basic criteria for patentability:
a. The invention must be new (first in the world).
b. It must be useful (functional and operative).
c. It must show inventive ingenuity and not be obvious to someone skilled in that area.
And three types of patents:
i. Utility patents: may be granted to anyone who invents or discovers any new and useful process,
machine, article of manufacture, or composition of matter, or any new and useful improvement
thereof;
ii. Design patents: may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
iii. Plant patents: may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
2. Trademark
A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.
3. Copyright
Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.
4. Licensing
Licensing is a form of intellectual property exploitation that allows the inventor or owner of the invention to capitalize on the financial earning power of patents, trademarks and copyrights by making them available for use in exchange for some level of consideration. Licenses are granted on an exclusive, sole or non-exclusive basis, and the rights licensed can be restricted, for example to a specific field of application, or to a geographical area.
5. Trade Secrets
A trade secret is a formula, process, device, or item of information used by a business that has economic value because it is not generally known or easily discovered by observation or examination and for which reasonable efforts to maintain secrecy have been made. Trade secrets are a form of intellectual property. Information contained in a patent is not protected as a trade secret.
6. Intellectual Property
It is divided into two groups:
a. The traditional results of academic scholarship, i.e. textbooks, literary works, artistic creations and artifacts.
b. The novel results of research such as products, processes, machines, software, biological technology, etc.
Intellectual properties in the first (traditional) group are exclusively owned by the author. Such IPs are considered to make their full contribution to the University's benefit by their creation and by their use in teaching, further development, and enhancement of the University's academic stature. Thus, unless there is explicit evidence that the work was specifically commissioned by the University, the IP rights remain with the author(s) and the University rights are limited to free (no cost) use in teaching and research.
In the second group, the strong presumption of ownership is to the University (with the originator having a right to share in the benefits derived therefrom). Unless there is convincing and explicit evidence that the IP was developed without the use of University resources and/or facilities (which may include but is not limited to any of the following: use of equipment, laboratory or office space, University time of originator and/or personnel under his/her control, funds supplied by the University and/or funds originating from sponsored research projects and/or donations to University/affiliated companies, etc.), ownership of the IP rests with the University and the originator(s) is(are) obliged to sign the appropriate legal assignment documents upon request.
Ownership of Inventions
The research and teaching obligations of the University always take precedence over patent considerations. While the University recognizes the benefits of patent development, it is most important that the direction of University research not be established or unduly influenced by patent considerations or personal financial interests.
All patentable inventions conceived or first reduced to practice by faculty and staff of AUB in the conduct of University Research shall belong to the University. The inventor shall cooperate and assist the University in all phases of the patent application process and shall assign such applications or any patents resulting therefrom to AUB.
In cases in which the University has an ownership interest in an invention and either does not file a patent application within one year, or fails to make a positive determination regarding pursuit of a patent within one year from the date of disclosure, all of the University's rights shall be reassigned to the inventor upon request, subject only to such external sponsor restrictions as may apply.
In cases in which the University has signed a contract with a sponsor, under which Intellectual Property is produced, the contract may contain specific provisions with respect to disposition of rights to these IP. If AUB agrees, the sponsor (1) may specify that the IP be placed in the public domain, (2) may claim reproduction, license-free use, or other rights, (3) may assign all rights to the University or (4) may share IP with University. In those cases where royalty income is realized by the University, as described in the agreement between AUB and Sponsor, the inventor(s) shall appropriately share in the royalty income. The nature and extent of inventor(s) participation in royalty income, however, shall be subject to sponsor and institution regulations. If the invention is owned in part by an outside sponsor, then the University will share in the ownership of the invention to an extent determined by negotiation between the provost through the Office of Grants and Contracts and the external sponsor.
In the case in which an IP is generated as a result of research funded by a private sector company under a sponsored research project, the IP rights will be defined in the applicable clauses of the sponsored research agreement (as approved by the Office of Grants and Contracts/Technology Transfer Unit and signed by an authorized officer of the University). In the case that all IP rights are assigned to the Sponsor (private sector, company etc…) AUB will retain inventor status on the patent, but will forfeit all rights to exploitation of the IP. However the rights for AUB to use the IP for educational purposes, in teaching and research will always be retained.
Ownership of inventions (if unresolved) shall be determined by the Provost and the Director of the Office of Grants and Contracts in consultation with a Technology Transfer Advisory Committee, and their decision shall be final.
The Technology Transfer Unit, and in consultation with the Provost and the Technology Transfer Advisory Committee shall determine that such discovery or invention be either:
1. Assigned outright to the discoverer or inventor.
2. Transferred to one or more patent management organizations with which the University has contracted for commercial development or marketed by the Technology Transfer Unit; or
3. Forwarded to the outside sponsor if such action is required under the terms of a sponsored project agreement or by law.
Trademarks
The University will wholly own trademarks and service marks relating to goods and services developed at the University.
Reporting and Disclosure
The Technology Transfer Unit at the Office of Grants and Contracts (OGC) will be responsible for implementing and overseeing this policy. In order to ensure that a proper determination of ownership is made, and in order to comply with governmental and contractual reporting obligations, inventors and creators of creations, or potential creations, whether faculty members, non-academic employees, or students, must promptly disclose a creation during the course of sponsored research (including research funded by a government), or with the use of significant funds or facilities administered by the University to the director of the OGC by signing an Invention Disclosure Form. University members may be required to sign disclosure forms in other circumstances, on a case-by-case basis, and may also be requested to sign an authenticity warranty and a keep harmless undertaking. Timely (i.e., before publication or other enabling non-confidential disclosure) submission of a disclosure to OGC may also be critical to the value of the IP and is strongly encouraged.
Principal investigators, project supervisors, department heads, and laboratory directors are responsible for informing all research personnel, whether faculty, non-academic employees, or students, of their obligations under this policy, including their obligation to promptly report creations.
In addition, all applications for sponsored research should indicate the possibility of copyrightable, patentable, or commercial outcomes of the project. It is the University's policy to make arrangements in advance of the development of a creation to settle any potential future controversy regarding ownership. Therefore, compliance with this disclosure policy is extremely important.
Failure to make adequate disclosures within the terms set forth above will be considered as a serious matter, even if such failure is the result of inadvertence. The University, through the OGC, the provost, and the vice president for administration will take appropriate disciplinary action up to and including, but not limited to, withdrawal of funds or resources.
Allocation of Returns from Creations ( Royalties Distribution )
The University will first deduct 15 percent from the returns it receives from any exploitation of a creation to cover administrative overhead and then any direct expenses that have been incurred, such as patent filing fees. The remaining income will then be divided equally as follows:
1. Inventor: The inventor shall receive one third (33.3%) of the net royalty income. Joint inventors shall share the percentage of net royalty income allocated to the Inventor. Any person hired or retained for the purpose of producing an invention shall not be entitled to a distribution of net royalty income with respect to that invention. Net royalty income shall mean gross royalties received by the University less directly assignable expenses resulting from patenting and licensing the particular invention. The royalty shares for the inventor will continue to be paid to the inventor even after he/she leaves the University to his/her lawful heirs in the case of death. In the case of dispute among heirs, the University will retain the royalty shares until the dispute is resolved.
2. University: The University shall receive one third (33.3%) of the net royalty income to provide operating funds to cover the cost of service provided to the University with regard to intellectual property matters and particularly to cover the costs associated with patenting and marketing inventions where royalty income or other cost recovery has not been achieved.
3. Department or Center : The inventor’s department(s) or Center shall receive the remaining third (33.3%) of the net royalty income and the inventor(s) will receive 30% of this amount as a research budget if he/she requests. If the annual net royalty income for an invention originating from Department or a Center at the University exceeds 20% of the annual budget for that Department/Center, the excess income shall be retained as endowment for the Department/Center.
Licensing Policy
The University recognizes that protection of proprietary rights in the form of a patent or copyright are often necessary - particularly with inventions derived from basic research - to encourage a company to risk the investment of its personnel and financial resources to develop the invention. In some cases, an exclusive license may be necessary to provide an incentive for a company to undertake commercial development and production. Non-exclusive licenses allow several companies to exploit an invention.
The University may, in certain circumstances, license an existing patent or invention on an exclusive or non-exclusive basis for a reasonable period up to the full term of the patent. An exclusive license will be offered if the invention provides a public benefit. All licenses must include march-in rights if the licensee does not adequately perform.
Requests for Waiver
A request for waiver for any of the articles in this Technology Transfer Policy must be forwarded to the TTU/OGC. Such request must include a description of the articles to be waived and a full explanation of the reasons for the waiver keeping in mind that the University education, research and public benefit mission should be satisfied. All faculty or staff members engaged in the research that the waiver will cover must approve the request.
The provost and the director of Grants and Contracts in consultation with the Technology Transfer Advisory Committee shall review the request for waiver and their decision shall be final.
Patenting and Patent Management Agencies
OGC may make suitable arrangements consistent with the Technology Transfer Policy with patenting agencies or patent management agencies or firms for the purpose of obtaining services and advice with respect to the patentability of inventions, obtaining of patents, management and licensing of any such patents, and patent protection.
Technology Transfer Advisory Committee
The provost and the director of OGC will establish an advisory committee for advise with respect to the implementation of AUB Technology Transfer Policy, evaluation of patentability potential of the invention, IP protection action, waiver requests, policy amendments, ownership of inventions, and any other matters as necessary.
The advisory committee shall be chaired by the provost and consists of the following members:
1. Director of OGC (ex-officio).
2. Patent Lawyer.
3. Industry/Commercial/Marketing Experts (from AUB or private sector).
4. Comptroller.
5. Representative from the OSB.
Inventors and faculty members expert(s) in the field of the technology will be invited to become members on the advisory committee for the specific technolgy disclosed only. Members shall have professional background and expertise spanning the university's fields of endeavor, experience in patent and copyright matters, experience and interest in the economic/marketing aspects of technology transfer and personal contacts that they can draw on to assess technical and economic merit of individual IPs.
Each member should have the desire to be involved, and the background and experience to contribute.
The provost shall make all appointments. All members may be reappointed. Interim appointments to serve incomplete terms shall be upon recommendation of OGC Director.
Authority and Responsibility of the Committee
1. Review research contracts with industry and/or private investors that include Intellectual Property Clauses in variance to AUB Technology Transfer Policy.
2. Review all invention disclosures submitted by faculty and/or staff members.
3. Make recommendations concerning the patentability potential of a disclosed invention.
4. Make recommendations on potential licensing of a disclosed invention.
5. Make recommendations on the ownership of a disclosed invention.
6. Evaluate the patent application and make recommendations on its value conerning merit or promotion as part of the Faculty Evaluation Process.
7. Review requests for waiving provisions of the Technology Transfer Policy.
Administration of University Intellectual Property and Dispute Resolution
This policy will be interpreted and administered by the OGC that will also establish procedures for such administration and will review, devise, and revise relevant agreements to be signed by the university members and the creator(s)/inventor(s).
The OGC will have the responsibility for resolving disputes concerning the interpretation and application of this policy and recommending changes therein, from time to time, as experience suggests the need for such changes.
Inventors or creators may submit appeals to the Technology Transfer Advisory Committee regarding any of the OGC's decisions within 30 days of issuance. In such an event, the committee will review the appeal and will submit to the OGC and the provost its final decision.
Procedures for Transfer of Technology
It's imperative not to advertise, display or publish information on your invention too soon. Public disclosure of inventions before filing will make it impossible to obtain a valid patent.
These procedures apply to the Technology Transfer Policy of the University.
1. Patent Agreement
Each faculty or staff member involved in University Research shall execute a Technology Transfer Agreement acknowledging that all such research is subject to the terms of AUB Technology Transfer Policy, and shall agree to cooperate with the University or its designee in the assignment to the University of patent rights in inventions or discoveries conceived or first reduced to practice during such research and the preparation and prosecution of patent applications, as may be required in order to implement its provision.
Principal investigators should remember that they may not obligate the patenting for inventions of project staff, unless such staff have signed a patent agreement prior to commencing work.
2. Disclosure of Invention
Under University policy, all potentially patentable inventions must be disclosed to the University. Potentially patentable inventions include any new or useful process, device or apparatus, article of manufacture, composition of matter (including chemical compounds, microorganisms, and the like), asexually propagated plant, or related improvement to any of the foregoing, or a new use for a known material or device. Such inventions should be reported as soon as possible after conception of the idea to OGC.
The technology transfer process begins with a disclosure of an invention. This is accomplished by submitting an Invention Disclosure Form. The Form provides information necessary for the University to evaluate patentability, inventorship, assignment obligations, the desirability of obtaining patent coverage, and patent obligations to research sponsors. This information is confidential and should be kept confidential by the inventor.
The inventor submits an Invention Disclosure Form to TTU, whereby a record of the invention will be created including the inventor(s) involved, sponsors, and public disclosures and/or publications. Invention disclosures are reviewed to determine patent obligations owed to sponsors of research. Because of the confidential nature of inventions, inventors should not report inventions directly to sponsors.
Once submitted, disclosures are logged in, assigned a reference number, and assigned to the TTU officer.
The advisory committee shall meet with the inventor(s) to discuss the invention and make a preliminary evaluation of feasibility, novelty, potential applications, and possible markets. A patent and literature search to evaluate the uniqueness of the invention and a marketability survey of the literature and industry contacts is then conducted to determine whether the invention is patentable (new, useful, and not an obvious improvement on an existing invention) and whether it is licensable (will a company pay the University for the right to commercially practice the invention). The advisory committee shall make decisions about which inventions will be patented or licensed in less than six months, otherwise the rights to the invention will be assigned back to the inventor.
3. Function of the Advisory Committee
The committee will meet to decide about the fate of the invention. Six months are allowed for committee to decide on the patenting manner that will be adopted.
4. Royalty Distribution
In the case of a parent owned by the University, and in recognition of the efforts and contributions of the inventor, total net royalty income shall be distributed as detailed under the section entitled: " Allocation of Returns from Creations".