02-01---Patents
ASU System Policy
Effective Date: December 7, 2012; Revised December 5, 2014
Subject: Patents
1. Purpose
Arkansas State University will secure ownership of and protect both the
Originator’s and the University’s interests in patentable inventions or discoveries.
2. Definitions.
A. Arkansas State University. Arkansas State University (ASU) means all
the campuses within the Arkansas State University System, now and in the
future.
B. Originator. Originator means any ASU employee or student who in the
course of Scholarly Production makes an invention or discovery that is
subject to being patented.
C. Scholarly Production. Scholarly Production means any research,
creative activity, or development activity which is directly related to the
duties and responsibilities for which an employee or student has been
compensated by or through ASU or for which the employee or student
makes more than incidental use of facilities owned, operated, or controlled
by ASU to create the Scholarly Production. The receipt of student financial
aid, except for financial aid provided for the purpose of conducting
research, creative activity, or development activity, does not constitute
student compensation.
D. Incidental Use. Incidental use means occasional utilization of University
facilities for limited amounts of time. The use of routinely available office
equipment, including computers and commercially available software, and
routinely available reference materials constitutes incidental use when used
occasionally for limited amounts of time.
E. Patent. Patent means that bundle of legal rights which protect inventions
or discoveries.
F. Patentable Inventions or Discoveries. Patentable Inventions or
Discoveries shall be defined as set out in the current United States Code.
Patentable Inventions or Discoveries include any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof.
G. Moment of Creation. Moment of creation means that point in time when a
Patentable Invention or Discovery is first conceived or recognized by the
Originator.
H. Royalty-Free License. Royalty-Free License means a non-exclusive,
nontransferable license for ASU’s unrestricted use of the Patentable
Invention or Discovery for noncommercial educational or research
activities, the license being without royalty payments.
I. Net Income. Net Income means the gross income received by the owner
of the patentable invention or discovery less the costs for
commercialization, patenting, licensing, or obtaining legal protection for the
invention or discovery. Salaries or overhead for the Originator or any staff
shall not be deducted when calculating Net Income.
J. Sponsored Research. Sponsored Research means Scholarly
Production for which ASU has received external or provided internal
monetary support.
K. Facilities. Facilities means buildings, equipment, software, reference
materials, or other resources provided for the use of students, faculty, and
staff but not generally available to the public.
3. Arkansas State University Patent Policy
Arkansas State University is committed to securing immediate ownership of
Patentable Inventions or Discoveries created by employees and students in the
course of their Scholarly Production at the University. ASU will work with the
Originator to commercialize Patentable Inventions or Discoveries to the mutual
benefit of the Originator, ASU, and the public. In order to insure that ASU is
granted immediate ownership, Originators, as a condition of employment or
enrollment, do hereby, make an immediate assignment of all ownership rights in
Patentable Inventions and Discoveries to ASU effective at the moment of creation.
To document the immediate assignment required by this policy, Originators also
execute a Written Assignment as set out below.
4. Process
A. Written Assignment
As a condition of employment or enrollment, employees and students will
confirm in writing at the time of Disclosure their immediate assignment as
an Originator of all Patentable Inventions or Discoveries to ASU effective at
the moment of creation.
B. Disclosure
All Originators shall furnish a full and complete disclosure of any Patentable
Invention or Discovery immediately after the moment of creation to the
office designated by the chancellor of that campus to manage research and
technology transfer.
C. Review of Disclosures
Each chancellor shall designate a person responsible on that campus for
reviewing disclosures who will recommend one of three possible actions
following his or her review. ASU may:
1. Retain all ownership rights and develop the Patentable Invention or Discovery for commercialization at ASU’s discretion;
2. Assign all rights to the Originator but retain a Royalty-Free License;
or
3. Assign all rights to the Originator.
D. Development.
The owner of the Patentable Invention or Discovery bears the responsibility
and financial burden of developing and marketing the invention or discovery
and all legal fees and other costs related to obtaining and maintaining
patent protection, unless otherwise negotiated.
If ASU does not furnish notice of intent to retain ownership rights of the
Patentable Invention or Discovery within ninety (90) days after disclosure,
the Originator may request that ASU transfer its rights subject to the
retention of a Royalty-Free License or assign all rights to the Originator.
ASU shall respond within thirty (30) days to the request of the Originator
designating which of the three actions in 4.C. will be taken.
If ASU does not file a provisional patent within one (1) year of furnishing
notice of intent to retain ownership rights of the Patentable Invention or
Discovery, ASU shall assign all rights to the Originator if the Originator so
requests.
If ASU chooses to patent an invention or discovery but takes no steps within
two (2) years of disclosure to develop the invention or discovery
commercially, the Originator may request that ASU transfer its rights
subject to the retention of a Royalty-Free License or assign all rights to the
Originator. ASU shall respond within thirty (30) days to the request of the
Originator designating which of the three actions in 4.C. will be taken.
E. Distribution of Income
In consideration of the provision of facilities or compensation by ASU to
allow Originators to create Patentable Inventions or Discoveries and in
consideration of disclosure and immediate assignment of Patentable
Inventions or Discoveries by Originators to ASU, Net Income from the
commercialization of a Patentable Invention or Discovery will be distributed
as follows:
1. For the first ten thousand dollars ($10,000.00) of Net Income, the
Originator, Originator’s heirs, successors, or designee shall receive
eighty-five percent (85%) of that Net Income with the remaining
fifteen percent (15%) belonging to the ASU campus at which the
Originator is or was employed or enrolled.
2. Once the ten thousand dollar ($10,000.00) plateau has been
reached, Net Income up to two million dollars ($2,000,000.00) will be
divided fifty percent (50%) to the Originator, Originator’s heirs,
successors, or designee with fifty percent (50%) belonging to the
ASU campus at which the Originator is or was employed or enrolled.
3. Once the two million dollar ($2,000,000.00) plateau has been
reached, Net Income will be divided forty percent (40%) to the
Originator, Originator’s heirs, successor, or designee with sixty
percent (60%) belonging to the ASU campus at which the Originator
is or was employed or enrolled.
Net Income will be distributed on an annual basis with payments being
made within sixty (60) days after the end of a calendar year in which Net
Income from the invention or discovery have accrued.
F. Sponsored Research
Rights to Patentable Inventions or Discoveries produced as a result of
Sponsored Research, including research sponsored by the Arkansas State
University Research and Development Institute, Inc., are determined by the
contractual or grant agreements negotiated between ASU and the sponsor.
Federal law controls the disposition of inventions or discoveries made while
utilizing federal funds. ASU must comply with all federal laws and agency
regulations regarding ownership of inventions or discoveries, including
obtaining immediate assignment of ownership rights from the Originator.
(Adopted by the Arkansas State University Board of Trustees on December 5, 2014,
Resolution 14-52. Supercedes policy approved on December 7, 2012, Resolution
12-40, which superceded all sections addressing Patents in the Intellectual Property
Policy adopted on February 25, 2005. All remaining sections of the Intellectual Property
Policy continue in full force.)