Section I - General Statement of University Policy
The University is increasingly involved in diverse use of media that generate and draw upon a variety of materials that are copyrightable. Complex problems are raised concerning ownership and the use of educational materials developed with University facilities and resources or as a result of assigned University duties or with support by a third-party sponsor. The University, as both a producer and user of such materials, needs policies to govern ownership, University use, external use, and rights to income produced by external distribution of these University-sponsored educational materials. It is the purpose of this policy statement to clarify the respective rights of faculty, staff, students, and the University by defining the types of educational materials which should be designated "University Sponsored", by establishing procedures for administering policies concerning these materials, and stating University-wide policies governing their ownership and use and the rights to income produced.
This policy does not affect the personal ownership rights of University personnel to print or non-print educational materials other than those which are University-sponsored.
Section II - Scope of Statement of Policy
A. This statement of policy shall apply only to the ownership and use of University-sponsored educational materials, as defined in Section III, and extends to University personnel, including faculty, staff, and students, as defined in Section III.
B. Unless specifically excluded by other Sections of this statement, the types of educational materials to which this policy is designed to apply include, but are not limited to, the following:
C. This policy statement does not apply to the following types of materials:
Section III - Definitions
A. University-sponsored Educational Materials
a. If the author or producer has employed in his developmental work, without personal charge to himself, the equipment, materials or staff services of the Computer Center, WFSU-FM, WFSU-TV, the Photo Laboratory or the Division of Instructional Research and Service, or any other new agency or combinations of above mentioned existent agencies, and/or new agencies, established or supported by the University primarily to assist in developing and producing educational materials; or
b. If the author or producer has been both commissioned in writing by the University, or one of its colleges, schools, departments or other subdivisions, to develop the materials and, in their production has received assistance in the form of released time or from University funds, including grants and contract funds administered by the University.
B. Costs (Production Costs)
The word costs or the phrase production costs, as related to the production of University-sponsored education materials will include the following categories:
Those salaries and materials specifically identified with the production of such materials. (Section III, A, 1a, 1b.) Direct costs are computed by those supporting agencies involved with design, preparation, production, editing, duplication and distribution of educational materials
Costs for space, utilities, amortization of equipment, etc., which are generally referred to as overhead. The current University indirect cost rate will be applied for recovery of indirect costs relating to the production of University-sponsored educational materials.
C. University personnel
Part-time and full-time members of the faculty, administrative and professional staff, career staff, undergraduate and graduate students, post-doctoral students and fellows of the University.
D. Author or Producer
An individual, a group, a department, or other unit of the university involved in the production of education materials.
Section IV - Control of the Content and the Presentation of University Sponsored Educational Materials
A. Subject to the provisions of this policy, the author or producer has the right to and the responsibility for control of the content of university-sponsored educational materials.
B. Subject to the provisions of this policy, the author or producer has the right to make other versions of the content of the materials for presentation in other media.
Section V - Use of University-Sponsored Educational Materials
A. Internal Use
B. External Use
Section VII - Compensation for the Production and Use of University-Sponsored Educational Materials
A. Compensation for Production Activity
B. Distribution of Royalties
a. The University's original production costs as defined in Section III,B,1 and 2, shall be recovered by the University prior to the distribution of any royalties.
b. Expenses related to the production and distribution of additional copies of educational materials will be recovered from each sale or rental on the same basis as the original production costs.
c. Royalties may be included in the sale or rental price subject to any limitation imposed by outside contracting or granting agencies.
d. Fifty percent of any resultant net royalty income (royalty income after production costs and distribution costs as defined in Section III,B,1 and 2) derived from the external use of University-sponsored educational materials will go to the University, and fifty percent to the author or producer.
e. Twenty-five percent of the University's share shall be allocated to SRAD. The remaining royalties that accrue to the University shall be returned to the school, college and/or supporting agency to finance further the development of educational materials or for other educational purposes. Distribution shall be as negotiated among the Vice President, Research and Graduate Studies, and the chief administrator of the department, school, college or agency involved.
Section VIII - Ownership and Copyright
Ownership of University-sponsored educational materials shall be vested in the University, subject to the conditions set forth in this statement of policy. Copyright of University-sponsored educational materials resides with the State of Florida. The author or producer shall cooperate with the University in obtaining copyright.
A. Copyright Statement
Property rights in copyrightable material may be secured for a published work by initially publishing the work in printed or otherwise processed form bearing or displaying a proper copyright notice. Notice contains a display of the word copyright, the abbreviation COPR, or the "C" enclosed in a circle, followed by the year of publication and the name of the copyright owner. The "C" in the circle is preferred because it gives the work certain international copyright protection. Formal registration in the U.S. Copyright Office constitutes further evidence of copyright. The publication of a work without proper notice may forfeit copyright protection.
B. Credit Statements on University-Sponsored Educational Materials
Section IX - Procedures and Administration
A. Administration of Policy
B. Procedures for Interpretation of Policy
All materials which may belong to the University under the provisions of this policy through the appropriate department head and dean to the Vice President for Research. Any faculty or staff member having questions as to whether certain materials, either in preparation or under planning for preparation, will be considered University property should initiate an inquiry to the Vice President for Research. This inquiry shall constitute a full and complete disclosure of the subject matter and the identity of all persons participating in the development and production of the educational materials. The Vice President for Research shall promptly advise the author or producer as to whether the material should be considered University-sponsored within the meaning of this policy. Such advisory opinions are subject to final clarification when production of the materials is completed. When the work has been completed, the author or producer should submit questions regarding rights in the work to the University Committee on Copyrights for review or recommendation. Recommendation by the Committee on Copyrights may be reviewed by the Council on Research and Creativity (CRC) and the decision of the Council on Research and Creativity will be final subject to the provisions of Section IX,B,2.
Any differences between the author or producer on the one hand and the Vice President for Research, or the University Committee on Copyrights on the other hand, shall be submitted to the CRC. The CRC shall have full access to any pertinent records over which University personnel, including the author or producer, or the University has jurisdiction. The determination of the CRC shall be communicated to the President of the University who may review the determination or refer the matter to the Board of Regents for final determination with his recommendation.
Section X - Protection and Liability
A. Protection
The University Committee on Copyrights, where authorized by the Board of Regents, shall investigate allegations for unauthorized use or copyright infringement of University- sponsored educational materials and shall recommend appropriate action. If such action is started by the University all costs of such action shall be borne by the University. All proceeds in excess of such costs shall be shared as noted in Section VII,B,2,d.
B. Liability
Before any use is made of University-sponsored educational materials, the author or producer shall hold the University harmless and certify in writing to the Office of the Vice President, Research and Graduate Studies, that to the best of his or her knowledge the materials do not infringe on any existing copyright or other legal right. When other alleged violations of personal property rights by the University, or by the author or producer of University-sponsored educational materials, the University may assume responsibility for the defense of any action and the satisfaction of any judgements rendered against the University or the author or producer. However, the Vice President for Research, acting for the University, may request or require the author or producer to indemnify and hold harmless the University for all costs to which it has been subjected when the action for personal or property rights is based upon matters which should have been known or with reasonable care should have been discovered by the author or producer. Any judgement rendered against the University or the author or producer shall be satisfied first from net royalties received by the University and the author or producer.
Section XI - Review
This policy statement will be subject to periodic review by the Council on Research and Creativity.
Section I - Basic Objectives
Research, one of the basic objectives of a university, is undertaken to educate students, stimulate a spirit of inquiry, to solve problems, and to discover new knowledge. Many novel discoveries result from research. The objectives of the Florida State University policy is:
Section II - Legal Authority
Retention of intellectual property, or inventions, by universities has been facilitated by passage of uniform patent legislation, Public Law 96-517, "The Patent and Trademark Amendments Act of 1980". In this act, the federal government has given nonprofit organizations and small businesses a right of first refusal to title in inventions made in the performance of government grants and contracts with some limited exceptions. This law clearly sets forth, as the objective of Congress, the utilization of the patent system as a vehicle to "effectuate the transfer of government-funded inventions to the public."
The Florida State University patent policy is based on ss.240.229 and 240.241, Florida Statutes. The University has implemented this authority through Rule 6C2-6.009, Florida Administrative Code, which requires that an employee shall disclose all patentable inventions and technological developments which the employee may develop or discover while an employee of the University. It further states that "a discovery or invention which is made in the field in which the investigator is employed by the University or by using University funds, facilities, materials, equipment, personnel or proprietary technological information is the property of the University and the inventor shall share in the proceeds therefrom." Rule 6C2-6.009 tracks Article 18 of the UFF-BOR Agreement.
Section III - Florida State University Policy
The impact of the above is that all inventions by faculty members (although the term "faculty" will be used throughout this document, the policy herein described applies to all faculty, non-faculty employees and students) who are using university funds, facilities, materials, equipment, personnel or proprietary technological information, are the property of the University and proceeds from the commercialization of these inventions will be shared with the inventor.
Discoveries or inventions made outside the field in which a faculty member is employed by the University and for which the University has provided no support are the private property of the inventor. In any case, the faculty member is required to disclose all inventions, even those considered by him/her to be unrelated to his/her work.
Except for unusual cases, it is the policy of the University to require that inventions developed in the course of privately or industrially-sponsored research be the property of the University. An exclusivity option may be accorded to the sponsor, in which case the term of exclusivity and the royalty rate will be negotiated at the time the invention or discovery is made or under the provisions of subsection III.A of this document. Under these conditions, the sponsor is given an option of acquiring an exclusive license within the stated number of months after the invention is disclosed. If the sponsor exercises this option, the University retains royalty-free license rights to practice the invention for its own purposes.
Proprietary considerations, principally those involving rights, are usually complex, and patent provisions are likely to be rather detailed. The Vice President for Research is the President's designee in the negotiation of patent clauses and license agreements on behalf of Florida State University.
A. Research Financed by Outside Sponsors
Research financed totally or in part by an outside sponsor comes under the special provisions of the grant, contract, or agreement covering such work. Such provisions are executed by the Division of Sponsored Research. Ordinarily, Florida State University retains all rights to an invention resulting from research. Exceptions to this policy may only be made by the Vice President for Research.
Faculty engaged in consulting work should use great care to determine that the patent clauses in their consulting agreement(s) do not involve conflict of interest problems or are not in actual conflict with sponsored grants or contracts, or with University policy. Consulting agreements frequently ask that the consultant waive his/her patent rights as a condition of employment. Consulting agreements containing such waivers shall be submitted to the Vice President for Research for review and approval. The employee must insure that he or she does not attempt to waive patent rights held by the University. Where consulting activities involve the development of inventions or potential inventions conceived under federal sponsorship or supported by Florida State University funds or resources, permission to waive patent rights will not be granted. A determination by the University must be initiated when the faculty member submits a Report of Outside Employment to the Dean of the Faculties in which patent rights are to be granted to the outside employer. Full disclosure of any invention discovered in the course of such work, in accordance with instructions of subsection IV.B of this document, must be made to the Vice President for Research. Ownership decisions will be made within 30 days of receipt of the disclosure by the Vice President for Research.
B. Relationships Between the Inventor and the University Regarding Patents
If an invention is made or developed without any University support in a field other than the general field in which the inventor is employed (i.e., not in the field or discipline for which the inventor was employed to teach, serve or to research), patent rights will be released to the inventor. Under these conditions, the employee is, nevertheless, required to make full disclosure of this invention to the University in accordance with subsection IV.B of this document so that the University may make a determination as to ownership. Ownership decisions will be made within 30 days of receipt of the disclosure by the Vice President for Research.
If an invention has been determined to have been made or developed in the inventor's general field (i.e., the field or discipline for which the inventor was employed to teach, serve or to research) or with University support in terms of funds, facilities, materials, equipment, personnel or proprietary technological information, the inventor shall promptly submit a full disclosure of the invention, in accordance with the instructions of subsection IV.B of this document, to the Vice President for Research.
The University may
a. elect to waive its rights, thus allowing the inventor to protect the invention as he or she may wish, subject to any patent provisions in any sponsoring agreements, if outside funds supported the work leading to the invention. This waiver shall not affect the right of the University and State of Florida to royalty-free use of the invention, or
b. elect to acquire title to the invention by assignment (i.e., the inventor assigns the rights to the University). In this case, Florida State University will seek to patent, develop, and market the invention. All costs of the patent application and related activities such as travel and attorney's fees incurred by the University (including authorized costs approved in advance by the Vice President for Research and incurred by the inventor) and including those which lead to active licensed production, shall be paid from University funds, and this cost shall be charged against royalty income as described in IV.C below. The term "inventor" may mean joint inventors, in which case the inventors' share of the royalties will be paid as though they were a single entity and divided equally unless a contract or prior agreement exists. The inventor may designate that a portion of his/her royalties be deposited in a Division of Sponsored Research account for exclusive use by the inventor in his/her research. Once application for a patents has been made, the Vice President for Research will be responsible for the development and negotiation of licensing agreements in a way which serves the public interest.
When a U.S. patent is issued on an invention assigned to the University, the inventor will receive a $500 payment. Royalties or other income resulting from inventions in which the University takes title will be distributed as follows:
85% to inventor(s) For the first $10,000 15% to University
Once the $10,000 plateau has been reached, net income (gross royalties minus direct costs of patenting, licensing, legal, and other related expenses) will be divided as follows:
40% to inventor(s) For net income in
30% to dept. or unit or both of excess of $10,000
which inventor is member
30% to University
These thresholds will be revised from time to time.
The University will utilize its share of net royalties in
accordance with s.240.241, Florida Statutes.
Section IV - Procedures; Regarding Patents
A. Organization; Patent Committee
The Office of the Vice President for Research is responsible for all matters relating to inventions, patents, trademarks (with the exception of institutional trademarks and names), and copyrights and represents the University in all matters of patent policy affecting the University's relations with government, industry, and the public.
The Patent Committee, which is appointed by the Vice President for Research and which has representation from the principal faculties potentially affected by the policies in this area, is available to advise the Vice President as to whether the University should exert an interest in a particular invention, and whether the patent rights should be released to the inventor. The Patent Committee also makes recommendations on University patent policy implementation and disputes arising under this policy.
B. Making Disclosures
At the same time the inventor discloses an invention in writing to the Vice President for Research the inventor must also send a brief description to his/her dean and department chairperson (or director, if applicable). The Vice President will seek advice from the inventor as well as the appropriate unit administrator (dean or director) about provisions, agreements, and conditions, including funding for further research and development prior to licensing negotiations.
When the inventor declares that a disclosed invention is not the property of the University, the Vice President for Research will announce a decision on the University's legal rights within 30 calendar days from receipt of the invention disclosure.
a. Upon receipt of an assigned disclosure by the Vice President for Research, the disclosure may be referred to an external agency for evaluation.
b. If the disclosure is referred to the committee, it shall review the disclosure and, when necessary, hear an oral presentation by the inventor(s), supported by such visual material as may be required for clarity. Use will be made of appropriate ad hoc members who can best assist in evaluating the patent application.
c. The committee shall recommend whether the University should exert an interest in the invention, based on a determination that the proposed invention is novel, useful and nonobvious and has commercial potential.
d. Within 75 calendar days of receipt of the assigned disclosure by the Vice President for Research, the committee shall make a recommendation to him as to whether the University shall pursue patent development of the invention. The Vice President for Research shall consider the recommendation of the committee and shall respond in writing to the inventor within 135 calendar days of his receipt of the disclosure whether the University will apply for a patent. It shall be the obligation of the inventor to be available to provide additional information as needed in this and subsequent stages of this procedure. If the matter has not been referred to the committee, the Vice President will still have 135 calendar days from receipt of the disclosure to inform the inventor whether the University will apply for a patent.
e. If the Vice President decides the University will not pursue development of the invention, 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 have waived its rights to pursue development of the invention, except that the University will retain royalty-free license rights to practice for its own purposes and for governmental purposes of the State of Florida.
f. In exceptional circumstances, the Vice President may decide to exert an interest in the invention and pursue development of the invention without committee review if he believes such action is in the best interests of the University. Said decision will be communicated to the committee at its next meeting.