Ohio Admin. Code 3342-5-09.1 - Administrative policy regarding patents

(A) Definitions. As used in this statement of policy, the following terms have the meaning indicated:

(1) Inventions. All discoveries, methods, uses, products or combinations whether or not patented or patentable at any time under the Federal Patent Act as now existing or hereafter amended or supplemented.

(2) University personnel. Part-time and full-time (paid or unpaid) faculty, staff, and student appointees of Kent state university.

(3) Inventor(s). University personnel who have developed inventions.

(4) Disclosure. A reporting of an invention or creation.

(5) University funds and facilities. Funds and facilities provided by governments, commercial, industrial or other public or private organizations which are administered and controlled by the university shall be considered to be funds and facilities provided by the university.

(B) Rights to inventions.

(1) Domestic and foreign rights to inventions developed by university personnel through their use of facilities or funds provided by the university shall vest in the university and be subject to the distribution of license and royalty income policy. Rights of university personnel in invention(s) are provided in subsequent sections of this statement of policy.

(2) The university may elect to waive ownership under this policy. If the university asserts ownership, but elects not to seek a patent or otherwise pursue commercial development for an invention to which it has vested rights, it will release its rights to such invention to the inventor subject to third party rights to such invention. These actions shall apply only where the inventor(s) has disclosed fully said invention under this policy.

(3) The rights of the university and its personnel to ownership and disposition of inventions are defined in terms of the following summarized categories summarized below :

(a) Sponsored work. Rights to inventions which are subject to the terms of a sponsored research agreement between the university and a third party are subject to the terms of the applicable agreement, or. in the absence of such terms, the rights to the inventions shall be vested in the university and be subject to the distribution of license and royalty income policy.

(b) Unsponsored work. Rights to inventions developed by university personnel in university research facilities, through research support provided by the university or with the use of research support facilities or services also shall be vested in the university and subject to the distribution of license and royalty income policy.

(C) Disclosure and disposition of inventions.

(1) Any invention shall be disclosed in confidence by the originator(s) by completing and filing an "Invention Disclosure Form" with the vice provost and dean of research and graduate studies, or designee. Such forms are available from the office of technology transfer.

(2) The originator(s) shall work closely with the division of research and graduate studies and/or any organization to whom the university assigns rights to such inventions and creations in pursuing applications for patents as well as in the pursuit of licensing.

(3) The university has the sole right to license, sell, or otherwise dispose of the rights to inventions which are owned by or have been assigned to the university.

(4) The president, provost, or their designee, may request an audit and report on any university-sponsored or supported research program where patent or copyright issues are involved.

(D) Administration. Administration of this policy regarding patents is the duty of the president and the provost and their designees, who are charged with the execution of the policy and administrative procedures, as well as recommended changes for policy revisions.

(1) University patent and copyright board.

(a) Membership. To assist in the administration of the policy there shall be a university patent and copyright board consisting of ex officio members including the vice provost and dean of research and graduate studies; the director of technology transfer; and the university counsel; four faculty members appointed by the provost; and such outside members with expertise in patent and licensing matters as deemed appropriate by the president or provost. The term of faculty members shall be four years. All members shall be voting members.

(b) Chairperson. The university patent and copyright board shall be chaired by the provost or designee.

(c) Duties. The duties of the university patent and copyright board are to advise on the application of this policy to the specific facts surrounding the development or discoveries and inventions, to recommend appropriate action to the provost, and to study and recommend suitable changes in the patent policy, as the need arises.

(2) Procedures.

(a) The vice provost and dean of research and graduate studies shall establish appropriate procedures for the disclosure of possible discoveries and inventions and shall inform university personnel of such procedures through suitable means.

(b) Employees shall promptly notify the vice provost and dean of research and graduate studies, or designee, of possible discoveries and inventions by filing an invention disclosure form.

(c) Upon the recommendation of the vice provost and dean of research and graduate studies, the provost or designee shall convene the university patent and copyright board for consideration of invention disclosures and any other matters requiring consideration by the university patent and copyright board.

(d) The university patent and copyright board shall promptly consider all disclosures of inventions and creations and requests for a determination of rights and shall make the determinations required within a reasonable time.

(e) The university personnel involved shall be entitled to appear before the university patent and copyright board and present evidence with respect to the disclosure. The university patent and copyright board's determination shall be made in writing and shall contain a statement of its findings and grounds for decision.

(f) The university patent and copyright board may obtain legal and other advice necessary to perform its function.

(g) Actions of the patent and copyright board may be appealed in writing to the provost.

(E) Publication and publicity.

(1) To fulfill the university's obligation as a publicly assisted educational institution, university research should serve a public rather than a private purpose and the results should be broadly disseminated, where the same does not breach any confidentiality agreement to which the university is a party or violate any government law or rule requiring secrecy. The university encourages studies whose results can be freely published.

(2) The university recognizes that in some cases of industry sponsored applied research the legitimate proprietary concerns of private research sponsors and the effective commercialization of research outcomes may require limited delays in publication. Where appropriate, publications can be deferred for a negotiated period of time in order to protect patent rights. Similarly, on those occasions in which the university has accepted a sponsor's proprietary information as necessary background data for a research project, the sponsor may review proposed publications in order to identify any inadvertent disclosure of those specific data.

(3) Because of the potential for delay in publication, the involvement of graduate students in industry sponsored applied research will be governed by the appropriate policies of the graduate schools.

(4) The name of or reference to Kent state university shall not be used in any form of publicity by a sponsor without prior written approval from the university.

Replaces: 3342-5- 09.1

Notes

Ohio Admin. Code 3342-5-09.1

Effective: 3/1/2015
Promulgated Under: 111.15
Statutory Authority: 3341.01
Rule Amplifies: 3341.01, 3341.04
Prior Effective Dates: 11/4/1977, 8/31/1979, 4/5/1991, 4/28/1992, 9/2/1992, 5/5/1995, 10/6/2000, 6/1/2007