3356-10-18. Intellectual property rights

(A) Policy statement. Youngstown state university ("university") encourages the development and dissemination of intellectual property that benefit the public, the university and its faculty, staff, and students. Research and scholarship are encouraged through an appropriate allocation of intellectual property rights between the creator and the university. Except for works for hire and joint efforts, an employee's or student's rights to copyrightable materials shall be governed by the applicable provisions of state and federal law. For all other intellectual property not governed by the copyright protection laws, the applicable state and federal laws shall govern the employee, student, university and external entity rights to such property. The president and the associate vice president for research or director of research are specifically designated to serve as authorized institutional officials with the right to approve licensing and royalty agreements with entities entering into a contractual or grant relationship for research and development activities to be carried out by the university.

(B) Purpose. To establish rules regarding the ownership, distribution, and commercialization of intellectual property created by university faculty, staff, and students.

(C) Definitions.

(1) "Intellectual property" includes inventions, discoveries, works of authorship and/or other creative works that may be subject to protection under federal or state patent, copyright, trademark and/or trade secret laws.

(2) "Invention" is any discovery, product, process, machine, composition of matter and/or improvement that may be patentable.

(3) "Patent/patentable" is any invention or other matter that may be patentable under the patent laws of the United States or foreign country.

(4) "Trade secret" is any information that derives economic value from not being readily known or available to others and is protected from disclosure by reasonable efforts.

(5) "Copyright/copyrightable" is any original work of authorship protectable under the copyright laws of the United States or foreign country.

(6) "Commercialization" includes, but is not limited to, the creation, protection, marketing, or licensing of intellectual property, manufacturing of a product based on a license of intellectual property, or the sale of technology based on a license of intellectual property.

(D) Parameter. Section 3345.14 of the Revised Code provides that all rights to discoveries, inventions, or patents that result from research or investigation conducted in any facility of a state university are the sole property of the university. The board of trustees may assign, license, transfer, or sell these rights as the board deems appropriate.

(E) Procedures.

(1) The associate vice president for research or director of research are responsible for administering intellectual property procedures as described in the "Handbook on Ownership of Intellectual Property" and for procedures for the allocation of income from intellectual property. Any faculty member, employee, or student who creates intellectual property that can be patented under applicable federal laws must disclose that information to the associate vice president for research or director of research according to the procedures described in the "Handbook on Ownership of Intellectual Property."

(2) As part of the duties of the associate vice president for research or director of research, and as authorized institutional officials for grants and sponsored programs, those individuals may agree to assignment of intellectual property to the funding agency, provided that such assignment is appropriate to the project and maintains university rights to all or an equitable portion of royalties that may be generated by the project. Externally sponsored research is always between the sponsor, as grantor, and the university, as grantee. Therefore, the university exercises intellectual property ownership over all intellectual property resulting from sponsored program support. No employee, other than an authorized institutional official, may sign on behalf of the university for any sponsored program, licensing, or related agreement.

(3) The university research council advises the associate vice president for research or director of research regarding the ownership of intellectual property and the distribution of income derived from the intellectual property.

(F) Ownership.

(1) "Employee-owned." Intellectual property privately created, made or originated by a faculty member, employee, or student without the use of university facilities shall be the sole and exclusive property of the creator(s), except as he or she may voluntarily choose to transfer such property, in full or in part.

(2) "University-owned." The university shall own the intellectual property in the following circumstances:

(a) A work prepared by a faculty member, employee, or student within the scope of his or her employment, including distance education courses. However, the university hereby grants the faculty member or employee a nonexclusive, perpetual, royalty-free license to use works created as course materials for teaching and education purposes in the event they are no longer employed by the university.

(b) The university expressly directs a faculty member, employee, or student to create a specified work or the work is created as a specific requirement of employment or a credit-bearing course or as an assigned institutional duty that may, for example, be included in a written job description or an employment agreement.

(c) The faculty member, employee, or student has voluntarily transferred the intellectual property, in whole or in part, to the institution. Such transfer shall be in the form of a written document signed by the transferring individual.

(d) The faculty member, employee, external entity, or student has contributed to a joint effort which has the ownership rights and any income distribution set forth in writing. Unless agreed in writing, otherwise, all intellectual property developed by students shall be the property of the university. Absent specific agreement for the ownership of intellectual property resulting from a sponsored program supported by an external entity, the intellectual property will be the property of the university.

(3) Distribution of royalties/income. All net income and royalties received as a result of university ownership of intellectual property will be distributed according to the current collective bargaining agreements and/or other contractual agreements with external organizations acting on behalf of Youngstown state university.

Effective: 7/15/2019
Promulgated Under: 111.15
Statutory Authority: 3356
Rule Amplifies: 3356
Prior Effective Dates: 04/24/2000, 06/16/2003, 08/21/2010, 06/04/2012