Operating Policies and Procedures Manual

Effective Date: 07/01/91
Policy Number: 02-01
Section: Academic Affairs
Subject: Patents

POLICY

Among the responsibilities of the faculty of Arkansas State University are teaching, engaging in scholarly activities, and offering professional services. The university encourages scholarly activity as essential to the maintenance of skills and the mastery of the area in which the faculty member teaches, as well as to the development of new knowledge.

Furthermore, it is the policy of the university to encourage scholarly activity in the form of basic and applied research on the part of faculty and staff. This includes the endorsement and support of proposals for on-campus and off-campus grants, contracts, or cooperative agreements. It is anticipated that such research activities may result in patentable discoveries or inventions.

Arkansas State University retains an interest in discoveries or inventions, including patents thereon, resulting from:

  1. research or investigation conducted on premises owned, operated, or managed by Arkansas State University;
  2. the use of equipment and/or materials owned or paid for by or through Arkansas State University;
  3. reassigned work load for research;
  4. compensated off-campus assignment.
Contract with Outside Sponsors
When discoveries or inventions are the result of activities carried out as part of a contract with outside sponsors, the interest retained by the university in such discovery or inventions is governed by the terms of the contract and should be a part of the negotiations preceding its finalization. In arriving at the agreement, among the factors to be considered are: (1) if the inventor/discoverer can continue research along the same tract without expense, such as through a no-cost license for use of the discovery granted to university, and (2) if an equitable share of income derived from application of the discovery or invention is provided to the university.

Patent Decision Process
As a sign of serious commitment to research and scholarly activity, and in order to protect the potential marketability of the inventions or discoveries resulting from a previously contracted project, the university, upon the written request/disclosure of the inventor(s) to the coordinator of organized research, may wish to pursue a patent for the invention or discovery. Such disclosure of potentially significant and/or marketable inventions are actively encouraged by the university and should include statements of the circumstances under which such an invention or discovery was made and its immediate and long-term commercial possibilities.

Upon receipt of such disclosure, the coordinator will establish a committee with representation/expertise sufficient to technically evaluate the invention and its interest to Arkansas State University and the public. This committee shall consist of the coordinator in the role of chair, two members of the faculty in disciplines related to that of the invention and appointed by the dean of the inventor(s)' college (these do not necessarily have to be in the inventor(s) college), a faculty member whose expertise is similar to the inventor(s)', designated by the provost, and a faculty member appointed by the chair of the faculty senate. The university's legal counsel shall serve as a nonvoting, ex-officio member. The committee shall evaluate the discovery or invention and shall give the inventor(s) audience if they request such before an official recommendation is made.

A faculty member with a discovery or invention created externally to a specific project contract may also request, via a disclosure, that the university finance and pursue a patent. If the university does so, the inventor(s) and university will enter into a contractual agreement specifying the sharing of future income. However, this split will normally be 50%/50%.

Within 60 calendar days of receipt of said disclosure by the coordinator of organized research, the committee, through a majority vote, will recommend to the president: (1) that the university proceed to patent the discovery or invention or (2) that the university waive all future rights to the same. A written copy of the recommendation and justification shall be simultaneously submitted to the inventor(s).

The president shall have 30 calendar days to respond in writing to the inventor(s) as to the actions taken. The inventor(s) has/have the obligation to be available to provide additional information as needed in this stage of the procedure.

University Rights When Development Rights Declined
If the president decides that 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 all of its rights to the invention, except that the university will be reimbursed, from the invention, for all previous project expenses and retain royalty-free license rights to practice for its own purposes. The university shall at the time of this waiver, provide the inventor(s) a detailed list of all previous and to-be-reimbursed ASU expenses to aid the inventor(s) in his/her decision whether to independently pursue development and commercialization of the invention.

If the university elects to pursue a patent, costs of the patent application and related activities shall be paid from university funds.

Division of Income
In the absence of any income-sharing provisions in previous, project-specific contracts, all income shall be divided, between the inventor(s) and university, in the following manner: 50%/50% split of the net income (gross income less patent and contracted university project support). In the absence of other written agreements, each bonafide inventor(s) will receive an equal share or the inventor(s) 50%.

The university's share of this income will be divided as follows:

  1. 50% to the university general funds in support of university-wide research with an emphasis on major capital equipment items, and

  2. 50% to support research in the area from which the work originated and administered by the creator of such income (in the event that the creator is no longer employed at the university, these funds shall be administered by the appropriate program successor/administrator).
This policy is superseded by any prior written agreement entered into by the university faculty member and outside sponsoring agency.

Adopted by the Arkansas State University Board of Trustees on October 11, 1990.

This page is maintained by Cassey Tune
Last updated on 10/15/2009.