TECHNOLOGY TRANSFER AND INTELLECTUAL PROPERTY PROCEDURES

Disclosure Process

When a new work has been created or invented, and if university resources or a sponsored program were instrumental in bringing about the work, there is an obligation to disclose the invention or creative piece. The contact person for disclosing is the Information Services Manager in the Office of Academic Research and Sponsored Programs.

An Intellectual Property Disclosure Form needs to be completed by the author or inventor. When the information is completed, (i.e., a brief description of the work, the circumstances surrounding its creation, identification of funding or costs for the development of the work, indication of department chair/college dean knowledge of the project and concurrence with identification of costs), the disclosure is brought before the University Patent and Copyright Committee. The Committee makes recommendations for patent or copyright ownership and for distribution of royalty income to the Provost, who makes formal approval for the university.

Patent and Copyright Committee

The Patent and Copyright Committee, an eight-member body comprised of four faculty, one professional personnel individual, one student, and two ex officio university administrators, is responsible for implementing the Patent and Copyright Policies.

The Committee assists authors and inventors in the promotion of their works in whatever ways are deemed appropriate. This may involve deliberations over the proper form of legal protection or help in determining the best marketing route.

The Committee's procedural duties are to recommend patent or copyright ownership of a work (the ownership going either to author/inventor or to the university) and to structure a distribution of royalty income schedule.

The Patent and Copyright Committee is not to be confused with the Intellectual Property Internal Grant committee, which is the review panel making recommendations for the funding of that award. Neither is it to be confused with the Faculty Publications and Intellectual Properties Committee, a decision-making group for the determination of funding of Ball State University works to be published by University Relations.

Ownership

The university distinguishes between authorship/inventorship and ownership of a work.

• Authorship or inventorship resides with the person(s) who has created the work -- designed or written software, produced a video, crafted a tutorial tool, or discovered an improved manufacturing process, for example.
• Ownership refers to the legal possession of a patent granted by the U.S. Patent and Trademark Office or of a copyright registered with the U.S. Copyright Office.

The determination of copyright or patent ownership is based on the extent to which university resources, facilities, or other support or contracts were involved in the development of the work or whether the material was created within the scope of employment duties. If the work's creation is dependent upon university involvement, most likely the ownership will go to the university.

University ownership, however, does not diminish the primary role of the author or inventor of a work. Authors and inventors maintain creative control of the development, enhancement, or presentation of the work; they are entitled to receive a share of royalties which may accrue; they are free to use the work for their own personal or professional purposes; and their wishes are considered in any decisions for public distribution or use.

Royalties

The Patent and Copyright Policies stipulate that the first $1,500 go to authors or inventors, and after that, the university has the right to recover expenses. However, royalties accruing upon commercialization are generally applied according to a standard distribution schedule in the following way.

1. The first $1,500 to the author(s); then
2. * Costs recovered in relation to project costs:
   1. Works supported in amounts over $100,000: 20% to author(s);80% to unit(s) incurring cost; then
   2. Works or balance of works supported in amounts $25,001-100,000: 30% to author(s) and 70% to the unit(s) incurring costs; then
   3. Works or balance of works supported in amounts $25,000 and under: 50% to author(s) and 50% to the unit(s) incurring costs; then
3. 50% to author(s); 25% to unit(s) incurring costs; 25% to Patent and Copyright Development Account.

* Alternate 2. Optional Marketing/Development Fund vested and maintained, then a.,b.,c. as above

The author/inventor share is divided between or among those partners according to their determination or equally, if no indication is given by the partners.

Technology Transfer

Following disclosure to the Patent and Copyright committee and recommendation of ownership and income distribution, the work is poised for the marketplace.

In some instances, the university may license the work to a third party, such as a publisher, distributor, or other commercial concern. A licensing agreement is drawn which specifies distribution rights to the licensee and the royalty rate to be returned to the university (which, in turn, is distributed according to Patent and Copyright Committee specifications).

In other cases, the university may market the work directly to the education community, business/industrial world, or to individuals. A promotional brochure describing the work is created and is circulated to individuals or groups who may then order the work directly from the university.

Either way, the university seeks to fulfill its commitment to support faculty, professional personnel, and students in their creative efforts and to transfer to the public products and services emerging from academic inquiry and creativity.