20.1 University Authority and Responsibilities. Section 1004.23, Florida Statutes, authorizes each University to establish rules and procedures regarding patents, copyrights, and trademarks. Such rules and procedures will be consistent with the terms of this Article.
20.2 Definitions. The following definitions will apply in Article 20:
(a) A “work” includes any copyrightable material, such as printed material, computer software or databases, audio and visual material, circuit diagrams, architectural and engineering drawings, lectures, musical or dramatic compositions, choreographic works, pictorial or graphic works, and sculptural works. Instructional technology material, as defined in section 10.9(a), Instructional Technology, is included in the definition.
(b) An “invention” includes any discovery, invention, process, composition of matter, article of manufacture, know-how, design, model, technological development, strain, variety, culture of any organism, or portion, modification, translation, or extension of these items, and any mark used in connection with these items. Instructional technology material, as defined in section 10.9(a), Instructional Technology, is included in this definition.
(c) “Instructional technology material” is defined in section 10.9(a), Instructional Technology.
(d) University support” includes the use of University funds, personnel, facilities, equipment, materials, or technological information, and includes such support provided by other public or private organizations when it is arranged, administered, or controlled by the University.
(a) Independent Efforts. A work made in the course of independent efforts is the property of the faculty member, who has the right to determine the disposition of such work and the revenue derived from such work. As used in this section, the term “independent efforts” means that:
(1) the ideas came from the faculty member;
(2) the work was not made with the use of University support; and
(3) the University is not held responsible for any opinions expressed in the work.
(b) University Supported Efforts.
(1) If the work was not made in the course of independent efforts, the work is the property of the University and the faculty member will share in the proceeds therefrom.
(2) Exceptions. The University will not assert rights to the following works:
- those works for which the intended purpose is to disseminate the results of academic research or scholarly study, such as books, articles, or electronic media; and
- works developed without the use of appreciable University support and used solely for the purpose of assisting or enhancing the faculty member’s instructional assignment.
(1) Upon the creation of a work and prior to any publication, the faculty member will disclose to the President or representative any work made in the course of University supported efforts, together with an outline of the project and the conditions under which it was done. Consistent with the provisions of section 20.3(b)(2)a., above, faculty need not disclose regarding books, articles, and similar works, the intended purpose of which is to disseminate the results of academic research or scholarly work.
(2) The President or representative will assess the relative equities of the faculty member and the University in the work.
(3) Within sixty (60) days after such disclosure, the President or representative will inform the faculty member whether the University seeks an interest in the work, and a written agreement will thereafter be negotiated to reflect the interests of both parties, including provisions relating to the equities of the faculty member and the allocation of proceeds resulting from such work. Creation, use, and revision of such works will also be the subject of the written agreement between the faculty member and University, as well as provisions relating to the use or revision of such works by persons other than the creator. The faculty member will assist the University in obtaining releases from persons appearing in, or giving financial or creative support to, the development or use of these works in which the University has an interest. All such agreements will comport with and satisfy any pre-existing commitments to outside sponsoring contractors.
(4) The faculty member and the University will not commit any act which would tend to defeat the University’s or the faculty member’s interest in the work and will take any necessary steps to protect such interests.
(a) Disclosure/University Review.
(1) A faculty member will fully and completely disclose to the President or representative all inventions which the faculty member develops or discovers while employed by the University, together with an outline of the project and the conditions under which it was done. With respect to inventions made during the course of approved outside employment, the faculty member may delay such disclosure, when necessary to protect the outside employer’s interests, until the decision has been made by the outside employer whether to seek a patent.
(2) If the University wishes to assert its interest in the invention, the President or representative will inform the faculty member within one hundred twenty (120) days of the faculty member’s disclosure to the President or representative.
(3) The President or representative will conduct an investigation which will assess the relative equities of the faculty member and the University in the invention, and determine its importance and the extent to which the University should be involved in its protection, development, and promotion.
(4) The President or representative will inform the faculty member of the University’s decision regarding the University’s interest in the invention within a reasonable time, not to exceed one hundred thirty-five (135) days from the date of the disclosure to the President or representative.
(5) The division, between the University and the faculty member, of proceeds generated by the licensing or assignment of an invention will be negotiated and reflected in a written contract between the University and the faculty member. All such agreements will comport with and satisfy any pre-existing commitments to outside sponsoring contractors.
(6) The faculty member will not commit any act which would tend to defeat the University’s interest in the matter, and the University will take any necessary steps to protect such interest.
(b) Independent Efforts. All inventions made outside the field or discipline in which the faculty member is employed by the University and for which no University support has been used are the property of the faculty member, who has the right to determine the disposition of such work and revenue derived from such work. The faculty member and the President or representative may agree that the patent for such invention be pursued by the University and the proceeds shared.
(c) University Supported Efforts. An invention which is made in the field or discipline in which the faculty member is employed by the University, or by using University support, is the property of the University and the faculty member will share in the proceeds therefrom.
(d) Release of Rights.
(1) In the event a sponsored research contractor has been offered the option to apply for the patent in an invention or other rights in an invention, the University will use its good offices in an effort to obtain the contractor’s decision regarding the exercise of such rights within one hundred twenty (120) days.
(2) At any stage of making the patent applications, or in the commercial application of an invention, if it has not otherwise assigned to a third party the right to pursue its interests, the President or representative may elect to withdraw from further involvement in the protection or commercial application of the invention. At the request of the faculty member in such case, the University will transfer the invention rights to the faculty member, in which case the invention will be the faculty member’s property and none of the costs incurred by the University or on its behalf will be assessed against the faculty member.
(3) All assignments or releases of inventions, including patent rights, by the President or representative to the faculty member will contain the provision that such invention, if patented by the faculty member, will be available royalty-free for governmental purposes of the State of Florida, unless otherwise agreed in writing by the University.
(e) University Policy.
(1) The University will have a policy addressing the division of proceeds between the faculty member and the University.
(2) Such policy will be the subject of consultation meetings pursuant to section 2.1 (Consultation with President).
(f) Execution of Documents. The University and the faculty member will sign an agreement individually recognizing the terms of this Article.
20.5 Outside Activity.
(a) Although a faculty member may, in accordance with Article 21 (Conflict of Interest/Outside Activity), engage in outside activity, including employment, pursuant to a consulting agreement, requirements that a faculty member waive the faculty member’s or University’s rights to any work or inventions which arise during the course of such outside activity must be approved by the President or representative.
(b) A faculty member who proposes to engage in such outside activity will furnish a copy of this Article and the University’s patents policy to the outside employer prior to or at the time a consulting or other agreement is signed, or if there is no written agreement, before the employment begins.