Persons to whom this policy applies are responsible for disclosing to the University any Intellectual Property that could reasonably be expected to have commercial value and, in accordance with this policy, be owned by the University. Disclosure shall be made to the Associate Provost for Research and Sponsored Programs using the MSU Invention Disclosure Form. The Associate Provost will coordinate the review of the Disclosure by the Intellectual Property Committee (IPC). The IP creator(s) will cooperate in the execution of legal documents and in the review of literature and prior art (e.g., patent searches); be given the opportunity to assist in the further commercial development of the IP; and receive consideration regarding any income derived from the commercialization of such property as described herein.
In the event that two or more persons are entitled to claim ownership of the Intellectual Property, the creators shall reach agreement between and among themselves regarding relative contributions for the purposes of distribution of net income from the commercialization of said intellectual property. That agreement should be in writing and notarized. The agreement will be required prior to review by the University IPC.
Creators should particularly note that certain acts (e.g., publication of the IP in an academic journal or possibly presentation at a conference) can constitute a statutory bar to patent protection. Creators contemplating public disclosure activities prior to filing an IP Disclosure Form should contact the Associate Provost for Research and Sponsored Programs prior to engaging in those disclosure activities.
Disclosure and Review Procedures
Upon receipt of an Intellectual Property Disclosure Form, the Associate Provost for Research and Sponsored Programs shall notify the creator(s), in writing, of the official receipt date, and convene the IPC for evaluation of said disclosure.
The committee shall conduct an investigation as it deems necessary in performing its evaluation. The creator(s) shall make available, upon request, originals or copies of all documents and designs, including logs, research workbooks, etc., that are necessary to support an understanding of the IP and its scope and value. Moreover, as necessary, the creator(s) shall assist the IPC in obtaining and maintaining legal protection for the IP by disclosing essential information, signing applications and other necessary documents, and assigning technology rights. The University will reimburse the creator(s) for any and all reasonable expenses incurred complying with IPC requests for additional information.
Upon completion of the evaluation, the IPC shall provide its recommendation as to ownership of the intellectual property, appropriate patent protection, and commercialization opportunities. The Associate Provost for Research and Sponsored Programs shall transmit these recommendations to the Provost and Vice President for Academic Affairs of the University, who shall render the decision to pursue protection of the intellectual property. The Associate Provost for Research and Sponsored Programs shall communicate the decision, in writing, to the creator(s) and the IPC. This decision shall be communicated to the creator(s) within one-hundred and twenty (120) calendar days of receipt of the initial disclosure and requested supportive documentation. The IPC may extend this deadline if further examination is needed or additional information is required. The creator(s) must be informed of the reasons for the deadline extension, in writing, at least fifteen (15) days prior to the end of the original deadline. The extended deadline may not exceed forty-five (45) calendar days, unless mutually agreed upon by all parties.
If the deadline is not formally extended and a decision has not been rendered within the one-hundred and twenty (120) day period, then the time shall have lapsed and primary ownership rights to the disclosed intellectual property shall be returned to the creator, except a perpetual, non-exclusive, non-transferable, royalty free license/right shall be retained by the University for non-commercial use of the disclosed Intellectual Property.
If the decision of the Provost is not to seek patent or copyright protection of the disclosed intellectual property, and the University has an ownership interest in the intellectual property, the University’s ownership interest shall be assigned to the creator(s). The Associate Provost for Research and Sponsored Programs will administer this action.
For disclosed intellectual property in which the University is deemed to have an ownership interest, following a decision by the Provost of the University to seek patent protection, copyright registration, and/or commercialization of the Intellectual Property, the Associate Provost for Research and Sponsored Programs shall arrange to have these activities undertaken and oversee execution. All direct costs associated with those activities shall be borne by the University.
For inventions made in the course of a project funded in whole or in part by a federal agency, the Bayh-Dole Act (37 CFR 401) imposes certain reporting requirements associated with the technology transfer process. The Associate Provost for Research and Sponsored Programs is responsible for ensuring that those requirements are satisfied.