ARTICLE 18

INVENTIONS AND WORKS

18.1  University Authority and Responsibilities.  Section 240.229, Florida Statutes, authorizes each university to establish rules and procedures regarding patents, copyrights, and trade­marks.  Such rules and procedures shall be consistent with the terms of this Article.

 

18.2  Definitions.  The following definitions shall apply in Article 18:

(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 9.9(a), is included in this 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 9.9(a), is included in this definition.

 

(c)     "Instructional technology material" is defined in  Section 9.9(a). 

 

(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 a university.

 

18.3  Works.

(a)     Independent Efforts.  A work made in the course of independent efforts is the property of the employee, 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 employee;

(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 employee shall share in the proceeds therefrom.

(2)     Exceptions.  The university shall not assert rights to the following works:

a.       Those works for which the intended purpose is to disseminate the results of academic research or scholarly study, such as books, articles, electronic media; and

b.       Works developed without the use of appreciable university support and used solely for the purpose of assisting or enhancing the employee's instructional assignment.

 

(c)     Disclosure. 

(1)     Upon the creation of a work and prior to any publication, the employee shall 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 18.3(b)(2)a., above, employees 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 shall assess the relative equities of the employee and the university in the work.

                   (3)     Within sixty (60) days after such disclosure, the President or representative will inform the employee whether the university seeks an interest in the work, and a written agreement shall thereafter be negotiated to reflect the interests of both parties, including provisions relating to the equities of the employee and the allocation of proceeds resulting from such work.  Creation, use, and revision of such works shall also be the subject of the written agreement between the employee and the university as well as provisions relating to the use or revision of such works by persons other than the creator.  The employee shall 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 shall comport with and satisfy any preexisting commitments to outside sponsoring contractors.

(4)     The employee and the university shall not commit any act which would tend to defeat the university's or employee's interest in the work and shall take any necessary steps to protect such interests.

 

18.4  Inventions.

(a)     Disclosure/University Review. 

(1)     An employee shall fully and completely disclose to the President or representative all inventions which the employee develops or discovers while an employee of the State University System, 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 employee 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 shall inform the employee within 120 days of the employee's disclosure to the President or representative. 

(3)     The President or representative shall conduct an investigation which shall assess the respective equities of the employee 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 shall inform the employee of the university's decision regarding the university's interest in the invention within a reasonable time, not to exceed 135 days from the date of the disclosure to the President or representative.

(5)     The division, between the university and the employee, of proceeds generated by the licensing or assignment of an invention shall be negotiated and reflected in a written contract between the university and the employee.  All such agreements shall comport with and satisfy any preexisting commit­ments to outside sponsoring contractors.

(6)     The employee shall not commit any act which would tend to defeat the university's interest in the matter, and the university shall take any neces­sary steps to protect such interest.

 

(b)     Independent Efforts.  All inventions made outside the field or discipline in which the employee is employed by the university and for which no university support has been used are the property of the employee, who has the right to determine the  disposition of such work and revenue derived from such work.  The employee 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 employee is employed by the university, or by using university support, is the property of the university and the employee shall 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 to 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 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 employee in such case, the university shall transfer the invention rights to the employee, in which case the invention shall be the employee's property and none of the costs incurred by the university or on its behalf shall be assessed against the employee.

(3)     All assignments or releases of inventions, including patent rights, by the President or representative to the employee shall contain the provision that such invention, if patented by the employee, shall be available royalty-free for governmental purposes of the State of Florida, unless otherwise agreed in writing by the university.

 

(e)     University Policy.

(1)     Each university shall have a policy addressing the division of proceeds between the employee and the university.

(2)     Such policy may be the subject of consultation meetings pursuant to Section 2.2. 

 

(f)     Execution of Documents.  The university and the employee shall sign an agreement individually recognizing the terms of this Article. 

 

18.5  Outside Activity.

(a)     Although an employee may, in accordance with Article 19, Conflict of Interest/Outside Activity, engage in outside activity, including employment, pursuant to a consulting agreement, requirements that an employee waive the employee'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)     An employee who proposes to engage in such outside activity shall 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.