Board of Trustees | The Ohio State University

3335-13-06 Rights to and interests in patentable discoveries and inventions, copyrights, and related materials.

(A) This rule shall apply to all products of university research (where "university research" is as defined in the current university policy on patents and copyrights), defined to be inventions and other legally protectable material arising out of university research, including any discovery, invention, know-how, design, model, work of authorship, and any strain, variety or culture of an organism, or any portion, modification, translation or extension of these items. Products of research will not include works of artistry, academic instruction, or traditional scholarship insofar as these works were not produced in connection with a sponsored program or as a part of a specific university duty or assignment.

(B) The board of trustees deems it in the best interest of the university, its faculty, staff, and students, and in the interest of the promotion of research and development to provide for participation by faculty, staff, and students in the proceeds from products of research conceived or developed by them in the absence of any prior agreements relating to sponsored activities and insofar as allowed by any contract or grant agreements in support of the activity leading to the product of research.

(C) The board of trustees shall establish a policy on patents and copyrights to be administered under the direction of the president of the university through the office of the senior vice president for research. The provisions of the policy shall be subject to review by the faculty committee on patents and copyrights and recommended to the board of trustees by the university senate.

(1) The faculty committee on patents and copyrights shall be composed primarily of members of the university faculty and shall elect its own chair. Five members shall be elected by the faculty council in a manner to be determined by the council. One graduate student shall be appointed by the council of graduate students in a manner to be determined by that council. Five members shall be appointed by the president in consultation with the senior vice president for research, the executive vice president and provost, and other appropriate officials of the university. Service on the committee shall be for terms not to exceed three years. An individual may become eligible for committee service again after an absence from the committee of at least one year.

(2) The specific duties of and the procedures for appeals to the committee shall be as described in the policy on patents and copyrights.

(D) Subject to the authority of the president of the university, the senior vice president for research is hereby assigned the responsibility for the acquisition, protection and disposition of rights in products of university research in accord with the policy on patents and copyrights. (B/T 4/12/63, B/T 5/8/69, B/T 10/4/85, B/T 4/4/86, B/T 11/2/90, B/T 4/4/97, B/T 12/4/98, B/T 5/7/2004)

3335-13-07 Rules governing faculty and staff participation in companies commercializing university research.

(A) Policy statement.

Pursuant to section 3345.14 of the Revised Code, the university board of trustees has determined that the interests of the university will be served if faculty and some categories of staff are afforded the opportunity to hold personal financial interests in companies commercializing their university research. Faculty and staff participation in technology licensing transactions will facilitate the university's goal of making its research available for use in the private marketplace by giving researchers an incentive to develop inventions with commercial applications. The opportunity to participate in these transactions is also essential to the university's efforts to attract and retain highly-qualified researchers. The procedures and guidelines set forth in these rules are intended to enable the university to realize the benefits of these entrepreneurial activities while protecting the integrity of our research and educational mission and to comply with university policies and applicable federal and state laws.

(B) Definitions.

(1) A technology commercialization company is a private commercial entity that is owned in whole or in part by a university employee and that has as its purpose the development and commercialization of university-owned technology created by that employee.

(2) The university's ownership of intellectual property rights in technology created by its faculty and staff is determined in accordance with section 3345.14 of the Revised Code and the university policy on patents and copyrights. As more fully explained in the policy on patents and copyrights, university-owned technology generally does not include textbooks and other scholarly and artistic works.

(3) The technology transfer oversight committee is the university body responsible for the approval and oversight of technology commercialization companies pursuant to a delegation of authority from the university board of trustees.

(4) The conflicts of interest administrator is the university official who is responsible for assisting faculty and other university employees in identifying, managing and eliminating conflicts of interest, and in particular for facilitating the development of conflict of interest management plans for faculty and staff participating in technology commercialization companies.

(1) These rules shall apply to all faculty who create intellectual property owned by the university and who desire to hold an ownership interest in a technology commercialization company.

(2) These rules shall apply to staff members holding unclassified appointments, graduate associates, and student employees who:

(a) Are specifically assigned to engage in research and development activities;

(b) Create intellectual property owned by the university; and

(c) Desire to hold an ownership interest in a technology commercialization company.

(D) Responsibilities of department chairs and staff supervisors.

(1) Department chairs are responsible for ensuring that faculty who participate in technology commercialization companies comply with applicable university policies governing the terms and conditions of employment, and academic and research activities. Chairs are also responsible for ensuring compliance with the paid external consulting and faculty conflict of interest policies and for reviewing and making a recommendation as to the propriety of private business activities reported by their faculty in disclosure forms required by those policies.

(2) Staff supervisors are responsible for ensuring that employees who participate in technology commercialization companies comply with applicable university policies governing the terms and conditions of employment, and academic and research activities. They are also responsible for ensuring compliance with the university policies on conflicts of interest and work outside the university applicable to staff employees and for reviewing and making a recommendation as to the propriety of private business activities reported by staff in disclosure forms required by those policies.

(E) Approval process.

(1) Faculty and staff members who wish to participate in a technology commercialization company must first obtain approval from their department chairs and deans or other appropriate supervisors. The office for technology licensing will be responsible for establishing the business terms of the transaction between the company and the university, and the conflicts of interest administrator will facilitate the development of a conflict of interest management plan.

(2) The technology transfer oversight committee will review the sufficiency of business terms and conflict of interest management plans relating to technology commercialization companies. Written approval from the technology transfer oversight committee must be obtained before any business agreements relating to a technology commercialization company are finalized.

(3) Faculty or staff members who wish to participate in a technology commercialization company may discuss initial company formation with the office for technology licensing; however, they should not, as a general rule, participate in the ongoing negotiation of option and licensing terms between the company and university. As soon as possible, third parties, such as company management and/or legal counsel should perform this function.

(4) As a prerequisite to the granting of an exclusive license to university technology, a technology commercialization company must provide the office for technology licensing with a viable business plan including, at a minimum, the following:

(a) A capitalization plan demonstrating access to funds necessary for company growth;

(b) A proposed management team; and

(c) Milestones for product development and commercial sale.

(5) In recognition of the university's ownership of the technology, a technology commercialization company shall grant the university an equity interest in the company as negotiated by the office for technology licensing.

(6) The faculty member's department chair or the staff member's supervisor must be active participants in discussions with the technology transfer oversight committee and in the development of the conflict of interest management plan relating to a technology commercialization company.

(7) A chair or staff supervisor who has a financial interest or is a co-participant with a faculty or staff member in a technology commercialization company is not in a position to provide effective oversight of that activity. In these situations, another disinterested administrator must be appointed by the technology transfer oversight committee to perform the responsibilities of the chair or staff supervisor.

(8) If the technology transfer oversight committee determines that, for any reason, it is not possible for the chair, the staff supervisor or another disinterested administrator to provide effective oversight of a transaction involving a technology commercialization company, the transaction should not be approved.

(F) Responsibility for university duties.

(1) Faculty are encouraged to develop discoveries and inventions with commercial potential; however, they should do so with due regard to the broader teaching and research mission of the university. Faculty should not allow their interest in a financial opportunity arising out of their research efforts to influence their teaching, or to interfere with their relationships with other faculty. In particular, research assignments for students should be based on the students' interests and academic development. Faculty should respect and promote the cooperative nature of the academic environment by sharing information and participating in joint research efforts with their colleagues.

(2) While faculty are permitted by the policy on paid external consulting and these rules to engage in specified private business activities relating to their university positions, they continue to be responsible for the performance of all of their university teaching, research and service obligations. Authorized private business activities must be undertaken in accordance with the policy on paid external consulting and pursuant to formal consulting and conflict of interest management plans signed by the faculty, the technology commercialization company and the university and approved by the department chair, the conflicts of interest administrator, the office for technology licensing, and the office of legal affairs.

(3) Staff members may engage in activities relating to a technology commercialization company during regularly assigned working hours only if they take approved leave. When performed outside regularly assigned working hours, these activities must be undertaken in accordance with the university policies on conflicts of interest and work outside the university applicable to staff employees and pursuant to a formal conflict of interest management plan signed by the staff member, the technology commercialization company and the university and approved by the department chair and/or supervisor, the conflicts of interest administrator, the office of technology licensing, and the office of legal affairs.

(4) Staff members may pursue research projects as authorized by their supervisors. Supervisors should authorize only those staff research projects that will advance the missions of the university and the employing unit, without regard to the financial interests of individual employees.

(G) Conflict of interest management standards.

(1) University facilities, equipment and other resources may be used for research benefiting a technology commercialization company only pursuant to a sponsored research agreement, facilities use agreement or other appropriate contractual arrangement.

(2) As a general rule, faculty or staff should not hold management positions in technology commercialization companies. While they may initially find it necessary to play a management role in a newly-formed company, it is expected that their management responsibilities will decrease as the company develops. Professional management should be brought in at the earliest opportunity. In order to ensure the application of this principle, agreements between the university and a technology commercialization company should contain enforceable milestones for the reduction of these management responsibilities. Failure to comply with these agreed-upon milestones will result in the company's inability to engage in sponsored research, utilize student employees and the other commercialization agreements and/or activities permitted under these guidelines.

(3) Faculty should not allow their management activities with technology commercialization companies to consume a disproportionate amount of their professional attention. Faculty engaged in approved private business activities who are unable to perform all of their university responsibilities must reduce those activities or request a reduction of appointment or other approved leave. Professional improvement leave authorized under section 3345.28 of the Revised Code may not be used for private business purposes.

(4) Staff members who are unable to perform all of their university duties because of activities in connection with technology commercialization companies must reduce those activities or request a reduction of appointment or other approved leave.

(5) Graduate and undergraduate students may use university facilities, equipment and other resources to perform research benefiting a technology commercialization company only pursuant to a sponsored research agreement. As stipulated in the graduate school handbook, such research may not be used to satisfy the criteria for a thesis or dissertation if the material is restricted from publication. Students must be informed in writing of this restriction prior to the start of their research.

(6) Students may be employed by a technology commercialization company, subject to the limitation set forth in paragraph (G)(7) of this rule. Prior to such employment, the student, the faculty or staff member, the chair of the student's department, the chair of the graduate studies committee and a company representative must sign an agreement disclosing the student's rights and obligations.

(7) A student may not be employed by a technology commercialization company in which a faculty member has an ownership interest if:

(a) The student is enrolled in a course taught by the faculty member;

(b) The faculty member is a member of the student's thesis or dissertation committee; or

(c) The faculty member is the student's advisor or the director of his or her thesis or dissertation research.

Such students may perform research benefiting a technology commercialization company only pursuant to a sponsored research agreement or other formal internship agreement through the university.

(8) Technology commercialization companies may not enter into any agreements with the university for the purchase, sale or rental of equipment, supplies or services other than those explicitly authorized by the technology transfer oversight committee.

(9) As a general rule, faculty and staff members who are not directly involved with research and development of technology licensed to a technology commercialization company may not hold equity interests in that company. Equity ownership in these situations is permissible only to the extent allowed by section 2921.42 of the Revised Code.

(10) University regulatory review boards including, for example, the institutional review board and the institutional laboratory animal care and use committee, may be utilized for research benefiting a technology commercialization company only pursuant to a sponsored research agreement.

(11) As a general rule, an individual faculty or staff member should not hold more than twenty-five per cent of the outstanding equity in a technology commercialization company. While significant faculty or staff equity ownership may be inherent in a newly-formed company, it is expected that their ownership interests, as a percentage of the total outstanding shares or membership interests of the company, will decrease as the company develops and attracts additional equity. In order to ensure the observance of this principle, agreements between the university and technology commercialization companies should contain enforceable milestones for the dilution of these equity interests. Failure to comply with these agreed-upon milestones will result in the company's inability to engage in sponsored research, utilize student employees and the other commercialization agreements and/or activities allowed for under this rule.

(12) Faculty or staff members may not assume the role of principal investigator in sponsored research projects funded by technology commercialization companies in which they have an interest if the projects involve the use of human subjects, or if they are veterinary clinical trials involving the use of animals. In other cases, faculty or staff may assume the role of principal investigator if a formal research integrity plan approved by the technology transfer oversight committee, the conflicts of interest administrator and the office of legal affairs is in place.

(13) Agreements for sponsored research projects funded by technology commercialization companies must include, at a minimum, a requirement for full university publication rights and fully negotiated cost recoveries. The office of research must approve exceptions to these conditions.

(14) Faculty and staff participating in technology commercialization companies approved pursuant to these rules continue to be bound by the university policy on patents and copyrights. New inventions and/or discoveries made as a result of a faculty or staff member's research efforts for the company, including those made under formal consulting agreements, will be owned by the university, and the company will be offered an exclusive option to the technology. New inventions and/or discoveries developed by the faculty or staff member for the company must be disclosed to the office of technology licensing as required by the policy on patents and copyrights. (B/T 4/6/2001, B/T 6/29/2001)

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