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Internal Audit Office

Kansas State University
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Research Foundation

Chapter 7090
Revised July 22, 2013

Table of Contents

.010 Introduction
.020 Policies Governing Intellectual Property
.030 Disclosure and Assessment of Intellectual Property
.040 Legal Protection of Intellectual Property
.050 Non-Patentable Intellectual Property
.060 Commercialization of Intellectual Property
.070 Distribution of Revenue from Commercialization
.080 Questions

.010 Introduction

The Research Foundation is a non-profit 501(c)(3) corporation responsible for managing the technology transfer activities of KSU under an operating agreement between the two entities. The Research Foundation was established to promote, encourage, and aid research at KSU and to provide the means, methods, and agencies by which inventions and discoveries at KSU may be patented, commercialized, or otherwise disposed of for the benefit of KSU and its faculty, staff, alumni, and students. The Research Foundation is governed by a Board of Directors, a majority of which are KSU employees, and is funded through its commercialization activities.

.020 Policies Governing Intellectual Property

The Bayh-Dole Act of 1980 and subsequent amendments provide the basis for current university technology transfer practices. Among other important provisions, it allows universities to retain title to inventions that were developed at their institution through government funding and file patents on inventions they elect to own. Previously, all such ownership resided with the government. Further, universities must share with the inventor(s) income collected on the invention. Remaining income, after expenses, is to be used to support scientific research or education.

The Kansas Board of Regents' Intellectual Property Policy provides general guidelines for ownership and distribution of benefits that may be derived from the creation of intellectual property. Specific implementations of the guidelines for KSU are outlined in the University's Intellectual Property Policy and Institutional Procedures.

.030 Disclosure and Assessment of Intellectual Property

Inventions or creative works subject to the aforementioned policies are disclosed to the Research Foundation through the Intellectual Property Disclosure Form. Timing is critical in properly protecting intellectual property. Impending publications and public presentations can be damaging to legal protection and should be managed. The Research Foundation should be notified of intellectual property with perceived commercial value as soon as it is clearly conceptualized.

Written disclosures of intellectual property are presented to the Intellectual Property Advisory Committee for assessment and recommendation of a course of action. The Committee will generally recommend one of four actions: 1) purse legal protection and/or commercialization through the Research Foundation, 2) offer the rights to the project sponsor as required by the sponsored project agreement, 3) decline the rights and offer them to the inventor(s)/creator(s), or 4) defer a decision pending further information. If it is recommended that legal protection and/or commercialization be pursued, the intellectual property is assigned to the Research Foundation.

.040 Legal Protection of Intellectual Property

There are three major types of legal protection available for intellectual property. Each of them provides specific legal rights for the owner.

Inventions can be protected by patents, which grant the owner "the right to exclude others from making, using, or selling" the invention. To be patentable, an invention must be novel, non-obvious, and have utility. There are three categories of patents - utility, design, and plant. Utility patents cover inventions that function in a unique manner to produce a utilitarian result. A design patent covers the unique, ornamental or visible shape or design of an object. A plant patent covers asexually reproduced distinct and new plant varieties, other than a tuber propagated plant or a plant found in an uncultivated state.

Works of authorship are protected by copyright from being reproduced, modified, distributed, and publicly displayed or performed without the copyright owner's permission. Although not required, copyrights can be registered; registration is of relevance to infringement litigation. Copyrightable works of authorship include such things as software, multimedia, video and sound recordings, etc.

Words, names, or symbols indicating the source of goods and distinguishing those goods from others can be protected by trademark. Trademark protection prevents others from using marks that might be similar to avoid confusion.

The Research Foundation works with external patent counsel to prepare, file, and prosecute the necessary applications to protect intellectual property assigned to it. Legal protection is a lengthy, involved, and strategic process that necessitates the close cooperation of the inventor(s), external patent counsel, and the Research Foundation. In some cases, the inventor(s) may be asked to perform additional experiments in order to prove their inventive claims.

.050 Non-Patentable Intellectual Property

Intellectual property may exist in the form of material that is not protectable by legal means, but by its nature is of commercial value. An example of this would be a monoclonal antibody or the like produced from a unique, continually growing, biological, culture. Intellectual property of this sort should be disclosed by its creator(s) in the same manner as described above.

.060 Commercialization of Intellectual Property

The Research Foundation contracts with the Kansas State University Institute for Commercialization (KSU-IC) for the commercialization of intellectual property that is assigned to it. From the point of disclosure, the Research Foundation and KSU-IC work with the inventor(s)/creator(s) to market the invention to companies that might be interested in further development of the intellectual property. The ultimate goal is the creation of a marketable product that yields a reasonable financial return.

A majority of the inventions disclosed are in the very early stages of development and require a substantial investment of time and money to carry them through to the final stages of production. Oftentimes it is necessary to further develop the invention in order to make it more attractive to an external company for commercialization. Various means are available for technology development, including sponsored research and formation of local start-up companies.

.070 Distribution of Revenue from Commercialization

The Kansas Board of Regents' Intellectual Property Policy directs that when any revenue is obtained by or on behalf of the institution from the development or assignment of any patent or from royalties, license fees or other charges based on any patent or copyrightable software, not less than twenty-five (25) percent of revenues shall be paid to the inventor(s) or creator(s). Revenue sharing shall begin only after the institution recoups costs as set forth in this policy.

In addition to this provision, the Research Foundation's Board of Directors elects to return ten (10) percent to the department(s)/administrative unit(s) that employ the inventor(s)/creator(s) of said intellectual property.

.080 Questions

Any questions regarding this chapter should be referred to the Research Foundation at (785) 532-5720 or tech.transfer@ksu.edu.