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Regulations & Policies

Academic Affairs - Research and Sponsored Programs

I. OBJECTIVE & PURPOSE

This policy sets forth the requirements for all students, out-of-unit faculty, and staff in the ÀÏ°ÄÃÅ×ÊÁÏ community regarding the development, disclosure, and ownership of intellectual property. This policy is intended to complement the statutory protections provided to the University pursuant to Florida Statutes 1004.22 and 1004.23  and other state or federal statutes, regulations, and laws governing intellectual property.

This policy does not apply to faculty who are subject to the collective bargaining agreement (CBA) between the University and the United Faculty of Florida (UFF), the union representing in-unit faculty, as the CBA contains its own provisions regarding the development, disclosure, and ownership of intellectual property that govern the University and covered faculty.

II. DEFINITIONS

The following definitions shall apply for purposes of interpreting and implementing this policy:

Work includes any material that may be subject to copyright 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.

Invention includes any discovery, apparatus, process, composition of matter, article of manufacture, design, model, technological development, strain, variety, culture of any organism, or portion, modification, translation, or extension of these items, and any trademark used in connection with these items.

Intellectual Property is a collective term referring to intellectual works and inventions that may be subject to patent, copyright, trademark, or other protections at law or equity.

University Support includes the use of University time, funds, personnel, facilities, equipment, materials, or technological information; as well as support provided by other public or private organizations when it is arranged, administered, and/or controlled by the University or is incidental to faculty, staff, or student employment. Student research and development activities conducted as part of the curricular requirements of the student’s degree program are excluded from University Support. However, University Support includes the effort of students when employed by the University, including as graduate assistants, student research assistants, or student employees.

Independent Effort means the following: (1) the idea(s) came from the student, faculty, or staff member; (2) the invention or 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.

Faculty includes all out-of-unit faculty, including administrators and others having a faculty appointment, who are not subject to the provisions of the CBA between UFF and the University. This definition does include part-time faculty except those specifically as defined in “Directed Works” below.

Staff includes all non-faculty employees regardless of classification, work schedule, or source of funding of the position, such as Administrative and Professional (A&P), USPS, and OPS employees.

Student includes any full or part-time degree or non-degree seeking individual who is enrolled at the University in an undergraduate or graduate course.

Directed Works are those works or inventions created by faculty or staff with University Support and as a specific requirement of employment or pursuant to an assignment that may be included in a written job description or employment agreement. Such works include those made for hire where the University owns the intellectual property rights by virtue of the manner in which the works were directed to be created. These works may include those that are created by a unit or department for the purpose of making such works available to individuals or entities other than, or in addition to, the creator(s) for use in teaching, research, public information, or other University activities.

III. STATEMENT OF POLICY 

The University strongly encourages research and development of intellectual property by all members of the University community and has developed this policy to provide all covered community members notice of the requirements for disclosure of covered research efforts. The authority and responsibility for administration and implementation of this policy is delegated to the Associate Vice President for Research.

It is understood that many research contracts, grants, and consulting agreements from or with the United States Government or its agencies, private or public organizations and corporations, or individuals contain ownership of intellectual property clauses that may be at variance with this policy but which, if agreed to by the University, require compliance.

1. Intellectual Property Rights of the University.
   1. The University has the legal authority to take any action necessary to secure letters of patents, copyrights, and trademarks, or to otherwise protect intellectual property that is produced by any student, faculty or staff member utilizing University Support, regardless of the source of the support.
   2. The University has the right to contract with a patent or copyright management development agency, or other outside entity, for the purpose of patent or copyright application, development, and management. In such cases, the contract will specify distribution of the proceeds from the disposal of the patent or copyright to the University, which will in turn distribute the appropriate amount to the creator of the invention or work and other areas of the University as provided for in a revenue sharing agreement as described in this policy.
   3. Ownership of any copyrights, patents, or other rights resulting from such action shall rest with the University, and any resulting proceeds, except those derived from Directed Works, shall be shared with the student, faculty or staff person in accordance with a revenue sharing agreement as described in this policy.
2. Intellectual Property Rights of Students, Faculty, and Staff.
   1. Faculty, staff, or students who develop intellectual property for which the intended purpose is course instruction or the dissemination of the results of academic research or scholarly study, such as course notes and course preparation materials, books, articles, online course materials, or other media for scholarly, creative, or instructional purposes, shall be the copyright owner of these materials and the University will not assert an ownership interest in such academic intellectual property. The only exclusion to this portion of the policy is where a student, faculty member, or staff member has been assigned a Directed Work where the intention of the parties is reduced to a written agreement that any invention or work developed by the faculty member pursuant to the agreement shall be the exclusive property of the University or of the outside sponsor supporting the Directed Work, in accordance with the contractual terms of any agreement between the University and the outside sponsor.
   2. Students, faculty, or staff who utilize University Support in producing intellectual property other than Directed Works or academic intellectual property as defined above, will have the right to share in any proceeds derived from the intellectual property in accordance with the distribution procedure set forth in this policy, unless the University Support is provided by a private or public organization for which the University has contractually relinquished its rights to intellectual property created as a result of the sponsored efforts..
   3. Students, faculty or staff who develop intellectual property utilizing entirely their own independent efforts, as defined by this policy, are not required to share with the University the intellectual property rights derived from their independent efforts.
3. Preservation of Intellectual Property Rights.
   1. Faculty, staff, and students may be afforded the opportunity to engage in research and development activities during approved outside employment. However, faculty, staff, and students are prohibited from entering into agreements where they waive their rights or the University’s rights to any intellectual property rights to inventions or works during the course of such outside employment. If the outside employer requires the execution of such a waiver, the faculty, staff, or student must first seek and be granted written permission from the President or his/her designee, the Associate Vice President for Research, to waive the University’s intellectual property rights.
4. Required Disclosure of Intellectual Property.
   1. To protect the rights of the inventor and the University, timely reporting of an invention or work created with University Support is required. A disclosure shall be made as soon after conception as possible to permit prompt evaluation and protection of the intellectual property. Public disclosure of the invention or work, including through any report, publication, or presentation, should be avoided to ensure that the invention or work can be protected by patent or copyright.
   2. The student, faculty, or staff member shall disclose to the Associate Vice President for Research any invention or work made in the course of University-supported efforts The disclosure should identify the invention or work and describe the individual’s efforts and the conditions under which the individual has worked on the intellectual property. This disclosure and any supporting documentation generated, ascertained, or discovered during the course of the University’s assessment of whether to assert its rights to the intellectual property will be kept confidential and treated as exempt from a public record request made pursuant to Section 119.07, Florida Statutes.
   3. The University will review the disclosure and advise the individual submitting the disclosure whether further information is needed for the University to assess whether it will assert its interest in the intellectual property. Once the University receives all necessary information to make its assessment, the University will inform the disclosing individual that it is beginning its assessment process.
5. The University’s Assessment of Whether to Assert its Property Interest.
   1. After notifying the disclosing individual that it is beginning its assessment process, the University, within 120 days, will advise the individual whether it will assert its interest in the intellectual property.
   2. The University may seek the assistance of outside entities in assessing whether to assert an interest in the intellectual property. Should an outside entity require further information from the disclosing individual, the individual shall provide the requested information to the University as quickly as possible. Should the disclosing individual delay in providing the requested information, the University’s assessment period will be extended commensurate with the length of delay of the disclosing individual in providing the requested information.
   3. In instances where the University does not choose to assert its interest, or decides to withdraw from the process, the University shall notify the disclosing individual that it will not assert its rights in the disclosed intellectual property.
   4. In instances where the University intends to assert its rights in the intellectual property, the University will notify the disclosing individual of its intent to assert its interest and reach a contractual agreement regarding the intellectual property with the disclosing individual.
6. Intellectual Property Ownership and Revenue Sharing
   1. The University will work with the disclosing individual and/or his or her legal representative to reach a written contractual agreement that specifies the parties’ rights and equities in the intellectual property.
   2. All such contractual agreements shall conform with and satisfy any pre-existing University commitments to outside sponsoring contractors. Further, the disclosing individual and the University shall not commit any act which might defeat the University’s or disclosing individual’s interest in the intellectual property, and the parties shall take any necessary steps to protect such interests.
   3. The University seeks an equitable distribution of proceeds between the University and the student, faculty or staff person who creates or invents intellectual property. The University will first recover the costs of establishing and maintaining its rights by copyright or patent including the direct costs of patenting, licensing, legal, and other related expenses. The remaining net income resulting from works, inventions, and discoveries to which the University retains title, unless negotiated in a distribution format to the contrary, will be divided as follows:

               For the first $5,000 in net income: 75% to the creator(s) of the invention/works and 25% to the University.

               For net income in excess of $5,000: 50% to the creator(s) of the invention/works and 50% to the University.

      Creator(s) share defined above is divided where more than one creator participated, with each relative share assessed and established in the distribution agreement(s). Creators are entitled to their share of net income even if they are party to a license agreement for the intellectual property, such as if they are owners of a spinoff company that has licensed the invention or work.

      4. If proceeds from the licensing or sale of University intellectual property subject to a revenue-sharing agreement are realized in the form of equity or other class of securities, then all of the equity will be held by the University, which will seek to liquidate such equity as soon as reasonably practicable, usually in the public market, rather than seek to maximize the return on the equity by trying to time the sale of the equity. The University does not act as a fiduciary for any creator of an invention or work, and no creator will have any right to vote or direct the disposition of such equity held by the University. The University has no obligation or duty regarding the relative value realized upon liquidation of such equity, or with respect to any personal tax obligations that may arise as a result of the receipt by the creator of the invention or work of a portion of the net proceeds from the disposition of such equity. Once the equity is liquidated, the proceeds will be treated as cash proceeds of the applicable license transaction and distributed as net income under the terms of this policy.
      5. The University’s share in proceeds shall be deposited in the Division of Sponsored Research Accounts in compliance with Section 1004.23, Florida Statutes.
7. University Release of University-Owned Patents.
   1. If the University has determined to discontinue or abandon patent prosecution or maintenance, it will notify the inventor(s) (and/or sponsors) at least 90 days prior to the date of loss of rights in order to permit inventor(s) (and/or sponsors) to request a release. The University may in its discretion and upon such terms as it deems appropriate release the University’s rights to an invention to the inventor (or to the inventor’s designee), who will then have the responsibility to continue the patent prosecution or/and maintenance at their expense.
8. Inventor(s) Responsibility to Notify University of Contact Information
   1. It is the responsibility of the inventor(s) to notify the University’s Office of Research & Sponsored Programs of any changes to address, email, and telephone to ensure that the University can contact the inventor(s) if necessary for successful prosecution of patent or copyright, to arrange disbursement of revenues, and to provide notice if the University’s intends to release ownership of the intellectual property.

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