Enacted on December 12, 1980 The Patent & Trademark Act (Public Law 96-517) created a uniform patent policy among Federal agencies that fund research. Bayh-Dole enables small businesses and non-profit organizations, including universities, to retain title to materials and products they invent under federal funding. Subsequent amendments created uniform licensing guidelines and expanded the law to include all federally funded contractors (Public Law 98-620). The implementing regulations for Bayh-Dole are published at 37 CFR Part 401.
A form of protection that prevents copying of “original works of authorship” that is tangible. These works include literary works, musical works, dramatic works, sculptural works, architectural works, pantomimes, choreography, pictorials, graphics, motion pictures, sound recording and software.
A complete substantially computer-based package of content, assessment materials, and structure for interaction that permits a course to be taught without requiring physical access to a student.
A dissertation is an extended written treatise, in which the doctoral student exposits original research results and interpretations. The dissertation is an essay that demonstrates excellence in scholarly ability, intellectual acuity, and erudition. The dissertation stands as the culmination of the degree of Doctor of Philosophy (Ph.D.), Doctor of Education (D.Ed.), or Doctor of Psychology in Clinical Psychology (Psy.D.). A dissertation is required of all doctoral candidates and must demonstrate the candidate’s mastery of his/her research and reflect the results of an original investigation in the principal field of study. The goal should be to make a definite original contribution to knowledge in the field. To qualify as a thesis or dissertation, the document typically:
- Must be demonstrably original work
- Must be the student's own work
- Must never have been previously submitted for college credit or used for any other academic purpose
- Must never have been published in its entirety (including on the Internet)
- Must demonstrate mastery of written, Standard American English
- The topic must be sufficiently important to be approved by the thesis/dissertation committee, and the methodology must be efficacious and acceptable to the same committee
A student and faculty working together that goes beyond the standard for an undergraduate or graduate student at a PASSHE University. The term must be defined in comparison to the ususal level of support provided to all students within a department or discipline. The definition may vary from one discipline to another. The determination must be made by the department or division head and is subject to the affirmation of the dean. Collaboration may take to the form of a student assisting faculty with research or creative activities. It may take the form of students and faculty working together to develop an exhibit or production of works of art, outside of for-credit courses. It does not include independent study courses taken for credit. It does not include work for pay or other compensation under the guidance of a faculty or staff person. Should a question arise about whether collaboration is beyond the standard, a written statement will be obtained from the unit leader (department or division head, dean, director, etc.) concerning the level of collaboration.
A graduate thesis is a scholarly piece of writing in which a graduate student is expected to show a command of the relevant scholarship in his/her field and contribute to that scholarship. It should confront an unresolved question and present a resolution. The thesis stands as the culmination of a research master’s or clinical doctoral degree.
An independent study is a course of study, for credit, designed by a graduate or undergraduate student and a sponsoring faculty member. The student works independently on the project and material throughout the term, consulting with the faculty member on a periodic basis.
Term used to describe the patents, copyrights, mask work protection, trade secrets, and plant variety protection certificates that cover or pertain to inventions.
Any technical contribution, discovery, process, method, use, design, improvement, modification or combinations thereof, conceived of and reduced to practice during the course of research carried out for or at the University. Includes computer software, novel machines, devices, compositions of matter (compounds, mixtures, genetically engineered cells, plants or animals), genetic forms, mask works, production processes, production methods, plant varieties, etc. that did not previously exist.
For an invention to qualify for a U.S. patent it must be novel, non-obvious, and useful. It can be a device, a manufacturable article, a machine, a composition of matter, a process or method, or a new, useful improvement.
Invention and Copyright Assignment Agreement
An agreement between the University and the faculty, staff or student inventor(s) or developer(s) which allocates between the University and the inventor, the title, ownership and rights to the invention or materials that results from research carried out at or for the University in exchange for the monetary considerations.
One who conceives and either personally or through someone else reduces the invention to practice. The conception of an invention is complete if the inventor is able to make a disclosure that would enable someone skilled in the art to make the invention without extensive research or experimentation. Someone who constructs the invention based on the inventor’s conception or who merely assists in the reduction to practice of an invention is not an inventor. Failure to name the correct inventors can result in invalidation of the patent. It is the obligation of all inventors to adequately document their inventive contributions in laboratory notebooks. Inventorship is distinct from authorship and ownership.
Material support for student academic research will mean that for the project that produced the Intellectual Property the creator received staff, salary or facility support beyond the standard resources provided to a student in the University. The term must be defined in comparison to the usual level of support provided to all students within a department or discipline. The definition may vary from one discipline to another. The determination must be made by the department or division head, subject to the affirmation of the dean. Should a question arise about whether support is beyond the standard, a written statement will be obtained from the unit leader (department or division head, dean, director, etc.) concerning the level of use of PASSHE University support and facilities.
Material Transfer Agreements
Mechanisms for obtaining needed research materials, including but not limited to biological material. They are frequently required when a provider of material or data deems it necessary in the following circumstances:
The material and/or information is proprietary;
The material or information is being maintained as a trade secret;
The material is infectious, hazardous or subject to special regulations;
The provider is concerned about potential liability; and/or
The provider wishes to obtain rights to the results of the research in which the material or information is to be used (COGR, 2003)
Those items which arise from work performed by faculty, staff or students that can lead to copyright protection and could include course work, books, films, recordings, grants, software and other publications developed outside of those needed for individual classroom instruction as defined in Article 39, Paragraph B. 2. of the APSCUF Collective Bargaining Agreement. This should not be confused with research materials described in Material Transfer Agreements.
As defined in the APSCUF CBA, is the total income generated by the licensing, sale, distribution or commercialization of an invention, less the direct and indirect expenses incurred by the University for:
Substantial use of University resources/support/facilities.
The sale or licensing of the invention.
The production, development, maintenance, and distribution of the patent or copyright and/or invention.
Litigation and other steps to obtain, maintain, enforce or defend patent or copyright.
Other Covered Individuals
Individuals who are required to sign the Intellectual Property Agreement, but are not employees or students of the University are considered “Other Covered Individuals.” This includes emeritus/retired faculty, visiting scholars/scientists, contract employees, consultants and others engaged in research at the University who are not employees or students.
A grant to the owner or assignee of the patent the right to exclude others from making, using or selling the invention for a term of twenty years from the date of the patent application. Provisional patents are typically filed as a “placeholder” for one year; non-provisional patents are examined and patents issued by the US Patent Office.
Novel, non-obvious, and useful discovery that excludes printed matter and pure algorithms, but includes:
- Manufacturable article
- Composition of matter
- Process or method
- New, useful improvement
Projects or activities that are part of a for-credit course where students are presented with the opportunity to participate, in which the ownership of any resulting Intellectual Property must be assigned either to the University or to a sponsoring entity (such as a company) as a condition of the student’s participation.
Research and creative activities or service projects funded by Federal and non-Federal agencies and organizations.
Substantial use of institutional resources is a provision in the APSCUF CBA and only applies to faculty of PASSHE Universities. The term has no applicability to other employees or to students or to non-employees. It means that for the project that produced the Intellectual Property the faculty member/creator received staff, salary or material support beyond that normally provided to the creator (i.e. faculty) at the University. For operational purposes it is defined identically to that of Paragraph C. 4. of Article 39 of the APSCUF CBA. It is reproduced here for completeness.
Use of University resources/support/facilities will be considered substantial if the use of such resources/support/facilities is important to the creation of Intellectual Property and the University aid exceeds a cumulative total of $40,000 per project, for any combination of the items listed below over a three-year period. Examples of such support items include but are not limited to the following:
Alternate assignment, and/or special assignment for a specific project or task.
Use of University funds designated for a specific project or task.
Use of University-owned, administered, leased equipment, facilities, materials or technological information.
Support provided by other public or private organizations when it is arranged, administered, or controlled by the University.
Assistance of one or more University employees or students, or others who are assigned to the project or task.
Examples of such support to not include the following:
- Mere incidental use of University resources/support/facilities.
- Normal academic use of facilities commonly available to faculty members, staff, or the public, such as libraries, offices, office equipment, or internet services.
- Use of university sabbatical leave unless there was substantial use of University resources/support/facilities as defined above.
The process whereby University creative and scholarly works may be put to public use and/or commercial application.
Technology Licensing Officer.
Technology Transfer Office.
University Authorized Official. Assists or designates administrators to assist University personnel with patent disclosures, ownership determinations and conflict-of-interest issues related to technology transfer and entrepreneurial activities. Has a primary role in monitoring adherence to, and advising personnel on, PASSHE and University procedures in these areas. Organizes or designates personnel to organize on-campus education and outreach efforts, including collaborative efforts with the PASSHE TTO, such as information meetings on Technology Transfer matters, conflict-of-interest, and technology transfer aspects of outside activities. Makes the final determination to pursue patent filings and incur the costs associated with such action. Authorizes submission of Disclosures to the TTO. Ensures appointment letters contain references to the Guidelines. Consults with the Technology Transfer Office and University Legal Counsel on the more complex issues.
Part-time and full-time faculty, part-time and full-time staff and administrators, paid or otherwise compensated undergraduate and graduate students, and others with a defined relation to the University. Students who receive a tuition waiver conditioned on work or service hours are considered University employees for purposes of this policy.
Any facility available to the inventor as a direct result of the inventor’s affiliation with the PASSHE University, or any facility available under the University’s policies on co-operative use of research equipment, or policy on use of facilities by emerging technology enterprises, and which would not otherwise be available to a non-PASSHE affiliated individual.
PASSHE University faculty, which includes:
University employees and other covered individuals including:
Part-time and full-time faculty
Part-time and full-time staff and administrators
Fellows and visiting scholars/scientists
Paid or otherwise compensated undergraduate and graduate students – Students who receive a tuition waiver conditioned on work or service hours are considered University employees or personnel for purposes of this policy, although students who receive an unconditioned tuition waiver are NOT included in the definition
Others engaged in research at the University who are not employees or students
Research covered under an official University research contract and any research like activity or other creative endeavor carried out by employees in the course of their official duties or responsibilities, or any activity that makes substantial use of institutional resources.
Research and creative endeavors supported by the PASSHE University carried out by employees in the course of their official duties or responsibilities, or any student research and creative endeavors that receives material support from the PASSHE University.
Work for Hire
The U.S. Copyright Act defines a “work made for hire” as (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. A “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.
The APSCUF Collective Bargaining Agreement further clarifies that the creator is compensated by PASSHE. An operational definition of work for hire for these guidelines is:
Work commissioned by the University and developed by faculty under campus consulting, extra service or technical assistance agreements regardless of compensation,
work completed by non-faculty employees, students, and personnel as part of the scope of employment.
Ownership and creative control of works made for hire by PASSHE faculty will be governed by an agreement between the University and the faculty member made prior to the commencement of the work.
"Work made for hire" is a term of art that should be applied to intellectual property that is subject to the Copyright Act and NOT to other types of intellectual property, such as inventions, in general.
 APSCUF CBA, Art. 39.B.9