Faculty Substantial Use

The “Substantial Use of Institutional Resources” by faculty is a key factor in the determination of ownership of patentable Intellectual Property under the terms of the APSCUF CBA. (However, as previously noted, “Substantial Use” is NOT a consideration in determining ownership of inventions by any University faculty as a part or continuation of federally sponsored research, because the Bayh-Dole Act provides for University ownership in such cases. The federal law pre-empts collective bargaining agreements.[1])

For non-federally funded research confirmation of Substantial Use is a responsibility shared by the faculty Inventor and the University.

1.      The faculty Inventor shall report all use of University facilities, labs, equipment, paid student workers, cash investments or cash purchases, and amount and source of funds used to support the research leading to the invention. This report is made at the time of Invention Disclosure. Faculty need not disclose normal academic use of facilities commonly available to faculty members, staff or the public, such as libraries, offices, office equipment or internet services[2]. Faculty shall report all support provided by other public or private organzations (a.k.a. "sponsors") , when it is arranged, administered, or controlled by the University.  This includes such support whether or notthere is a written agreement with the organization.

2.      The University will confirm the faculty inventor’s report and establish a mechanism to track the institutional support[3] (cash and in-kind contributions, grants and contracts) of faculty research, including but not limited to direct and indirect costs of release time, replacement faculty costs, graduate assistants, other student workers, travel funds, supplies, stipends, use of labs and equipment. These costs are typically budgeted at the proposal stage of a sponsored research project and provided to the University’s grant office and fiscal office. The University Authorized Official will designate staff responsible for this function.

Note:  A dispute regarding whether the use of University resources/support/facilities is “Substantial Use” is subject to the dispute resolution and grievance provisions of the APSCUF CBA.[4]

Multiple Inventors must agree upon each one's contribution toward the invention and declare it as a percentage on the Invention Disclosure in order to submit a valid disclosure, which is subsequently used to prepare a patent application.  The University makes no determiniation on individuals' contributions toward the invention but accepts is as presented on the signed Disclosure.  Honest mistakes may possibly be corrected later but if the percentage is incorrect or misrepresneted on the patent filings, the patent can be invalidated.  This is a matter governed by US. patents laws.

In order for a faculty member to access the patenting services of the Technology Licensing Office (TLO), it shall be the policy of all PASSHE Universities to seek assignment of title, through discussion with faculty, for inventions that have commercial potential and that arise from research that has received Substantial Use of University resources/support/ facilities.  Substantial Use includes sponsor support that the University received and administered with or without a written agreement.[5]  So that the University may evaluate the commercial potential of the invention the faculty member and APSCUF will work cooperatively with the University and with technology licensing agents and legal counsel to whom the University may refer the Intellectual Property in question for evaluation.[6] The faculty member and the University will enter into an agreement which sets forth ownership rights. The University will provide revenue sharing for the Inventor that is consistent with the CBA as illustrated in Appendix H of the Faculty Technology Transfer and Commercialization Guide.

 

VIDEO: Faculty CBA Article 39


[1] APSCUF CBA, 2007-2011, Art. 39. B.6 and B.7.

[2] APSCUF CBA, 2007-2011, Art. 39. C.4.b.

[3] APSCUF CBA, 2007-2011, Art. 39. C.4.a.

[4] APSCUF CBA, 2007-2011, Art. 5, and Art. 39.E.

[5] APSCUF CBA, 2007-2011, Art. 39. C.4.a.(4)

[6] APSCUF CBA, 2007-2011, Art. 39. D.2.

[7] APSCUF CBA, 2007-2011, Art. 39. D.1.