Ownership Overview

When faculty research utilizes University resources/support/facilities to an extent that meets the CBA definition of "Substantial Use", the University retains its right to evaluate and seek ownership (rights, title and interest) to inventions and copyrightable materials related to inventions that were created solely or jointly by its faculty[1].

However, all inventions developed as part of, or a continuation of, federally-funded research will be owned by the University, with or without “Substantial Use of Institutional Resources” by faculty of University resources/support/facilities, in accordance with the Bayh-Dole Act. “Ownership” of a patent by the University does not infringe upon the employee’s standing as Inventor, as further discussed herein.

The University may contract for sponsored research or investigation with an external sponsor which uses University resources/support/facilities and/or  faculty services in which the ownership of any resulting invention, patent or related copyrightable materials is established in the research grant agreement or contract and varies from the above terms. In this event, the University Authorized Official or designee will notify all faculty performing sponsored research of the specific agreement terms. In the absence of terms, the ownership of inventions developed by faculty shall be determined by the terms of the CBA.[1]

Faculty have sole ownership rights to any inventions they create where Substantial Use[2]  of university resources (including sponsor funds which the University administers) is not demonstrated. Faculty also have sole ownership rights to any invention where the terms of sponsor grant agreements or contracts permit it. However, inventions which the faculty may have sole ownership does not include inventions that are based upon or derived from Intellectual Property that the University owns a potential ownership claim.

An invention made by an individual wholly on such individual’s own time, and without the use of University facilities, shall belong to the individual. For purposes of this provision, an individual’s “own time” shall mean time other than that devoted to normal and assigned functions in teaching, university service, direction and conduct of research on university premises and utilizing University facilities. The term “University facilities” shall mean 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. However, inventions created on one’s “own time” without use of “University resources” does not include inventions that are based upon or derived from Intellectual Property that the University owns or to which it has a potential ownership claim.

In situations of faculty sole ownership, University faculty may voluntarily transfer ownership of any patentable process, device, invention, and related copyrightable materials to the University as an avenue to protect, license, and commercialize the work. In the case of voluntary transfer, the faculty member and the University shall reach mutual agreement on sharing recovered royalties.  There is no obligation on the part of the University to accept transfer of ownership of any process, device, invention, or related copyrightable materials created by University personnel.

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

[2] 2007-2011 APSCUF CBA Art. 39.B.1. and B.2.