Research and Sponsored Projects Manual (RSP)

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Effective: 3/1/2000

Revised: 11/1/2014

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RSP 604: Ownership of Research Data and Materials & Intellectual Property Management Implementation Policy

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Purpose

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To provide policy level implementation guidelines to the Arizona Board of Regents’ Intellectual Property Policy (6–908)

To confirm and clarify the ownership of research data and materials

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Sources

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Arizona Board of Regents Policy Manual - 6–908

University Senate

Arizona Technology Enterprises (AzTE)

Office of Knowledge Enterprise Development

Office of Research Integrity and Assurance

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Background

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It should be noted that in addition to the statements contained within the Preamble in the Arizona Board of Regents (ABOR) Policy Manual: 6–908, “Intellectual Property Policy,” it is the conviction of Arizona State University that potential commercial value is a by-product opportunity and not the “raison d’être” to create or enhance intellectual property at Arizona State University.

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Policy

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Intellectual Property

ASU’s policies and procedures concerning intellectual property, including patents and copyrights, are controlled by the Arizona Board of Regents’ “Intellectual Property Policy” (ABOR 6-908, select Chapter VI, item 6-908), adopted at the June 24-25, 1999 meeting.


Intellectual Property Creation and Ownership

With respect to Section C of ABOR Policy 6–908, the following specifics are added:
Paragraph 4. Employee-Excluded Works

Traditional publications in academia include scholarly works, textbooks, and course notes, including such publications in electronic form.

With respect to the paid-up, non-exclusive license to use Employee-Excluded Works as defined in Paragraph C.4 of ABOR Policy 6–908 for education, research and public service, in all cases upon request, whether or not still employed, the creator will supply Arizona State University with suitable copies (at ASU expense) of any such intellectual property in which the board has a license. The obligation of a creator to supply copies will continue for no longer than three years following the termination of the creator’s employment with Arizona State University.


Ownership of Research Data and Materials

Data, including but not limited to lab notes, results of analyses, research notes, research data reports, and research notebooks, comprise a category of intellectual property covered by ABOR policy 6–908 (select Chapter VI, item 6–908) and the ownership of intellectual property is determined by that policy. ASU maintains ownership of research data pursuant to ABOR policy 6–908 and maintains ownership of materials under this policy. Certain types of materials may be licensed by ASU in a fashion similar to intellectual property or as part of an intellectual property licensing transaction. For purposes of this policy, materials are included in the definition of intellectual property and are subject to the provisions of that policy. ABOR policy 6–908 provides universities the discretion to retain ownership in intellectual property, to enter into agreements with industry sponsors to grant exclusive or nonexclusive licenses, or when appropriate, to assign title to intellectual property.


Administrative Responsibilities

With respect to Section D, Paragraph 3a of ABOR Policy 6–908, the following specifics are added:

  1. The university or its nominee or licensee will pay all costs involved in obtaining and maintaining domestic and/or foreign patent or copyright protection for intellectual property for which the board holds an interest. Additionally, the university or its nominee will pay all reasonable costs involved in marketing or promoting or maintaining the licensing of intellectual property for which the board holds an interest. Such costs shall be deducted from any gross revenue received directly by the university in calculating the net income as defined under “Revenue Sharing” below. The Intellectual Property (IP) official, or upon appeal by the IP creator, the Intellectual Property Committee shall determine when such costs are “reasonable” within the meaning of this paragraph.

Revenue Sharing

The following ASU policy meets all ABOR policy 6–908 Section B guidelines and offers more specific implementation language. For this policy, “Net Income” is defined as gross revenues, received by the university or its nominee, resulting from any given intellectual property, less an administrative fee of 15%, then less all unreimbursed costs incurred by ASU or its nominee in protecting, licensing, maintaining, and litigating rights in the intellectual property or any agreements thereon as described under “Administrative Responsibilities” above, including, for the sake of clarity, any legal fees and other costs and expenses associated with intellectual property protection and litigation.

Creator Share

Subject to the terms and conditions of employment of the creator by the university or unless otherwise agreed with the creator, the university will pay the creator a share of the Net Income received by the university from any intellectual property licensed or assigned in accordance with ABOR policy 6–908. The IP Official will determine the amount to be paid to the creator, ensuring that it is in accordance with the university’s revenue sharing policy as described below; provided that the creator may agree in a writing to receive less than the Net Income allocations described below or to participate in an alternative revenue-sharing arrangement with the university.

The university creator or creators of intellectual property owned by the Board will receive 50% of the first $10,000 in Net Income received by the university and 40% of the Net Income received by the university in excess of the first net $10,000 as further described below (“Creator Share”). The Creator Share shall be divided evenly amongst all creators unless each and every creator signs a letter to the IP Official specifying a different distribution. If there is more than one creator, the portion of the Creator Share in excess of the first net $10,000 shall increase 3% for each additional creator with a maximum amount of 50% of the Net Income received by the university in excess of the first net $10,000. The Creator Share shall continue for as long as the university receives income and shall accrue to the estate of the creator if the creator is deceased.

Lab Share

If there is one creator, 26 2/3% of the Net Income will be distributed to a research account of the lead creator (such as the principal investigator in whose laboratory the intellectual property was created) (commonly known as the “Lab Share”). If there is more than one creator, the Lab Share shall be decreased by 3% for each additional creator but shall not fall below 16 2/3% of the Net Income. The Lab Share shall be used to conduct research and develop intellectual property at the university. The IP Official will determine the research account to which the Lab Share will be distributed. If there are lead creators from two or more laboratories at the university, the IP Official shall determine the allocation of the Lab Share between multiple lead creators. In determining the distribution and allocation of the Lab Share, the IP Official may consult with the Intellectual Property & Institutional Review Committee.

Each fiscal year, such Lab Share shall be limited to $2,000,000 (“Capped Amount”), irrespective of the number of lead or other creators, and any amount over the Capped Amount shall be retained by the university. If any amount of such Lab Share is unused at the end of the fiscal year, then such amount may be rolled over to such research account in the next fiscal year; provided, however, that any unused funds rolled over from a fiscal year (including amounts from prior fiscal years) to the next fiscal year may not exceed $1,500,000. Any funds received by the university in excess of the Capped Amount in any fiscal year shall be retained and used by the university in its discretion, following consultation with an ad hoc committee of the Intellectual Property & Institutional Review Committee, which, in turn, shall consult with either the lead creator or PI receiving the Lab Share.

The Lab Share is deemed to satisfy Paragraph D.3.b of ABOR Policy 6–908. If the lead creator receiving the Lab Share in his/her research account either has left the university or is unable to use the Lab Share for its permitted purpose at the university, then the Lab Share shall be distributed by the university to the respective department or other unit for the promotion of research and the development of intellectual property within the department or other unit.

University Share

After the first $10,000 in Net Income, the university shall receive at least 33 1/3% of the Net Income, irrespective of the allocation and determination of the amounts of the Creator Share and the Lab Share. From time to time, in appropriate cases to be determined by the Office of the President, the University may reallocate some of the University Share to university units involved in the creation of intellectual property resulting in Net Income (e.g., a school or department where the creator has an academic appointment).

Illustration

The table below sets forth the distribution of Net Income of the first $10,000 of Net Income received.D

  1 creator 2 creators 3 creators 4 creators 5+ creators
Creator 50% 50% 50% 50% 50%
Lab 16.67% 16.67% 16.67% 16.67% 16.67%
University 33.33% 33.33% 33.33% 33.33% 33.33%
Total 100% 100% 100% 100% 100%

endtable1

The table below sets forth the distribution of Net Income after receipt of the first $10,000 of Net Income.D

  1 creator 2 creators 3 creators 4 creators 5+ creators
Creator 40% 43% 46% 49% 50%
Lab 26.67% 23.67% 20.67% 17.67% 16.67%
University 33.33% 33.33% 33.33% 33.33% 33.33%
Total 100% 100% 100% 100% 100%

endtable2

Effective Date

This ASU policy shall be effective as of November 1, 2014, regardless of the date of creation or disclosure of the intellectual property licensed or assigned by the university and resulting in Net Income. Distributions of Net Income received by the university before November 1, 2014 shall not be affected by this ASU policy.


Interpretation, Decisions, Appeals (Disputes)

The appeal procedures specified below indicate how ASU will fulfill Section I of ABOR Policy 6–908:

  1. Under the Arizona Board of Regents Intellectual Property Policy, an employee who does not agree with a decision or interpretation made by the Intellectual Property Official (“IP official”) may ask the Intellectual Property Committee (“IP Committee” or “committee”) to review that decision. These procedures are intended to provide for prompt and equitable review by the IP Committee.
  2. If the issue under review is time sensitive, any employee, including the IP official, may request that the review process be placed on a “fast-track” review. Once the committee has received a request for fast-track review, the fast-track time limits identified below apply. The committee chair may schedule special meetings, arrange for telephonic meetings, or solicit input from members and interested parties through e-mail to facilitate a timely review.
  3. Review Procedures
    1. A quorum of at least one-third of the voting membership of the IP Committee shall be required for the IP Committee to conduct a review under this procedure.
    2. Within 30 calendar days of notice of the decision or interpretation to be reviewed, the employee shall make a written request for review by the IP Committee. (For fast-track review, the written request must be received within 7 days.) The request should be sent to the chair of the IP Committee either directly or through the Office of Knowledge Enterprise Development. If no such notice is received within the prescribed period, the decision of the IP official shall be final unless the committee determines that the failure to file a timely notice was due to causes not reasonably within the appellant’s control.
    3. The request for review must state the employee’s name, address, and phone number, and must describe the intellectual property decision or interpretation in dispute and the requested remedy. The request must also indicate whether the employee wishes to make a presentation to the IP Committee. The chair of the IP Committee will provide a copy of the request to the IP official.
    4. Within 15 days of the original request (7 days for fast-track), the employee will receive written notification from the chair of the IP Committee indicating the date on which the IP Committee will consider the disputed issue and, if requested, will hear the employee’s presentation. This discussion should begin within 60 days of the date of the original request (or within 14 days for fast-track). This 60-day period includes only the time when school is in session. Semester breaks and summer recess are not included but weekends and national holidays while school is in session are included. (Fast-track review may proceed during times when school is not in session.)
    5. The employee may withdraw the request for review at any time. If the employee asks to make a presentation to the IP Committee but does not appear at the designated meeting, the IP Committee may complete its review without the benefit of the presentation.
    6. No later than 15 days before the date on which the committee will conduct its review (4 days for fast-track review), the employee and the IP official will provide relevant written documentation regarding the disputed decision or interpretation to the IP Committee, with copies to each other. To the extent possible, these documents should be submitted in electronic form in addition to hard copy. If appropriate, the parties will also provide to the IP Committee and to each other a list of witnesses who will appear before the IP Committee during the presentation.
    7. The chair of the IP Committee will send a copy of any written documentation and witness lists to the committee members within two days after receipt.
    8. The chair of the IP Committee may call witnesses upon request of either party or the committee, or on the chair’s initiative. The chair may also require the production of books, records, and other evidence.
    9. In the interest of fair treatment, it is expected that any member of the university community called to testify shall testify and any university community member or university office that has access to relevant documents will produce them to a requesting party or the IP Committee. In the event such cooperation is not forthcoming, the IP Committee has subpoena power to do one or more of the following:
      1. compel the attendance and testimony of witnesses who are called by the parties or the IP Committee who refuse to appear without a subpoena
      2. compel either party to produce relevant documents if a party refuses to do so without a subpoena

        and

      3. compel a university office/representative who is in possession of relevant documents desired by a party or the IP Committee to produce such documents to the IP Committee, if the office/representative refuses to do so without a subpoena.
    10. If a party needs a subpoena, the party will request a subpoena form from the IP Committee chair, complete the form and submit it to the chair for signature. The party will then give the signed subpoena to the appropriate witness or university representative. The chair may also serve subpoenas on the chair’s initiative.
    11. On counsel participation, the employee must elect one of the following three options in making a presentation to the committee:
      1. The employee may proceed without counsel at the presentation. In this event, the IP official will proceed without counsel;
      2. The employee may be accompanied by counsel who will act as an advisor during the presentation. The employee will be responsible for presenting the case (witnesses, exhibits, and statements) and counsel may advise the employee. In this event, the IP official may proceed with counsel as an advisor;
      3. The employee may be represented by counsel at the presentation; counsel may present statements, question witnesses called by both parties and present documents. In this event, the IP official may be represented by counsel in the same manner.
    12. Regardless of which option the employee elects, the IP Committee has the right to speak to the parties and witnesses during the presentation, including the right to question and to receive responses from the parties and witnesses directly.

      If neither party is advised or represented by counsel and the university general counsel has not been involved in the case on behalf of either party, the Office of General Counsel (“OGC”) may provide advice to the IP Committee. If the employee elects to be represented by counsel, an attorney with the OGC may represent the IP official. In order to avoid a potential conflict of interest, an attorney with the OGC will not advise the IP Committee or its chair. Rather, the university OGC will secure an outside counsel to advise or otherwise assist the IP Committee at the chair’s request, if the IP Committee desires such assistance.

    13. Except in cases requiring confidentiality, all parties will have access to all information and testimony that is presented to the IP Committee. While a review is underway, all parties will be informed about the status of the process.
    14. A member of the IP Committee may not participate in review of any decision in which he or she may have a conflict of interest as determined by the IP Committee.
    15. Upon request of either party or the committee, the chair may continue the proceedings to another time.
    16. Either party or the committee may ask that witnesses be excluded except while testifying. Generally, the committee will allow all witnesses to testify and documents to be presented which are related to the dispute.
    17. If the parties choose to make a presentation to the committee, each party or counsel may present an opening statement of his or her position. Generally, the employee or counsel will then present all of his or her witnesses and documents. The committee members may question the witnesses and ask questions about documents presented. The IP official or counsel may question the employee. After the employee has presented his or her case, the IP official or counsel may present witnesses and documents, and the committee members may question the witnesses and ask questions about documents presented. The employee or counsel may question the IP official. The committee may question the parties throughout.
    18. The chair will provide the parties and the president or the president’s designee with the committee’s recommendation within 30 days after the completion of the presentations or review discussion (7 days for fast-track).
    19. The committee’s recommendation will be in writing and will include its findings, conclusions, and recommendations. These recommendations will be kept by the IP Committee in a form suitable for reference and review by members of the IP Committee in the future.
    20. Within 45 days of receipt of the committee recommendation (7 days for fast-track), the president or the president’s designee will forward a final written decision to the employee, the IP official and the IP Committee.
    21. Throughout this review procedure, “day” means calendar day unless otherwise specified.
    22. The employee who is dissatisfied with the decision of the president may request reconsideration by filing a written request with the president no later than five days following the receipt of the president’s written decision. The request shall be based on one or more of the following grounds:
      1. irregularities in the proceedings, including but not limited to any abuse of discretion or misconduct by the IP Committee which has deprived the employee of a fair and impartial process
      2. newly discovered material evidence which could not have been available for the presentation
      3. that the decision is not justified by the evidence or is contrary to law

        and

      4. excessive severity of the sanction.
    23. Following receipt of the request for reconsideration, the president shall conduct whatever reconsideration is deemed necessary to resolve the issues that have been raised. The president will provide a written response to the request to all parties within 20 days of receipt of the employee’s request. The decision following reconsideration is final.
    24. To pursue the case outside the university, the employee must file a legal action in Maricopa County Superior Court in accordance with Arizona Revised Statutes, section 12-901, et seq. The action must be filed in court within 35 days after receipt of the president’s decision, if the employee does not request reconsideration, or within 35 days after receipt of the president’s response following reconsideration, if requested by the employee.
    25. The final decision is subject to judicial review pursuant to applicable law. Failure to complete these review procedures will constitute failure to exhaust administrative remedies.
    26. With the exception of the requirements for judicial review, the parties and the committee may agree in writing to modify the foregoing procedures as appropriate to individual circumstances.

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