1. General Guidelines for Institutional IP Policies: What Should be There Franco G. Teves, Ph.D., Dipl. PAM Director of Research MSU-IIT

2. Creating and implementing new policies What should an institutional policy touch on? What should an institutional policy touch on? How to decide these issues? How to decide these issues? How to implement? How to implement?

3. Topics for an IP policy IP that is included IP that is included Who is covered Who is covered Ownership of IP Ownership of IP Disclosures Disclosures Dispute resolution Dispute resolution Protection of certain communities/Conflicts Protection of certain communities/Conflicts Responsibility for management Responsibility for management Splitting the money Splitting the money

4. What IP is included Traditional division between copyrights and patents Traditional division between copyrights and patents Ignoring of trademarks Ignoring of trademarks Good arguments to be made now that all IP should be brought into a policy Good arguments to be made now that all IP should be brought into a policy Who decides when IP will be commercialized? (Researcher, funder, administration?) Who decides when IP will be commercialized? (Researcher, funder, administration?)

5. Who is covered Researchers Researchers Students Students Staff Staff How about visitors? How about visitors? Members of the local community allowed to use facilities? Members of the local community allowed to use facilities? How to reconcile issues over collaborating partners? How to reconcile issues over collaborating partners?

6. Ownership of IP Clear statement that IP is owned by X (Inventors, funding organization, institution?) Clear statement that IP is owned by X (Inventors, funding organization, institution?) >Choice should be made on who is best capable of doing the work Obligations to sign patent documents Obligations to sign patent documents >Need for institutional and individual signatures Consider “relief valve” that lets researchers get ownership back Consider “relief valve” that lets researchers get ownership back

7. Alternate IP situations Open source Open source Academic publications Academic publications Open innovation Open innovation

8. Contracted research Most important special case Most important special case >Transfer of ownership only when paid “full economic costs” >Meaning of FEC must be spelled out in the policy Publication limits Publication limits Other issues related to working with industry Other issues related to working with industry

9. Requirements to disclose Can’t manage what you don’t know Can’t manage what you don’t know Initial information gathering Initial information gathering Gather information relevant to initial valuation Gather information relevant to initial valuation Need to balance information required and complexity to complete Need to balance information required and complexity to complete

10. Use of disclosures Initiates management Initiates management Can be used to pass information to: Can be used to pass information to: 1. Internal stakeholders (academic management) 2. External stakeholders When is something truly a disclosure? When is something truly a disclosure?

11. Dispute resolution Who is an inventor? Who is an inventor? >Patent attorneys can answer to a point Useful to have some type of internal committee to arbitrate disputes Useful to have some type of internal committee to arbitrate disputes Can also help with revenue splits Can also help with revenue splits

12. Protection of certain communities Inherent conflicts between supervisors and students Inherent conflicts between supervisors and students How to protect students? How to protect students? Conflict between granting agency and host institutions Conflict between granting agency and host institutions Use of an intermediate authority Use of an intermediate authority Conflict between inventors and institutions Conflict between inventors and institutions

13. Splitting the Money They say: “It’s not the money, it’s the principle.” They say: “It’s not the money, it’s the principle.” They really mean: “It’s the money!” They really mean: “It’s the money!” How to determine? How to determine? Institutional portion generally at least 50% after “costs” Institutional portion generally at least 50% after “costs” What do costs mean? What do costs mean? Include overhead, time, etc., or just patents and outside personnel? Include overhead, time, etc., or just patents and outside personnel?

14. How to fund technology transfer Does TT get a portion of the revenues automatically? Does TT get a portion of the revenues automatically? What other functions will they be given? What other functions will they be given? How to fund over “dry spells”? How to fund over “dry spells”?

15. Implementing a policy Communication plan Communication plan Also needs to see almost immediate services being available Also needs to see almost immediate services being available Practices are a critical piece of the puzzle Practices are a critical piece of the puzzle

16. Thank You