1. I offer consulting services to a company or third-party. Who owns the intellectual property developed while I am consulting?
If the consulting services are in the same course and scope of your employment at ASU or otherwise makes a significant use of resources, then ASU and the Arizona Board of Regents (ABOR) owns the intellectual property developed while consulting regardless of whether the work was done in your lab. See ABOR Policy 6-908 C2 & C3.

2. If I have an interest in a private company that is based on intellectual property owned by ASU that I developed as an ASU employee, may I share in the licensing income received by ASU?
If an ASU employee owns a substantial interest in a private company that licenses intellectual property from ASU and that intellectual property was developed by that ASU employee, then that ASU employee may not share in the “inventor share” of any equity received by the university as consideration unless otherwise agreed to in writing prior to the licensing agreement.

AzTE considers an equity holding in excess of two percent of the outstanding equity of the company to be a substantial interest, which is determined at the time Arizona Board of Regent (ABOR) approves of the ASU employees’ relationship with the private company. See ABOR IP Policy 6-908 G

3. What constitutes a conflict of interest and how can I avoid complications arising from one?
Please visit the objectivity in research document, RSP206 for clarification.

4. Why should I disclose my invention?
Under Arizona Board of Regents Intellectual Property Policy (#6-908), each university employee must disclose any intellectual property made by that person or resulting from work carried on under his/her direction, in which the ASU may have an interest. This disclosure requirement applies to all intellectual property developed (i) in the course and scope of employment with ASU or (ii) with significant use of university resources. Intellectual property owned by the Arizona Board of Regents may not be transferred by any university employee or affiliate (including students) through a consulting agreement with a third party.

5. I have a consulting agreement. Should I disclose my inventions to AzTE?
Yes. All ASU employees sign a patent acknowledgement agreement that requires you to disclose all inventions that you develop or co-develop during your employment at ASU. AzTE needs to determine ownership of your invention as well as any obligation that we might have to federal or private sponsors.

6. When should I disclose?
Ideally, you should disclose your invention to AzTE after reduction to practice and prior to any enabling public disclosure so that a patent application can be prepared and filed. Public disclosure includes verbal presentation at a scientific conference or to a company and publication of a manuscript or abstract. The U.S. Patent Office allows one year from the date of disclosure to preserve domestic patent rights, whereas foreign patent rights are automatically lost once the invention is disclosed to the public. Submission of a manuscript to a journal is generally not considered a disclosure, but with the advent of electronic publication, it is important to be aware of potential publication dates.

7. How do I disclose my invention?
Please complete the Invention Disclosure form

8. How is my disclosure handled?
Once your completed Invention Disclosure form is received, it is assigned to an AzTE portfolio manger, given a case number and reported to sponsors or co-inventing institutions when applicable.

The process continues with the following steps: Evaluate the technology (30 to 60 days) ·         Begin Intellectual Property review process ·         Meet with AzTE review team Market technology (Up to 10 months) Protect Intellectual Property License technology

9. What constitutes a “significant use of university resources”?
If the use of university resources was the enabling factor or materially contributed to the creation or development of an invention, then the use of university resources will be considered a significant use of university resources.

A “significant use of university resources” includes but is not limited to:

• use of research funding;
• use of funding allocated for asynchronous or distance learning programs;
• use of university-paid time within the employment period;
• assistance of support staff;
• use of telecommunication services;
• use of university central computing resources;
• use of instructional design or media production services; and
• access to and use of research equipment and facilities, or production facilities.

See Arizona Board of Regents Policy 6-908 C3.

ASU does not consider the ordinary use of ASU resources such as the libraries, one’s office or desktop computer to be a significant use of university resources for purposes of vesting ownership of intellectual property in ASU.

If I use ASU resources to develop intellectual property, do I own the intellectual property?
If you have made “significant use of university resources” to develop the invention, ASU and the Arizona Board of Regents own the intellectual property. With respect to the copyright in traditional academic works such as journal articles and academic books, the faculty member retains ownership.

11. If I create an invention or discover intellectual property that generates revenue for ASU and the Arizona Board of Regents (ABOR), will I receive a share of the revenue or consideration received by ASU?
Yes. You will receive 50 percent of the first $10,000 in net income received by the university and 33 1/3 percent of the net income received by the university in excess of the first net $10,000. “Net income” means gross revenue received by AzTE less a 15 percent administration fee and all direct costs.

All inventors will share equally unless otherwise agreed to in writing by all inventors. This revenue sharing policy may not apply if you own a substantial interest in the license. – see ASU IP Implementation Policy RSP 604 and ABOR IP Policy 6-908 G

12. Who owns copyright in works of university authors?
Ownership of copyrights in works written as part of university responsibilities depends on the nature of the work.

In keeping with academic tradition, copyrights in textbooks or other works of a primarily pedagogical or scholarly nature vest with the faculty author.

Copyrights in faculty works of a commercial nature, such as a computer program that optimizes a telephone network, would belong to the university, at least in part, if the works were developed using university resources or developed under a university-managed sponsored research program.

Royalty revenue from university licensing of copyrights is shared with faculty authors of the work and their research groups and administrative units.