BOV POLICY # 35 (2019) INTELLECTUAL PROPERTY POLICY

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Policy Title: Intellectual Property Policy

Policy Type: Board of Visitors

Policy Number: BOV Policy #35

Approval Date: March 19, 2021

Responsible Office: Dean of the School of Graduate Studies and Research

Responsible Executive: Provost and Vice President for Academic Affairs

Applies to: All University employees, students and affiliate entities.

POLICY STATEMENT

Norfolk State University (NSU) encourages and supports the intellectual pursuits, creative

activities, and inventions of its faculty, employees and students. The results of these endeavors

may be the subject of patent application(s), copyright(s), or other tangible material that is

commonly referred to as “Intellectual Property.” As a state university of the Commonwealth of

Virginia, NSU is required by the State to have an “Intellectual Property Policy” that covers these

products.

The University shall retain all rights, title, and interest in any, and all, Intellectual Property

generated, created, or developed in facilities operated or controlled by the University, supported

by funds administered by the University, and/or performed in the course of regular duties by

University members while utilizing University resources. The University retains the non-

exclusive, royalty-free right to use, for non-commercial purposes, works produced by its

employees and/or Affiliates while acting within the scope of employment unless exempted by

other provisions of this policy.

Use of the University’s name in connection with the commercialization of a faculty, staff or student

work must be approved in advance by the University, through the School of Graduate Studies and

Research.

TABLE OF CONTENTS PAGE NUMBER

Definitions ...................................................................................................... 3

Contacts .......................................................................................................... 4

Stakeholders(s) ............................................................................................... 4

Intellectual Property Policy: Policy Contents ................................................ 4

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Education and Compliance ............................................................................ 11

Publication .....................................................................................................11

Review Schedule ...........................................................................................11

Related Documents ........................................................................................12

Forms .............................................................................................................12

DEFINITIONS

Affiliate Entity or Affiliate: Visiting faculty, full-and part-time agents and employees, full- and

part-time students (both undergraduate and graduate), interns and residents, and fellows (pre- and

post-doctoral), whether or not they receive all or any part of their salary or other compensation

from the University.

Assigned Duty: Intellectual Property created by an Affiliate where the University has specifically

directed the Affiliate to develop/produce the Intellectual Property.

Copyrighted Work: An original work of authorship fixed in any tangible medium of expression,

including but not limited to literary, musical, dramatic and pictorial materials, sound and visual

recordings, computer software programs, creative arts, documents, and transcripts, published or

unpublished, which property rights are protected by common law and federal copyright law, as

further defined by Title 17 of the U.S. Code. Copyright protection does not protect ideas, concepts,

systems or methods of doing something. (https://www.copyright.gov/help/faq/faq-protect.html)

Disclosure Document: A report of a development, invention or creation of Intellectual Property.

Invention: Inventions shall include all new, useful and non-obvious discovery, machine, process,

composition of matter, article of manufacture, design, model, or technological development,

including without limitation all circuits, computer hardware and software, communications

protocols, antennas, chemical or polymeric compounds, ceramic, mixed or purified metal, catalyst,

cure, biological organism, whether or not genetically engineered, including, microbes, cell lines,

cultures, clones, biological or plant material, strain, variety, etc., and modifications, improvements,

or extensions thereof.

Intellectual Property (IP): Intellectual Property shall include, without limitation, any Invention

(whether patentable or not); certain Copyrightable subject matter; Trademarks; engineered

materials (ceramic, metal, polymer or hybrids thereof); genetically engineered crops, animals,

bacteria, fungi, or other members of the plant or animal kingdoms; crops or animals made during

a breeding program; bacteria, viruses, and other microbes identified or isolated from any source;

samples of biological materials; microchip masks and data sets defining such masks; three

dimensional printing processes and/or data sets or information for the same; and any other

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information, data or materials produced by NSU faculty and Affiliates during their association

with NSU and/or through the Use of Substantial University Resources. Within this Intellectual

Property Policy, Intellectual Property may be more simply referred to as “technology”.

IP Pool: The IP Pool is a budget designated for covering any development expenses incurred by

the University for goods and services to administer, protect, develop, and/or enhance the

marketability or other aspect of an Intellectual Property, including, but not limited to, patent

expenses, protection or litigation of Intellectual Property rights, marketing expenses, consulting

fees, and expenses incurred in dealing with equity interests. The Dean of SGSR retains a

percentage of all revenues from commercialization to subsidize IP expenses per the Distribution

Table referenced in this policy.

Net Revenue: Gross revenue less all incurred or accrued development expenses and holdbacks

for any known contingent liabilities.

Originator: In the context of an invention, those in the creative group which gave rise to the new

product, concept, or idea. In the context of software or other copyrightable subject matter in which

NSU has an ownership interest, those which created portions of the work. In the context of other

valuable Intellectual Property, those which are the sources of the Intellectual Property.

Patents: Patents include all domestic or foreign patent applications or patents issuing therefrom,

or reissues, re-examinations, continuations, divisionals, and extensions thereof.

Sponsored Research: Research performed under the support of, and compensated by, a

sponsoring agency.

University Research: University research is defined as research and related activities by any

person, which are related in any way to duties or responsibilities for which he/she has been

compensated either by or through the University; or for which facilities owned, operated, or

controlled by the University are used in a significant manner. University Research includes, but

is not limited to, Sponsored Research or research which involved a significant use of general funds

or which involved a Significant Use of University Resources.

Significant Use of University Resources: For the purpose of this policy, this means substantial

and dedicated support of the University, including Sponsored Research, or other grants received

by the University. Utilization of University laboratories or special instrumentation, dedicated

services provided by University employees, special financial assistance or extensive use of shared

facilities constitutes significant use. In contrast, the use of a computer in a faculty office, other

commonly used equipment for teaching and learning activities, use of incidental supplies, and

nominal use of University personnel or shared facilities are not considered significant use.

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CONTACTS

The Dean of the School of Graduate Studies and Research officially interprets this policy. The

Dean of the School of Graduate Studies and Research is responsible for obtaining approval for

any revisions as required by BOV Policy # 01 (2014) Creating and Maintaining Policies through

the appropriate governance structures. Questions regarding this policy should be directed to the

Dean of the School of Graduate Studies and Research.

STAKEHOLDERS

All University employees, students and Affiliate entities.

INTELLECTUAL PROPERTY POLICY CONTENTS

The purpose of the Intellectual Property Policy is to:

1. Provide an incentive for creative intellectual effort and the advancement of knowledge

for the benefit of humanity;

2. Ensure that the rights, privileges and interest of the University, its employees, students,

and any supporting sponsor or other stakeholders, are recognized and protected through

the development of fair agreements and procedures;

3. Encourage employees, students and/or stakeholders of the University, to realize the

tangible benefits of Intellectual Property endeavors; and

4. Advance and encourage further research within the University, with revenues accruing

to the University from Intellectual Property endeavors and commercialization.

NSU is the owner of all Intellectual Property (as defined in the definition above) and, according to

this Intellectual Property Policy, all NSU faculty and Affiliates hereby assign all rights in the

Intellectual Property to NSU. Under this Intellectual Property Policy, NSU has an option to

commercially exploit all such Intellectual Property within its sole discretion. Should NSU exercise

its option to include the Intellectual Property as an asset to be commercialized by NSU according

to this Intellectual Property Policy, originators of the Intellectual Property will execute all

documents NSU deems necessary or desirable by NSU for seeking and/or securing and/or

recording its ownership rights in the Intellectual Property in US and foreign governmental

agencies, courts, and the like. Regardless of whether NSU exercises its option to include the

Intellectual Property as an asset to be commercialized, NSU shall retain a fully paid-up, non-

revocable, non-exclusive license to make and use the Intellectual Property for non-commercial,

research, instruction, and educational purposes.

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Ownership

1. To the extent not proscribed by law or contract, the University shall own all Patents on

Inventions made by NSU faculty and Affiliates or made using Significant Use of

University Resources, and the NSU faculty and Affiliates hereby affirm the same.

2. To the extent that any other person may have an ownership right in Intellectual Property

which was developed with a Significant Use of University Resources or Sponsored

Research/resources and/or was developed wholly or significantly with general funds, that

person shall be required to transfer any such ownership interest to the University.

3. To the extent permitted by the Virginia Code, all applicable regulations, and State

Council on Higher Education for Virginia Guidelines, the University may enter into

contracts with sponsors of research in which the sponsor asserts an ownership interest.

If the University enters into such a contract or other funding vehicle, the terms of that

contract or other funding vehicle shall take precedence over this policy. If the sponsor

does not assert an ownership interest, the ownership vests with the University as provided

in this policy. As a non-profit institution, NSU retains a full claim on innovations made

with the help of federally funded research as stated in the Bayh-Dole Act (37 CFR

paragraph 401).

4. To the extent permitted by the Virginia Code, all applicable regulations, and State

Council on Higher Education for Virginia Guidelines, the University may enter into

partnership contracts with outside parties for research or other sponsored activities. If

the University enters into such a contract, the terms of that contract shall take precedence

over this policy.

5. Pursuant to Virginia Code Section 23.1-1301, and Title 17 and Title 35 of the United

States Codes the University may, upon the approval of the Board of Visitors, transfer its

interests in Intellectual Property to other persons or entities. Such transfers will meet all

applicable legal requirements. Refer to the Transfer of IP section within this policy for

additional requirements.

6. The school name and all trademarks used to promote the school, whether or not

registered, are important assets owned by NSU. Commercialization of any technology

or product by any NSU faculty or Affiliate, or any third-party licensee or optionee, may

not employ the school name or any of its trademarks without the prior written

authorization of NSU.

7. NSU does not take ownership in any Copyrightable Work created by NSU faculty or

Affiliates that is created using generally available University Resources when such works

are not made pursuant to an expressly Assigned Duty, and retains only a non-exclusive

right to use the Copyrightable Work for educational and non-commercial purposes in

such works. These works include novels; music, artwork; pictorial works; films and film

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clips; instructional materials developed for student instruction; textbooks, papers, and

other publications; and software related to the author’s research or position at NSU.

NSU has ownership of copyrights in all software developed for performing a university

function including without limitation library related software, software involving

securing financial aid, software for addressing the needs of foreign students, software for

managing a building project, software for managing remote student testing and/or

coursework participation, etc. NSU has ownership of copyrights in all Copyrightable

Works wherein Significant Use of University Resources were expended including

without limitation software specifically requested to be developed by university

personnel using university resources; coursework (audio, audio visual, visual, textual)

specifically requested to be developed by university personnel using university resources

for distance learning, professional certifications, student instruction, etc.; and pictorial,

artistic, editorial, and audiovisual works requested to be developed by university

personnel using university resources (e.g., for NSU promotional material, for subjects of

interest for NSU, etc.). NSU’s ownership of certain Copyrightable Works set forth in

this paragraph begins at the creation of the Copyrightable Works, and NSU faculty and

Affiliates agree to immediately notify the Intellectual Property Committee of its creation,

and, should the Intellectual Property Committee deem it necessary or desirable, the

authors of the Copyrightable Works will execute any assignment documents NSU deems

suitable for recording NSU’s ownership interest at the U.S. Copyright Office or any

foreign counterpart office equivalent thereto.

If there is a dispute concerning ownership of a copyright, the Intellectual Property

Committee is charged with deciding on ownership between NSU and the originators. If

desired by an NSU faculty member or Affiliate to clarify copyright ownership by the

NSU faculty member or Affiliate, a description of the copyrightable subject matter may

be submitted to the Intellectual Property Committee, and the Intellectual Property

Committee will confirm ownership being with either NSU or the originators within

ninety (90) days of submission.

8. Even in cases where the University retains ownership of Intellectual Property under this

policy, it may cede such ownership to the responsible Originator(s) by written agreement

provided it is approved by the Board of Visitors. Alternatively, the University may

license an Intellectual Property asset to the Originator(s) under reasonable terms.

9. The University may relinquish any claim to Intellectual Property that is determined by

the Intellectual Property Committee not to be the product of University Research and

other programs, or the University has no interest in pursuing.

10. The University retains a non-exclusive, royalty-free right to use, for non-commercial

purposes, works produced by its Affiliates.

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11. Use of the University’s name in connection with the commercialization of Affiliates work

must be approved in advance by the University, through the Dean of the School of

Graduate Studies and Research.

Intellectual Property Committee:

The Intellectual Property Committee, in consultation with University Counsel is responsible for

making policy recommendations to the Provost for dealing with patents, copyrights, and related

mechanisms for the protection and/or exploitation of intellectual properties. The Dean for

Graduate Studies and Research shall serve as the non-voting Chairperson of the Committee. The

Committee shall be composed of five (5) members: (1) recommended by the Vice President for

Finance and Administration, (1) recommended by the Provost and Vice President for Academic

Affairs and (3) members recommended by the Faculty senate through an election process from the

general faculty. All terms are for three (3) years and members may be reappointed for a maximum

of one (1) extra term. In the event a member resigns from the committee or is unable to serve, that

member will be replaced (per the description above). The new member will be appointed to

complete the current term.

IP Committee Administrative Responsibilities:

The responsibility for the administration of the NSU Intellectual Property Policy is assigned to the

Dean of Graduate Studies and Research. The Intellectual Property Committee shall perform the

following duties:

• To develop standards and procedures appropriate for the implementation of this policy to

the Provost and Vice President of Academic Affairs;

• To promulgate invention and creative work Disclosure Documents that are subject to

change from time to time;

• To hear and make recommendations to the Provost and Vice President of Academic

Affairs on disputed ownership of discoveries, inventions, and copyrightable materials;

• To determine, whether the University has an interest in such property;

• Advise the responsible Originator whether Intellectual Property is patentable or

copyrightable;

• To hear and make recommendations to the Provost and Vice President of Academic

Affairs on disputed equities of the University and the Originator of the Intellectual

Property in which the University has a proprietary interest;

• To make recommendations to the Provost and Vice President of Academic Affairs for the

sharing of royalties between the University and the Originator of the Intellectual Property

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in which the University has a proprietary interest when in conflict with the established

distribution;

• To promulgate such guidelines and procedures as may be necessary for the

implementation of the Intellectual Property Policy, subject to review and approval of the

Provost and Vice President of Academic Affairs. Obtain, maintain, approve, and ensure

compliance with all signed agreements between the University and each Originator,

between the University and a sponsoring agency, and between the Originator and the

sponsoring agency;

• Take appropriate steps on behalf of the University for securing patent rights and

copyrights in Intellectual Property in which the University has an ownership interest;

• To oversee the Administration of the royalties accruing to the University as a result of the

implementation of this policy;

• Establish guidelines for use of royalties accruing to the University as a result of the

implementations of this policy;

• Inform the Originator of all requirements regarding patents in any grant, contract

agreement, or other funding source accepted by the University;

• With the aid of the Originator, provide all invention reports and other pertinent

information regarding patents required by the terms of a grant, contract, agreement, or

other funding source to which the University is a party;

• The IP Committee will render the recommendations to the Provost and VPAA within 90

working days.

Disclosure of Intellectual Property by Originators

Originators of any Intellectual Property, whether or not protectable by patent, copyright, or other

mechanism, will timely complete an invention or creative work Disclosure Document either prior

to public disclosure (abstract, poster session, publication, meeting presentation, etc.) or within

thirty (30) days of origination of an Invention, completion of copyrightable subject matter in which

NSU has an ownership interest as set forth in point 7 of the “Ownership” section of this policy

(e.g. work created pursuant to an Assigned Duty, work created with a Significant Use of University

Resources, etc.), or creation of the Intellectual Property, whichever is earlier, and provide it to the

Dean of Graduate Studies of Research. Failure to provide the Disclosure Document or to timely

provide the Disclosure Document may jeopardize the rights of the University, and will result in

administrative actions up to and including forfeiture of any distributions that may be due the

Originators. The Disclosure Document will be utilized by the IP Committee to make decisions on

whether to commercialize the Intellectual Property. For more details on procedures, refer to the

IP Procedures and Timeline Document.

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Distribution

The University may seek to secure and commercially exploit Intellectual Property by whatever

manner it deems to be within the best interest of the school, and within the sole discretion of the

University. If the University successfully licenses third parties to commercialize any Intellectual

Property, the University, after it recovers its overhead costs and other expenses for securing

Patents, Copyrights, Trademarks or other forms of protection on the Intellectual Property, will

share whatever revenues or other things of value it obtains for the license including all up-front

payments, milestone payments, option payments, royalties on sales or use of licensed products or

processes, stock, warrants, or other financial instruments according to the following schedule:

% Distribution of net revenue

Originator(s)

SGSR (IP Pool)

University IDC

Originator’s School

Originator’s Department

Any research contracts, grants, consulting agreements and other funding vehicles from or with the

United States Government or other funding entities must be honored. Such documents that are at

variance with this policy may be referred to the Intellectual Property Committee for

recommendations prior to approval. The University President reserves the right to reallocate the

University’s 50% distributions as identified above.

Right to Appeal

The Originator covered by this policy shall have the right to appeal application of the policy

regarding ownership of a patent or copyright, or any procedure relating thereto, to the Provost and

Vice President of Academic Affairs (PVPAA). A written request for appeal must be made to the

PVPAA and a copy of the appeal forwarded to the Intellectual Property Committee Chair. The

request must contain a statement of the specific nature of the appeal, the grounds upon which the

appeal is based, and a summary of the facts supporting the applicant’s position, and any material

the applicant believes is relevant. If, in the judgment of the PVPAA, the resolution of the appeal

requires technical expertise, the PVPAA shall appoint a Committee of five (5) faculty members

and administrators to make a recommendation regarding the resolution of the appeal. The PVPAA

has discretion to accept or reject the Committee’s recommendation and make a recommendation

to the President. The researcher has the right to appeal the decision of the PVPAA to the President.

The President is the last level of appeal and all decisions are final.

Transfer of Intellectual Property

Except when the governor’s prior written approval is required, the University’s governing board

may transfer ownership of any Intellectual Property in which it claims an interest.

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If NSU commences commercialization of Intellectual Property, e.g. by filing a provisional

application, but later, within its sole discretion, does not want to proceed further with

commercialization efforts, NSU may license the asset to the Originator/Originating group under

reasonable terms.

If no laws prevent NSU from returning ownership to the Originators (e.g. rules pertaining to federal

and state funding, etc.) and if NSU has not created an intangible asset in the form of a Patent or

group will not be claiming priority to the filing, and if NSU chooses not to commercialize the

technology, NSU may permit the Originators to pursue commercial exploitation of the technology

in their own private capacity subject only to the right of NSU to retain a fully paid-up, non-

revocable, non-exclusive license to make and use the Intellectual Property for non-commercial,

research, instructional, and educational purposes, and will provide the Originators with written

notice of the same.

The governor’s prior written approval is required for transfers of title to patents and copyrights

that were:

A. developed wholly or predominantly through the use of state general funds, by an employee

of the University acting within the scope of his or her assigned duties;

B. developed wholly or predominantly through the use of state general funds, and are to be

transferred to an entity other than the following:

• an entity whose purpose is to manage intellectual properties on behalf of nonprofit

institutions;

• an entity whose purpose is to benefit the transferring institution; or

• the Innovation and Entrepreneurship Investment Authority.

When prior written approval is required, the University should send a description of the Intellectual

Property and the proposed transaction to the State Council of Higher Education for Virginia.

Within thirty (30) days, the Council will recommend action to the governor, including any

conditions the Council thinks should be attached to the proposed transfer. The governor also may

attach conditions to the transfer.

It should be noted that the governor’s approval is not required for the granting of a license to use

Intellectual Property, but only when the actual title is to be transferred.

Conflict with Statutes or Regulations

Nothing in this policy shall be interpreted in a manner that conflicts with any applicable Federal

or state law, any applicable implementing regulations, or State Council on Higher Education for

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Virginia Guidelines. To the extent that there is a clear conflict, the applicable law, regulations, or

guidelines control the outcome.

EDUCATION AND COMPLIANCE

Faculty and staff will be required to take a mandatory Awareity’s MOAT review of this policy.

Upon reading this policy, each faculty/staff member will be required to sign an Acknowledgement

Form. Both documents are contained within Norfolk State University MOAT Vault. To reinforce

understanding of this policy, the policy will be shared with new faculty/staff during orientation.

Tracking will be utilized to ensure compliance with completing the Acknowledgement Form in

MOAT.

Failure to comply with this requirement will be reported to the employee’s supervisor. Additionally,

failure to comply with this requirement will result in OIT revoking access to NSU's email, electronic

doors, networks, and student systems. The reinstatement process requires a reinstatement form to

be completed and signed by a supervisor and could take several days for the process to be completed.

PUBLICATION

This policy will be widely published and distributed to the University community. To ensure

timely publication and distribution thereof, the Provost will make every effort to:

• Communicate the policy in writing, electronic or otherwise, to the University community

within 14 days of approval;

• Submit the policy for inclusion in the Online Policy Library within 14 days of approval;

and

• Educate and train all stakeholders and appropriate audiences on the policy’s content as

necessary. Failure to meet publication requirements does not invalidate this policy

REVIEW SCHEDULE

• Next Scheduled Review: March 2024

• Approval by, date: Board of Visitors, March 19, 2021

• Revision History: May 3, 2019; December 11, 2020

• Supersedes: University Intellectual Property Policy, dated May 15, 1999

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