Intellectual Property & Commercialization
The sequential process at Austin Peay State University is designed to ensure that both inventions and inventors are treated consistently, in accordance with policy and procedure (APSU and TBR), and in compliance with regulations (if applicable) imposed by any source(s) of external funding.
Until a process becomes more formalized, and updated policies and procedures are made available, please follow the below guidelines.
1. Research your invention . Collect data that proves that it is novel/unique, credible/useful, and non-obvious. In addition, collect financial data to provide evidence that there could be a return-on-investment (ROI). Discuss with all inventor team members to agree upon a percentage of ownership (if applicable) should the product be commercialized and make a profit.
2. Complete the Invention Disclosure Form . Complete and submit the required disclosure form to the Office of Sponsored Programs (OSP) for processing and ultimate submittal to the Intellectual Property Committee. This form will be used to help determine patentability and the potential of commercialization. Inventors should be prepared to address issues or questions related to inventions made as a result of a federal or state funded grants and if the research (or technical details) has already been published or otherwise disseminated.
3. Intellectual Property Committee Meeting . The IP Committee will discuss the invention and determine the interest in which the university may want to have partial ownership (or assert APSU’s rights) pursuant to APSU’s Intellectual Property Policy.
a. During this stage, the inventor(s) may be asked by the Intellectual Property Committee to defend the invention, elaborate on its credibility, discuss development costs, and provide additional information regarding marketability.
b. Inventing a product and owning a product are not the same. Austin Peay State University likely will own a part of the intellectual property if it was:
i. C reated by an employee within the scope of their employment (i.e., during their university time), and/or using university facilities/equipment, and/or during externally funded projects supported by the state or federal government;
ii. C reated by a student (graduate or undergraduate) as a function of their student work assignment or graduate student employment;
iii. C ommissioned by APSU under a signed contract or having fit within one of the nine categories of works considered “ works made for hire ” under copyright law (See also 17 USC § 101); and/or
iv. C reated as a result of a state or federal grant award to the institution.
c. The Intellectual Property Committee may, at the conclusion of this step, choose to contact internal and/or external legal counsel, as well as the University President and appropriate Vice Presidents.
d. This process may take several weeks and additional meetings to discuss, negotiate, and/or research findings.
4. Assert the Institution’s Rights for Protection . The IP Committee will present all necessary data to the APSU President, where a decision will be made to secure funds for copyright, patent, trademark, or license (including a provisional patent).
a. Internal or external legal counsel will submit the required paperwork to secure all intellectual property.
b. Additional attorney review, search, and assessment.
c. If recommended, and all approvals are gained, a provisional patent application will be made to the U.S. Patent and Trademark Office (USPTO) .
d. Twelve (12) months after a provisional patent application is filed, a determination is whether or not the invention will move forward to a non-provisional patent application.
5. Market the product(s) for sale . Transfer license(s). After the institution’s rights and property are protected, market the product and prepare for publications, engage in one-on-one meetings with business/industry representatives, and/or build websites. The negotiation for a license of an APSU product shall not be negotiated by the principal investigator; negotiations are the responsibility of the IP committee, legal counsel, the appropriate Vice Presidents, and the President.
a. If a commercial entity chooses to license the invention or move forward with the use of the product, the Intellectual Property Committee will engage the entity to complete a Confidential Disclosure Agreement.
6. Revenue. Any revenues received by the institution is distributed in accordance with the APSU policy (which is aligned with the TBR policy).
7. Protection and Assurance . Violations of APSU Intellectual Property, theft, or misuse can be a serious offense. If APSU’s intellectual property is found to have been misused, please notify the Office of Sponsored Programs and Commercialization.