January 18, 2017

SPA Colloquia • Intellectual Property Considerations: Patents, Copyrights, and Commercialization

The partnership between the Ball State Innovation Corporation (BSIC) and the Sponsored Projects Administration (SPA) helps faculty members address the ownership, distribution, and commercial development process of their own ideas and discoveries.

Wil Davis, President of BSIC, and Stephanie Roof, SPA Proposal Manager, discussed the processes and procedures for protecting and commercializing outcomes that arise from faculty research, scholarship, and creative work at the SPA Colloquia session Friday.

BSIC provides guidance for Ball State faculty with several resources throughout the commercialization process, including analyzing commercialization feasibility of intellectual property and assisting innovators in the creation of a business model or plan.

According to Davis, the first step in commercializing these outcomes is to complete an Intellectual Property Disclosure Form for inventors and authors. To ensure that adequate protections may be secured for the inventor or author, this form should be completed prior to any publication or public disclosure of the work.

"This step is very helpful in understanding what it is that you are wanting to commercialize," Davis said. "It will also help you determine what its potential on the market is."

Davis said the six questions listed on the disclosure form are helpful in determining what the inventor is offering and how to create a strategy for further development.

"Together we have to come up with a strategy of how to identify that 'it' with you," he said. "How do I know this is mine and how will I assert others that this is mine?"

The primary strategies commonly used include patents, copyrights and trade secrets.

"Keep in mind that when you patent and copyright, you disclose to the world what you have done," Davis said. "A patent is a set of instructions so that anyone of ordinary skill in the art could create what you have said you created. Once you copyright that idea, you own it and you can do what you want with it."

Generally, the only instance in which Ball State owns the material is when a significant amount (exceeding $500) of the university's resources are used. In those cases, Ball State will receive a majority (70 percent) of the profits generated from those outcomes. If Ball State has not provided an extraordinary amount of resources which result in the outcome, the sole owner is the inventor.

In some cases, instructors and students are faced with the challenge of determining who will have ownership of the work when it is completed.

"Students own their own work and the only exception is when we direct their work using our resources to do so," he said. "We generally have students sign a release form in that case which grants ownership to the instructor and university."

Revisions are being made to the university's current policy on intellectual property and technology transfer. The new policy should be available in the upcoming months.

-The current policy can be found HERE.

-The IP Disclosure Form can be found HERE.

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