Intellectual Property Guidelines

IPG04 Acceptance of Donated Intellectual Property by The Pennsylvania State University (Formerly RAG17)

Policy Status: 

Active

Policy Steward: 

Vice President for Research

Contents:

PURPOSE:

To establish the appropriate guidelines for the acceptance of donated intellectual property by The Pennsylvania State University.

GUIDELINE:

The Office of Technology Management (OTM) is responsible for the management and transfer of intellectual property for The Pennsylvania State University.OTM routinely evaluates Penn State inventions and technologies for technical merit, patentability, commercial potential and marketability. OTM will be primarily responsible for assessing the value and benefits of accepting donations of intellectual property and will recommend a course of action regarding proffered intellectual property to the Assistant Vice President for Research. These recommendations will be based on the criteria outlined below.

  • The donor will obtain a valuation of the intellectual property available for donation (hereinafter "IP") by an independent, impartial third party and will share the complete valuation analysis with Penn State including the basis on which the valuation was generated.
  • Current status of IP will be clearly identified and IP will be free of all encumbrances, claims and/or interferences.
    • The donor shall clearly identify the IP with respect to patent applications, issued patents, trademarks, trade secrets, know how, technical information and/or other.
    • Donor shall provide Penn State with an accurate current status of pending patent applications and issued patents.
    • Donor shall provide Penn State with its best estimate of future expenses to prosecute pending patent applications and to maintain issued patents.
    • The donor shall pay all expenses associated with the prosecution of pending patent applications and the maintenance of issued patents prior to transfer of IP to Penn State.
    • The donor shall pay all expenses associated with the prosecution of pending patent applications and the maintenance of issued patents after transfer of IP to Penn State for a period of two years to minimize the immediate negative financial impact of accepting the donation .
    • Donor shall inform Penn State regarding any ongoing or anticipated patent enforcement and/or patent infringement issues.\
    • Donor shall warrant that it solely owns the IP and has the right to transfer ownership.
    • IP shall not be subject to any pending litigation
    • Any anticipated IP litigation shall be identified.
  • A Penn State faculty member with relevant expertise, an active research program related to the IP and an interest in actively participating in continued research, development and transfer of the IP should be identified.
    • IP should complement or supplement an active Penn State research program.
    • Resources (research funding, facilities, personnel, etc.) should be available to continue development of the IP and/or acceptance of the IP should provide leverage to obtain the required resources.
    • Donor understands that IP donations are most effective when accompanied by other resources (financial, equipment, other) to promote continued research, development, transfer and commercialization and donor will consider providing such additional resources.
    • Along with the IP donation, the donor agrees to bestow a gift in the amount of at least 10% of the Donor's IRS tax deduction associated with the IP donation. Penn State agrees to use the gift to support research, development, transfer and commercialization of the donated IP.
  • IP should have sufficient patent life remaining to allow continued research, development, transfer and commercialization.
    • IP should have a minimum of seven (7) years of patent life remaining from the date of transfer to Penn State.
    • IP with less than seven (7) years of patent life remaining will be considered only under special circumstances.
  • Donor shall share all information for any known or anticipated approvals (such as FDA, USDA, EPA, NIH and/or other) that may be required prior to commercialization of IP.
    • Donor will provide current status of approvals and a best estimate of any expenses associated with receiving approvals.
    • Donor will provide best estimate of probability of receiving approvals and resources required to receive approvals.

FURTHER INFORMATION:

For questions, additional detail, or to request changes to this policy, please contact the Office of the Vice President for Research.

CROSS REFERENCES:

IP06 - Technology Transfer and Entrepreneurial Activity (Faculty Research)

Effective Date: January 7, 2013
Date Approved: September 14, 2012
Date Published: January 7, 2013 (Editorial changes- November 19, 2015)

Most Recent Changes:

  • November 19, 2015 - Editorial changes. Title changes FROM "Vice President for Research and Dean of the Graduate School" TO "Vice President for Research."

Revision History (and effective dates):

  • October 25, 2013 - Editorial changes. Addition of policy steward information, in the event that there are questions or requests for changes to the policy.
  • July 25, 2013 - Editorial change; references to the Intellectual Property Office have been changed to the Office of Technology Management (OTM), as the Industrial Research Office (IRO) and the Intellectual Property Office (IPO) have merged to form the new Office of Technology Management.
  • January 7, 2013- Policy moved from the Research Administration section, formerly named RAG17 - Acceptance of Donated Intellectual Property by The Pennsylvania State University. Moved to new Intellectual Property section and renamed Policy IPG04 - Acceptance of Donated Intellectual Property by The Pennsylvania State University. (Moved; no changes.)
  • August 10, 2005 - New Policy Guideline in Research Administration Guideline section.