Startup Guidelines

1. Submit an invention, software, copyright, or plant disclosure to the Office of Research Commercialization
2. Read the NC State Conflict of Interest (COI) policies
3. Have a discussion with the Department/Unit Head and Dean/Executive Officer for approval
4. File an updated Notice of Intent (NOI) disclosure with the Office of Sponsored Programs and Regulatory Compliance (“SPARCS”)
5. Develop a COI Management Plan when required by the policies
6. After the license/option is executed with NC State, update your COI

North Carolina State University’s Office of Research Commercialization endeavors to commercialize NC State inventions and copyrighted works in order to transfer knowledge to society, support further research and innovation, share economic benefits with the inventors, and promote economic development. In addition, as a land grant institution and the recipient of federal and state research funding, NC State has an obligation to ensure that public property, including intellectual property, is commercialized for the public good and not for the unjust enrichment of any one party at public expense.

While the primary responsibilities of Faculty and Non-Faculty EPA Employees (“Employee(s)”) are teaching, scholarly research, and professional service to the institution, NC State Employees are encouraged to engage in professionally and financially rewarding external activities. Engaging in external activities necessitates that potential conflicts of interest and commitment be avoided, resolved or managed in a manner that ensures objectivity and meets the institution’s responsibilities to external funding agencies and to the State of North Carolina.

Licensing an innovation to an established company is the most traditional route to successful commercialization. In order to attract and identify the most suitable commercialization partner, Office of Research Commercialization will typically first market inventions to existing companies and/or entrepreneurs. However, licensing to an existing company or serial entrepreneur is not always feasible, and under appropriate circumstances, Employee inventors may choose to form a startup company to commercialize intellectual property developed at NC State (“Startup Company”). These Startup Companies drive economic growth by offering a pathway toward commercialization that often remains rooted in the local economy. Working to ensure that NC State maintains its vibrant innovation and entrepreneurial environment is a key goal of Office of Research Commercialization.

The intent of these Guidelines is to enable the NC State community and the public at large to realize the benefits of Employee entrepreneurial activities involving research, while protecting the integrity of NC State’s research and educational mission.

The policies governing conflicts of interest and external activities of EPA Employees are:

• Board of Governors’ Policy on Conflicts of Interest and Conflicts of Commitment, UNC Policy Manual 300.2.2;
• Board of Governors’ Regulation on External Professional Activity for Pay by Faculty and Non-Faculty EPA Employees, UNC Policy Manual 300.2.2.1; and
• NC State Regulation  on Conflicts of Interest and Conflicts of Commitment, REG 01.25.01 (“COI policies”).

To ensure compliance with these policies, Office of Research Commercialization requires any Employee holding an equity interest or having any other financial interest[1] in a Startup Company to read these policies, and adhere to these guidelines.  It is the Employee’s responsibility to file an updated Notice of Intent (NOI) disclosure with the Office of Sponsored Programs and Regulatory Compliance Services (“SPARCS”), and to have the NOI approved through the employees’ reporting structure. NC State will not execute a license or option to a technology without an approved NOI on file. When required[2], a COI disclosure and potentially a COI management plan should be developed in accordance with these policies.

After the license or option has been executed, it is the employee’s responsibility to update their COI as appropriate in order to reflect changes in their financial interest, regardless of the status of any licensing arrangements between Office of Research Commercialization and the Startup Company.

What is “intellectual property”?

• Intellectual property is an invention and/or material that may be protected under the patent, trademark and/or copyright laws, or by contract.

Who owns what I create?

• Ownership depends upon the employment status of the creators of the invention and their use of NC State facilities/resources. Considerations include:
  • the source of the funds or resources used to produce the invention
  • the employment status of the inventors at the time the invention was conceived
  • the terms of any agreement related to the creation of the invention

As a general rule, NC State owns inventions made by its employees while acting within the scope of their employment or using more than incidental NC State resources. NC State’s copyright policy describes the applicable rules for copyrightable works. In some cases, the terms of a Sponsored Project Agreement or Material Transfer Agreement may impact ownership. When in doubt, it is best to call the ORC for advice.

What is NC State’s policy on ownership of inventions?

• The policy is codified in NC State POL 10.00.01

Who owns rights to discoveries made while on sabbatical?

• Generally, if you are on a paid sabbatical from NC State, NC State still retains rights to any discoveries connected to your scope of employment. Contact the ORC or SPARCS before your sabbatical to ensure that ownership considerations are documented.

Should I list visiting scientists or scientists at other institutions on my Invention Disclosure Form?

• All persons that may have contributed to the ideas leading to a discovery should be mentioned in your disclosure, even if they are not NC State employees or students. The ORC, along with legal counsel, will determine the rights of such persons and institutions. It is prudent to discuss with the ORC all working relationships (preferably before they begin) to understand the implications for any subsequent inventions.

Can a student contribute to an invention?

Yes, many students work on inventions at NC State under a wide variety of circumstances. NC State promotes student innovation and entrepreneurship. Typically, a student will own his or her rights to an invention unless the invention was created by a student in a capacity as a NC State employee (graduate student, research assistant, etc.) and/or the student used more than incidental NC State resources. For more information: http://research.ncsu.edu/commercialization/ and http://policies.ncsu.edu/policy/pol-10-00-01

If a Startup Company in which an Employee holds an ownership interest desires to commercialize intellectual property owned by NC State, the Director of Office of Research Commercialization will ensure that the necessary NOI (and COI as required) approval(s) have been obtained prior to the final execution of any license agreement between such startup company and the University. Office of Research Commercialization will not execute a license agreement with a Startup Company in which faculty has a financial interest until Office of Research Commercialization has verified that the NOI has been completed and approved.

In addition, when a Startup Company in which an Employee holds an ownership interest makes a proposal to Office of Research Commercialization requesting to option or license intellectual property, the Startup Company will be required to provide Office of Research Commercialization with a business plan or business model canvas that includes the following information:

1. Key Partners
2. Key Activities
3. Key Resources
4. Value Proposition
5. Channels
6. Customer Segments
7. Customer Relationships
8. Cost Structure
9. Revenue Streams
10. Milestones for product development and commercialization

If the Startup Company requests assistance with the preparation of a business model canvas, Office of Research Commercialization New Ventures group may provide such assistance, but the responsibility for the preparation of the business model canvas and its execution is that of the Startup Company (See APPENDIX A). Office of Research Commercialization will evaluate the Startup Company’s business model canvas along with the proposals of other potential licensees, if any, for use of the same technology.  If Office of Research Commercialization determines that the Startup Company presents a reasonable prospect for developing and marketing the technology, and if the NOI (and COI if required) approvals have been granted, the Director of Office of Research Commercialization may then approve the license of the intellectual property to the startup company.

Office of Research Commercialization has the exclusive authority to license University intellectual property for the purpose of commercialization.  When an Employee wishes to recommend licensing to any commercial entity, including one in which the Employee owns an interest as a commercial partner, the Employee should notify Office of Research Commercialization and refrain from making any commitments that imply authority to grant rights to the technology.

NC State encourages startup companies and recognizes that Employee innovators can play an early critical function in explaining the technology, developing the team, and generating momentum around the startup.  This may be necessary to bridge the technological gap and attract full-time professional management talent.  NC State encourages Employee innovators to develop a plan to move towards an advisory board position[1].

Employees should generally not accept a management position with the Startup Company, as doing so would create an apparent conflict of commitment with regard to the time required to fulfill such duties.   From time to time, the circumstances may require that the Employee initially play a management role (i.e., Chief Executive Officer, Chief Scientific Officer, or similar position) in a newly formed Startup Company, and with appropriate supervisor approval, the Employee may assume that position.  However, the Employee’s management responsibilities should decrease as the Startup Company develops and should cease within twelve (12) months from the date of formation of the Startup Company, unless otherwise approved by the Employee’s Department Head and Dean/Executive Officer.

[1] A faculty member or Employee can still maintain an equity position in the company.

Employees must not allow their outside interests to improperly influence their research, teaching, or supervisory responsibilities.  For example, student research assignments should be based on a student’s academic development rather than his or her supervisor’s business pursuits.

Students may use University facilities, equipment, and other resources to perform research benefiting a Startup Company in which the Employee holds an ownership interest only pursuant to a sponsored project agreement executed by SPARCS.  The students must be co-supervised by a faculty member other than the Employee with an ownership interest in the Startup funding the research.  Further, the students must be informed in writing by their supervisor that (a) their research is conducted on behalf of the University and not the Startup Company, (b) they report to and take direction from their faculty supervisor and not the Startup Company, (c) they may be asked to delay publications (including the publication of theses or dissertations) for up to ninety (90) days in order that applications for intellectual property protection may be filed, and (d) they may have confidential access to a research administrator to discuss any conflict issues should they so request.

A Startup Company may employ students only during those hours/days that the University does not also employ them.  However, a student may not be employed by a Startup Company if the Employee holding an ownership interest in the Startup Company:  (a) teaches a course in which the student is enrolled; (b) is a member of the student’s thesis or dissertation committee; or (c) is the student’s advisor or the director of the student’s thesis or dissertation research.

Pursuant to the NC State Patent and Tangible Research Policy [link], inventions or discoveries made by Employees of the University while performing sponsored research are owned by NC State. Accordingly, inventions or discoveries made by an Employee as a result of research sponsored by a Startup Company are owned by NC State and must be disclosed to Office of Research Commercialization.  If the Startup Company is the sponsor of the research, the Company will generally be granted the first option to commercialize the invention, subject to the terms of the sponsored research agreement and the rights of federal funding sources or other private sponsors.

It is the Employee’s responsibility to inform the Startup Company of the requirements of the NC State Patent and Tangible Research Policy as well as the Conflicts of Interest and Commitment Policy. Although ownership of intellectual property arising from University research and/or faculty consulting must be consistent with the University Patent and Tangible Research Policy, it is nonetheless advisable for the COI Management Plan to set forth clearly how ownership of any Employee inventions will be determined and the COI Management Plan should be signed by an authorized representative, other than the Employee, of the subject Startup Company.