Policy number: 10.16
Policy section: Research
Revised Date: January 2, 2019
Definitions of capitalized terms are set forth in Appendix A.
The University exists with the dual purposes of furthering the educational development of the individual, and furthering the intellectual progress of society as a whole. The cooperative efforts of faculty, administrators, students, and staff are directly responsible for the degree of success the University will attain in achieving these goals. Many members of the University faculty are engaged in either research or in other creative intellectual endeavors. It is the goal of the University to encourage and foster these types of activities. It is increasingly evident that some of these endeavors may have the potential for financial gain through, for example, Patents and Copyrights. It is imperative, therefore, that the University maintain a policy that clearly delineates the rights and obligations of both the individual and the University. This policy recognizes the result of such creativity and the potential to increase the financial security of the University and the inventor/creator. Additionally, the individual benefits from the continued existence of the University through his/her salary and the facilities and resources that are provided to him/her. It is in this spirit of mutual cooperation that this policy is established. The University environment fosters the creative energies of its faculty, students, and staff in a variety of ways, including sponsored research, assistance in contract and grant proposal preparation, research release time, laboratory and computer facilities, and other learning resource support. This policy provides a process and procedure to promote the dissemination of knowledge while protecting potential sources of revenue for the University and the inventor/creator. This policy is based on a cooperative relationship between the University and its various constituencies. Disclosure or notice of inventions and creations is fundamental to the success of the policy and provides an opportunity to the Associate Vice President for Research for resolution of potential difficulties in the early stages of the development of intellectual properties.
3. Policy Statement
It is the policy of the University to provide opportunity for creative endeavors. In return for University support, all faculty, students, and staff shall be subject to this Intellectual Property policy. As a further indication of good intent, the University may choose, pursuant to this policy (upon the advice of qualified professionals), to assist in the process of attaining a Patent or Copyright or yield any interest of the University to the inventor/creator.
4. Intellectual Property Defined
- As a general proposition, the term "Intellectual Property" includes inventions, ideas, Trade Secrets, writings, names and symbols, and combinations thereof, which, because of their characteristics, are governed and protected by the body of law of Intellectual Property.
- The law of Intellectual Property includes the law of Patents, Copyrights, Trade Secrets and know-hows, Trademarks, and trade names.
- The various sections of this policy are intended to be construed together in order to give appropriate emphasis to the multiple nature of protection available to some forms of Intellectual Properties.
- The University reserves the right to alter or amend this policy from time to time in order to better carry out the mission of the University.
6. Associate Vice President for Research
The Associate Vice President for Research has the overall responsibility for monitoring the effectiveness of this policy and recommending to the President’s Executive Council, through the University administration, any amendments or changes to this policy which, in his or her opinion, would serve to advance the dissemination and distribution of knowledge. Such recommendations must take into account:
- the value that development and commercialization contributes to the sharing of knowledge;
- the effect the amendment will have on the management of University assets;
- the protection of the University’s rights and interests;
- the intellectual rights of faculty, students, staff; and
- the effect on the University itself (including, but not limited to, effects on University curriculum, programs, budgets, and assets).
7. Patents: Policy Objectives
- The University’s primary objective regarding Patents is to promote and facilitate the progress of science and the useful arts. The University does not encourage a policy of pursuing studies or investigations for purely commercial purposes. However, the University encourages research and the publication of knowledge gained through research. The University further recognizes that the research of its faculty, staff, and students may lead to inventions and discoveries that should be Patented for one of the following reasons:
- To protect the Intellectual Property, including inventions and discoveries, of University faculty, students, and staff;
- To protect the public interest;
- To fulfill the terms of a research contract with a sponsoring agency;
- To promote the development of "useful articles and processes" which, because of the high costs involved, might not be developed without Patent protection;
- To encourage invention and ensure adequate rewards for the inventors; and
- To increase University financial support of research by means of internal allocation of the University's share of income derived from inventions.
- The University’s policy as to Patents is intended to be consistent with the foregoing principles and purposes.
- Patents promote the development and utilization of discoveries and inventions. This policy ensures that those inventions in which the University has an equity interest will be utilized in a manner consistent with the values herein.
- The University is also aware of the value of Patents in directing attention to effective individual accomplishments in science and engineering.
- The University believes that where possible it should make inventions resulting from University research available to relevant industries as well as to the public on a reasonable and effective basis. At the same time, the University is committed to providing appropriate recognition and incentives to inventors.
8. Patents: General Policy on Invention Ownership
The University utilizes the following categories in determining Patent ownership:
- Category A: Inventions that are subject to the terms of a sponsored research or other agreement between the University and a third party. Inventions subject to the terms of a sponsored research or other agreement that are disposed of in accordance with the terms of the applicable agreement.
- Category B: Inventions involving the significant use of funds, space, or facilities administered by the University, but without any University obligations to others in connection with such support.
- Inventions not involving the significant use of funds, space, or facilities administered by the University.
9. Patents: Inventions and Ownership under Government-Sponsored Programs
- Grants and Contracts. The government reserves a royalty-free license for government use on the understanding that the University will seek Patent protections and exercise such other rights as the University may deem in its best interest.
- Other Government Rights. In addition, the federal government may acquire rights to inventions that are in the field of a federally sponsored program of research in which the inventor has participated or that involve the use of research equipment or other laboratory facilities, materials, or services that are maintained by or derive support from the federal government. Such an invention should be discussed with the Associate Vice President for Research and, if it is not clear into which category the invention falls, should be disclosed as outlined under this policy.
10. Patents: Inventions and Ownership under Other Sponsored Research
Contracts with industry sponsors usually provide that the University acquire full Patent rights with a license to the sponsor. Under exceptional circumstances, however, the sponsor may acquire such rights, subject to a license to the University. Grants from industry sponsors, as well as grants from private foundations, should not have Patent restrictions.
11. Patents: Inventions and Ownership Involving Significant Use of University Resources
- Inventions involving significant use of funds, space, or facilities of the University, and administered without any University obligations to others in connection with such support, are the property of the University.
- Faculty and Staff. The University will exercise its rights in such inventions by members of the faculty and staff in whatever manner will best further the University's basic aims, giving full consideration to making the invention available to industries and the public on a reasonable and effective basis, avoiding unnecessary exclusion of any qualified manufacturer from the use of the inventions and providing adequate recognition to inventors. When in such cases the University undertakes Patenting and commercial development and exploitation, the gross royalties for such inventions will be divided between the inventor and the University as provided in this policy. Any individual with emeritus standing is considered to be subject to the conditions of this Patent policy as long as that individual is actively associated with the University or is utilizing University facilities and resources.
- Students. Student participation with faculty either as a result of course assignments or as research assistants, or student use of University equipment subjects the students to the same restrictions as set forth above for faculty and staff. If an invention in this category is by a student without the benefit of faculty participation or use of University equipment, the University will waive its rights, and the invention will be the exclusive property of the student, provided the student's rights in the invention are not altered by the terms of any financial aid received, including scholarships, fellowships, traineeships, thesis expenses, or other assistance, whether or not administered by the University, and provided the student does not subject the inventions to government rights in the manner described under this policy. Staff members who are also part-time students shall be considered staff members for purposes of patentable inventions.
- Others. Any employee or student of the University shall have the right to present before the Associate Vice President for Research any unusual or extenuating circumstances involving any individual rights to a particular invention.
12. Patents: Inventions and Ownership Not Involving Significant Use of University Resources
- Inventions not involving the significant use of funds, space, or facilities administered by the University (as may be determined by the President upon recommendation of the Associate Vice President for Research to the Provost) are wholly the property of the inventor.
- The University will not construe the payment of salary from unrestricted funds or the provision of office or library facilities as constituting significant use of University funds, space, or facilities.
- If the invention relates to any University program of sponsored research in which the inventor has participated, he/she should review the circumstances with the Associate Vice President for Research. If there is uncertainty into which category the invention falls, the inventor should disclose the invention as outlined under this policy.
- Faculty and staff members or students whose inventions fall within this category and are, therefore, their exclusive property, may avail themselves of the opportunity to submit the invention to the University for obtaining a Patent and for its commercial exploitation and management under terms to be agreed upon between the inventor and the University.
13. Patents: Classification of Inventions for Ownership Purposes
The Associate Vice President for Research, with the aid of such advice as he or she may seek, shall determine whether the invention falls into one of the following classifications and shall recommend to the University that the distribution of equities be as follows:
- When the discovery is made wholly at the expense of the individual without the use of University facilities and outside the field of the individual's normal employment, the results of such research are the private property of the investigator.
- When a discovery is made partly at the expense of the individual, but with the use of significant University resources or in the normal field of the individual's employment, the procedure shall be the same as that for investigations wholly financed by the University.
- If not properly addressed in a consulting agreement, a discovery made by an individual acting as a consultant may unnecessarily complicate the rights of the University, the employee, and the sponsor. Consulting agreements involving Patent obligations of an employee should be approved by the University.
14. Patents: Inventions Assigned to the University
- Staff. If the inventor so desires, inventions or discoveries made on a staff member's personal time and utilizing his own facilities and materials may be assigned to the University for administration on behalf of the University. Under this arrangement, the procedures will be the same as described herein pertaining to inventions or discoveries made by a member of the University staff on University time with the use of University facilities and materials.
- Others. Persons not associated with the University may come to the University with a Patentable item which may be to the benefit of the public, but which needs further development and refinement before its advantages may be fully realized. Where such inventions fit into the research program of the University and where personnel of the University, upon administrative approval, become associated with its continued development, the inventions may be assigned to the joint ownership of the inventor and University. The procedure will be the same as for work done by employees on University time; however, the division of royalties shall be in accordance with an agreement made with the original inventor at the time of assignments.
15. Patents: Faculty Consulting Rights
Members of the faculty shall be free to make their own agreements with respect to Patent rights arising out of consulting contracts for services outside the University and these shall be governed solely by the mutual understanding of the parties thereto. The Dean of the appropriate school or the Provost shall be notified of all Patents attributable to such agreements by the researcher involved.
16. Patents: Ownership Questions
In the event that an invention shall be deemed to be the result of an identifiable contribution leading to a claim by two or more inventors, whether they be staff members, employees, or students, and agreement is to be reached between the inventors specifying the distribution of royalties which would normally be paid to a single inventor, the following shall apply:
- When any question is raised as to ownership of an invention or Patent under this policy, the matter shall be referred to the Associate Vice President for Research.
- In order to avoid conflicting claims, it is important that persons claiming an interest in any invention, whether such claim is made in their own right or on behalf of the University or some division of the University, make their claim known to the Associate Vice President for Research at the earliest date practicable.
- The Associate Vice President for Research shall make a careful investigation of the circumstance under which the invention was made and shall transmit his or her findings and conclusions to the Provost and the President for review.
- If the Associate Vice President for Research determines that the invention has been made without the use of University facilities or not in the course of the inventor's employment by or for the University, and the President, after due consultation with the Provost, concurs in such determination, the University will assert no claim to the invention or to any Patent obtained thereon.
17. Patents: Supplementary Patent Agreements
- All University faculty and staff, whose job duties include research or direct support of research, writing, or other creative activities, shall be informed of the policies and procedures which shall govern the terms and conditions of their employment with the University, shall be supplied with a copy of this policy, and shall be provided at the time an opportunity to discuss the policy and its meaning with a representative of the Provost's Office.
- Employees subject to this policy are expected to execute promptly all contracts, assignments, waivers or other legal documents necessary to vest in the University or its assignees any and all rights to inventions or Patents whenever such action is required in order to carry out the provisions of this policy.
18. Patents: Notification of Possible Invention
Prior to submission for publication of the discovery or invention, it shall be the responsibility of the individual employee and/or the principal investigator of any research project to notify the Associate Vice President for Research in writing, including a disclosure of any discovery or invention involving probable patentable features resulting from research or invention under the employee's/investigator's direction. Such notification shall be transmitted through the Associate Vice President for Research. (Hereafter the title Associate Vice President for Research is used for the University administrator who is responsible for research policy on behalf of the Provost.)
19. Patents: Associate Vice President for Research Action
After careful consideration and on the advice of counsel, if desired, the Associate Vice President for Research may recommend any one of the following:
- If the Patent rights of the invention are subject to the terms of a sponsor's contract or grant, the Associate Vice President for Research shall recommend to the University that the inventor be directed to comply with the terms of the contract.
- Upon the written request of the person making a disclosure, when in the opinion of the Associate Vice President for Research the public's interest shall be better served by publishing the disclosure or discovery than by patenting it, the Associate Vice President for Research may recommend that the invention or discovery be released to the general public, and the Associate Vice President for Research may recommend to the President that the person making the disclosure be released to publish his findings.
- The Associate Vice President for Research may decide to recommend the protection of the invention by Patent application and shall work with the Associate Vice President for Research the Office of Legal Affairs for prosecution of the Patent or pursuit of a licensee to pay for and obtain Patent protection.)
- The Associate Vice President for Research may after careful review find that the University has no further interest in the invention and may recommend to the University that the disposition of the invention be referred to the inventor.
- The Associate Vice President for Research may consult with the faculty, staff, and students on Patent questions or on specific inventions or discoveries.
- If the Associate Vice President for Research fails to take action on a disclosure within a period of three months after receiving such a disclosure proposal, including all the information needed by the Committee for taking such action, the inventor shall be free to dispose of the disclosure as the inventor sees fit.
20. Patents: University Action
The Associate Vice President for Research shall proceed with due diligence to take such action as deemed, taking into consideration pertinent facts and circumstances. The Associate Vice President for Research shall promptly communicate all findings, recommendations, and decisions in writing to all interested parties.
21. Patents: Royalties
With respect to Category A inventions (those subject to the terms of a sponsored-research or other agreement) and Category B inventions (those involving the significant use of University resources but without obligations to third parties), the University will normally distribute any gross royalties to which the University is entitled and receives as follows:
- All direct expenses associated with patenting, protecting and preserving Patent rights, maintaining Patent, the licensing of Patent and related property rights, and such other costs, taxes or reimbursements as may be necessary by law will be covered before any distribution of royalties.
- The remaining (net) amount will be distributed as follows:
Inventor(s) as personal property
Recovery of Overhead
Office of the Dean of Research
Office of the Dean of the College or School originating Patent/Copyright(5)
Inventor(s) responsible for Patent/Copyright(6)
- "Net royalty" refers to accumulated net royalty per Patented or licensed invention.
- Patent filing costs are paid initially by the Associate Vice President for Research out of funds derived from royalty distribution.
- Royalty distribution funds received by the Associate Vice President for Research will be set aside for the initial payment of Patent costs and for the furtherance of research at the University. The Associate Vice President for Research shall use these funds in consultation with the President and the Provost.
- It is assumed that when two or more inventors are responsible for the invention, an agreement has been reached among them on the distribution of inventors' share of the royalty. In the absence of such an agreement, inventors' share of the royalty will be distributed equally among the inventors.
- If the inventor is a staff member not belonging to the College or the Schools, this share of the royalty will go to the Office of the corresponding Vice President.
- Inventor's share of University royalty will go toward institutionally approved expenditures for the inventor's laboratory, if applicable, and/or professional growth.
22. Patents: Invention Agreement
The policies set forth above constitute an understanding that is binding on University faculty and staff, students, and others, as mentioned above, as a condition of their participating in University research programs involving significant use of funds, space, or facilities of the University. Where the University may have an obligation to assign rights in inventions to a sponsor, or may itself acquire rights under this policy, a formal invention agreement is required.
23. Patents: Other Disputes
- Disputes on Patent matters, including the interpretation of this policy, which are not subject to resolution as provided herein, shall be submitted to the Associate Vice President for Research for consideration. Upon presentation of all matters in dispute, the Associate Vice President for Research shall submit through the Provost to the President, in writing, its findings and recommendations.
- The President shall review all of the materials, consult with the Provost and the Associate Vice President for Research as necessary, and take action on this matter within a period of eight weeks after receiving these materials.
- The President shall communicate his/her decision to all interested parties in writing in a timely fashion. The decision of the President shall be final and shall be reviewed by the Board of Trustees only for abuse of discretion.
24. Copyright: Policy Objectives
In adopting this Copyright policy, the University is guided by its objectives to:
- foster the free and creative expression and exchange of ideas and comment;
- preserve traditional University practices and privileges with respect to the publication of scholarly works;
- establish principles and procedures for sharing income derived from Copyrightable material produced with the significant use of University funds, space or facilities; and
- protect the University's assets and imprimatur.
25. Copyright: General Policy on Copyright Ownership
Copyright is the ownership and control of Intellectual Property in original works of authorship that are subject to Copyright law. It is the policy of the University that all rights in Copyright shall remain with the creator with the following exceptions:
- a "work made for hire" (and Copyright vests in the University under Copyright law);
- a student project for which significant financial support was provided and for which the student has agreed to assign the Copyright until such support has been repaid;
- a work directly and specifically commissioned by the University for which the University provided substantial support and compensation and required an agreement to assign the Copyright; and
- institutional works.
26. Copyright: Books, Articles, and Similar Works
In keeping with academic tradition, ownership and Copyrights of books, articles and such similar works as musical compositions, choreography, paintings, videos and films created by faculty, students, and staff, including those works resulting from scholarly research, study, and creative academic activity, remain the sole property of the faculty, student, and staff creators. Such works include those of students created in the course of their education, including but not limited to compositions, choreography, paintings, film and video productions. The University does not claim ownership of such works, nor does the University consider provisions of library facilities, equipment, space, or normal coursework materials to constitute significant support.
27. Copyright: Exceptions to the General Copyright Policy
The following constitute the sole exemptions to this Copyright policy:
- Student Projects. When the University provides significant financial support beyond the provision of normal coursework materials, equipment, space, and faculty supervision for an individual or group student project completed as part of a regularly scheduled course, as an independent study project under the supervision of the University faculty, or as part of a thesis or dissertation, in the event that the work does not constitute a work for hire under the Copyright Act, the University may require the student or student authors to agree to assign the Copyright to the University until such time as the University funds invested in the project have been recouped. At that time, the University will assign the Copyright back to the student authors. The student authors will be entitled to a license to use the project (including film or videotape) for any non-income producing purpose during the time that the Copyright is assigned to the University. The question of whether the University has provided significant financial support shall be determined by the Associate Vice President for Research.
- Commissioned Works. The creators shall retain ownership of works the University specifically and directly commissions faculty, staff, students or non-employees to create and for which specific project the University provides substantial support and compensation to the creator unless the work qualifies as work for hire under the Copyright Act in which case Copyright vests in the University. As a condition for the provision of such substantial support and compensation, the University may require the creator to agree in writing to assign ownership of the Copyright to the University. If the University does not require the assignment of the Copyright in such a work, the creator shall repay the University the amount provided in support as a proportion of royalties received if the work is exploited by the creator commercially for a profit. For purposes of this paragraph, the question of whether the University has provided substantial support and compensation shall be determined by the Associate Vice President for Research.
- Institutional Work. The University normally shall retain ownership of works created as institutional rather than personal (including group) efforts -- that is, works created for University purposes in the course of the creator's normal daily employment responsibilities. For example, the Copyright for work assigned to the University employed computer analysts in "work for hire" as defined by law would be retained by the University.
- Permission. Requests to videotape, broadcast, or televise classroom instruction, laboratory instruction, or other University sponsored instruction for commercial purposes or purposes other than University classroom educational activities must be approved in advance by the instructor and responsible academic dean who is responsible for resolving, in conjunction with the Provost, any questions concerning Copyright issues involved in such taping.
- Contractual Obligations of the University. The University in all events shall have the right to perform its obligations with respect to copyrightable works, data, prototypes and other Intellectual Property under any contract, grant, or other arrangement with third parties, including sponsored research agreements, license agreements and the like.
28. Copyright: Determinations of Ownership and Policy in Unclear Cases
Questions of ownership or other matters pertaining to materials covered by this Copyright policy shall be presented to the Associate Vice President for Research for determination. An example of questions of ownership and policy that should be submitted to the Associate Vice President for Research: To whom does an algorithm belong, and what protection(s) for it should be sought. (An algorithm is capable of being reproduced in printed form, but is most frequently software used in a software form.)
29. Copyright: Income Sharing
- Proprietary Protection. The University seeks the most effective means of technology transfer for public use and benefit. As a part of its review of a disclosure, the Associate Vice President for Research should consider the type of protection applicable to any Intellectual Property disclosed, and shall determine, in consultation with the Office of Legal Affairs, the form of protection, if any, for the Intellectual Property, the subject of this disclosure.
- Royalty Distribution. Copyright Royalties will normally be allocated based on the distribution formula outlined Patent royalty allocation formula herein. Exceptions to the formula maybe negotiated depending on the expenditures incurred by the University.
- Assignments. No assignment, license, or other agreement may be entered with respect to Copyrighted works owned by the University except by an official specifically authorized to do so.
- Questions regarding licensing and royalty-sharing should be addressed to the Office of the Provost, Associate Vice President for Research, the Office of Business and Finance, or the Office of Legal Affairs.
30. Copyright: University Copyright Notice
- The following notice on University-owned materials will protect the Copyright: Copyright [year] Southern Methodist University.
- No other institutional or departmental name is to be used in the Copyright notice, although the name and address of the department to which readers can direct inquiries may be listed below the Copyright notice. The date in the notice should be the year in which the work is first published, i.e., distributed to the public or any sizable audience.
- Additionally, works should be registered with the United States Copyright Office using its official forms. Forms may be obtained through the Office of Legal Affairs, to which questions concerning Copyright notices and registration also may be addressed.
31. Copyright: Copyright Agreement
In the event that it becomes necessary in order to comply with the terms of grants or contracts to establish record title in the University, or if the Associate Vice President for Research determines that educational considerations such as encouraging sharing of ideas or facilitating dramatic, literary, scientific, musical or other performances and presentations warrants requiring such assignment, the University may require faculty, staff, students, visiting scholars and/or other research and creative participants to waive their Copyright interest or demonstrate their non-ownership in a given project.
32. Copyright: Observing the Rights of Others
Members of the University community are cautioned to observe the rights of other Copyright owners. Policies regarding copying for library purposes may be obtained from the reference desk of each library. Contact the Office of Legal Affairs for University policies pertaining to copying for classroom use. Questions should be addressed to the Office of Legal Affairs.
33. Copyright: Sponsored Agreement
Contracts and grants frequently contain complex provisions relating to Copyright, rights in data, royalties, publication and various categories of material including proprietary data, computer software licenses, etc. Questions regarding the specific terms and conditions of individual contracts and grants, or regarding rules, regulations and statutes applicable to the various government agencies, should be addressed to the Office of Research and Graduate Studies or the Office of Legal Affairs.
34. Technology Mediated Instruction: General Policy
- This following subsections are designed to address Intellectual Property issues concerning Technology Mediated Instruction. Technology Mediated Instruction is defined as instructional activities that use technological innovation in development and the delivery of course content to students in a traditional setting or through distance education. It does not cover instances when the University negotiates on behalf of the faculty member to commercialize a property. In such cases, the financial arrangement between the institution and the faculty member(s) will normally be based on Patent royalty allocation formula described in this policy.
35. Technology Mediated Instruction: Ownership
- The University vests the ownership of the Copyright in Technology Mediated Instruction in the faculty member just as it has customarily done with traditional academic works unless it qualifies as Institutional Work as described herein. Patents are vested with University on the same terms previously governing Patents.
- The Copyright for Technology Mediated Instruction Materials that a faculty member creates on his or her own initiative in the course of fulfilling teaching duties will be owned by the faculty member. The faculty member also retains the right to update, edit, or otherwise review materials. Faculty members shall receive all royalties that may accrue from the commercialization of materials they have created on their own initiative.
- The faculty member retains his or her ownership of a Copyright for Technology Mediated Instruction Materials that are published and distributed by the University.
- If the faculty member leaves the University, the University may be granted a non-exclusive, royalty-free license to continue to use the work within the original scope for its instructional purposes, but shall not otherwise commercialize the work. Exceptions are noted under Institutional Rights below.
- When the University expressly commissions or contracts in writing a course or program of study ("Institutional Works"), the Copyright will be owned by the University unless expressly released to the faculty member(s). Typically, works created by non-faculty within the scope of their employment at the University or a faculty member who is required to create such courses as a condition of his or her employment will be owned by the University. Updates, edits, or revisions are made at the discretion of the institution that may also select the personnel to complete such tasks. The term faculty includes both full-time and part-time faculty.
- The Copyright for works created in partnership by faculty and the University (as in cases of faculty collaboration with a person who works for hire) will be jointly held, provided that the second party has contributed original material. In accordance with AAUP guidelines, editing on-line courses or the provision of marketing services does not constitute ownership rights for the institution. The joint ownership of the Copyright must be agreed to in advance of publication by both parties in writing and include consideration of who holds the rights to revision and derivative works.
- In cases when substantial University resources are used through institutional grants or contracts to develop commercially viable materials, the faculty member will retain the Copyright. However, the faculty author may be required to share royalties for a period of time to recoup the University's investment. Such arrangements will be evaluated on a case by case basis but shall be limited to no more than 10% of the royalty each year the contract is in force unless there has been an agreement with the University prior to the assignment of resources. The determination of "substantial institutional resources" shall be made by the Associate Vice President for Research.
36. Technology Mediated Instruction: Institutional Rights
- The University shall retain the rights to:
- control whether the institution's name or logo is displayed in association with any work;
- require appropriate acknowledgement of institutional support in the creation of the work; and
- reproduce institutional Works for uses directly related to advancing the mission or maintaining the culture of the University.
- One should consult with the Office of Legal Affairs for information on the retention of these rights.
37. Trade Secrets: Policy Objectives
A Trade Secret may be a valuable proprietary right helpful in manufacturing or other processes. Making such knowledge widely known destroys its value as a competitive advantage. To the extent possible and consistent with the University's objectives, as stated in the Introduction, such knowledge should be protected.
38. Trade Secrets: Disclosure and Protection
Any University employee with Intellectual Property falling into the Trade Secrets category should contact the Office of Legal Affairs for assistance in determining what form of disclosure and protection of the Trade Secret should be sought. Often, the only protection available for a Trade Secret will be contractual obligations of confidentiality.
39. Trade Secrets: Administration
Under normal circumstances, the process for internal consideration of Intellectual Property in the Trade Secret category will be the same as set forth in the Patent Policy, e.g., disclosure, determination of ownership, and division of proceeds resulting from the licensing.
40. Trade and Service Marks
Trade or Service Marks relating to goods or services distributed by the University shall be owned by the University. Examples include names and symbols uses in conjunction with computer programs or University activities and events. Consult the Office of Legal Affairs for information about registration, protection, and use of marks.
- The Provost is hereby designated as the University Official responsible for the administration of this policy. The Provost may delegate this responsibility to the Associate Vice President for Research. All expenses or costs associated with the administration of this policy shall be borne by the Provost and approved by the Associate Vice President for Research prior to their being incurred.
- The Associate Vice President for Research shall the inventors informed of the status of the disclosure at appropriate stages of the process in a timely fashion.
41. Associate Vice President for Research: Responsibilities
The Associate Vice President for Research shall have the following responsibilities pertaining to inventions:
- Consider invention disclosures in accordance with the following guidelines.
- Invention disclosures will be classified into three types:
- Type 1 Disclosure: The invention is jointly created with person(s) in another institution or industry. The other institution or industry is willing to pay for the entire cost of the Patent process.
- Type 2 Disclosure: The invention is jointly created with person(s) in another institution or industry. The Patent cost will be shared with the other institution or industry.
- Type 3 Disclosure: The invention is solely created by person(s) in the employ of the university.
- All invention disclosures are channeled through the Associate Vice President for Research. The Associate Vice President for Research will help the inventor (or the lead inventor, if there are co-inventors) in deciding to which class it belongs and what actions to take.
- In the case of Type 1 disclosure, the Office of Legal Affairs will prepare appropriate contracts between the University and the other institution or industry with the assistance of the inventor and the Associate Vice President for Research.
- Type 2 disclosures will be presented to the Associate Vice President for Research for evaluation and recommendation. When approved by the Associate Vice President for Research, the Office of Legal Affairs will prepare appropriate contracts between the University and the other institution or industry with assistance from the inventor and the Associate Vice President for Research.
- Type 3 disclosures will be presented to the Associate Vice President for Research for evaluation and recommendation. The Associate Vice President for Research shall make one of the following recommendations: (1) The University should make arrangements for processing the disclosure directly through its Patent attorneys or (2) The disclosure should be returned to the inventor for the inventor's own disposition. If approved by the Associate Vice President for Research, appropriate action will be initiated by the Office of Legal Affairs Office of Legal Affairs for processing the disclosure.
- Invention disclosures will be classified into three types:
- To determine, when necessary, whether intellectual properties invented or created by a staff member or a student resulted from research or work carried out in connection with a project supported entirely or largely by University resources or whether it was a product of personal research and made little or no use of University resources.
- To make recommendations in regard to exceptional Patent or other protection arrangements requested by outside sponsors.
- To act in an advisory capacity with regard to intellectual properties assigned to the University.
- In those cases in which the University has obtained a Patent without obligation to sponsors , and, if no arrangement has been made for commercial development within a reasonable period from the date of the issuance of the Patent, the inventor(s) may request in writing a return of the University's Patent rights. The Associate Vice President for Research will either recommend the granting of the request or will recommend that the University advise the inventor of the University's plans for the development of the invention.
- When the University decides not to maintain a Patent, the inventor(s) shall be given the opportunity to acquire its right with appropriate compensation.
42. Licensing of Intellectual Property
- The Licensing and Marketing of Intellectual Property provides public use of new knowledge as well as a source of revenue for the University and the inventor/creator. These purposes are best served when a spirit of cooperation exists between the University and the inventor/creator. The Licensing and Marketing of Intellectual Property are to be carried out in this spirit of cooperation.
- The University recognizes in most instances that newly created Intellectual Property is useful to the public only after or through development and/or commercialization. The University, through the Office of Legal Affairs, the Provost's Office, Office of Business and Finance, and after consultation with the inventor(s), shall be responsible for negotiation of license agreements. The following guidelines shall be applicable to license agreements with private licensees:
- All agreements shall restrict the rights granted to specifics and will define projects. No entity shall be granted the exclusive right to the development or commercialization of all Intellectual Property created at the University.
- Insofar as it is reasonably and economically feasible, all licenses for specific and defined projects shall be non-exclusive.
- If a licensee is granted exclusive rights with respect to an item of Intellectual Property, the agreement should provide that such rights will revert to the University in the event the licensee fails diligently to develop and commercialize the property within a reasonable time or the time specified in the agreement.
- A licensee should be required to reimburse the University for all expenses incurred by the University in seeking or gaining legal protection of the item of Intellectual Property. In addition, licensees should be required to do those acts necessary to continue the protection obtained by the University by prosecuting a Patent, or otherwise obtaining for the benefit of the University, protection of the Intellectual Property, that is the subject of the license. The licensee should be required to do all acts necessary for continued protection of the Intellectual Property, including, but not limited to, conducting litigation.
- The licensee should be required to defend and indemnify the University, its Board, Officers and employees from all liability arising from the development, marketing, or use of the Intellectual Property.
- The University should seek to preserve the rights, free of royalties, necessary to permit research, teaching, and publication rights of the inventors or creators of the Intellectual Property.
- Upon a licensee's failure to develop and commercialize the Intellectual Property pursuant to the conditions of the license, all rights granted shall revert to the University, and, in addition, the licensee shall disclose to the University any additional technology or know-how discovered by the licensee.
- The licensee should be required to maintain confidentiality with regard to any unPatented or otherwise unprotected technology, know-how, or created Intellectual Property.
- In cases where licensee may license or sublicense the Intellectual Property, the subject of the license shall be required to share with the University 50% of royalties and 50% of any equity position received or to which it may become entitled as a result of said license or sublicense.
- A licensee shall be required to comply with all applicable federal, state, and local laws and regulations including, without limitation, those concerning biological materials and necessary testing and approval by the United States Food and Drug Administration.
- Licenses shall contain such other provisions as may be determined to be in the best interest of the University by the Offices of Legal Affairs and Business and Finance.
43. Management and Marketing
- It is not uncommon for the creator, inventor and/or University personnel to have knowledge and skills pertaining to the management and marketing of particular intellectual properties. Nor is it uncommon for newly created technologies or processes to be the focus of newly formed business entities for the purposes of developing and commercializing those technologies or processes. It is therefore the policy of the University to seek to include in any license of Intellectual Property the right of the University and/or the inventor/creator to participate in the management of the development and commercialization of the Intellectual Property.
- Further, in those licenses where an equity position may be available to the University and/or inventor/creator either through the strength of the Intellectual Property, nature of the license, or otherwise, the license should seek to provide an equity position so long as the obtaining of that equity position does not adversely impact the overall financial return to the University and the inventor/creator.
- The Offices of the Provost, Legal Affairs, and Business and Finance shall assist in the marketing, development, and commercialization of the Intellectual Property of the University. On a case by case basis, the Offices of Legal Affairs and the Office of Business and Finance may utilize the services of Intellectual Property marketing agencies.
Appendix A: Definitions and Explanations
Copyrights: The law of Copyright grants protection to the authors of literary, musical, artistic, dramatic, and other kinds of intellectual works.
Intellectual Property: As a general proposition, the term Intellectual Property includes inventions, ideas, Trade Secrets, writings, names and symbols and combinations thereof, which, because of their characteristics, are governed and protected by the body of law of Intellectual Property. The law of Intellectual Property includes the law of Patents, Copyrights, Trade Secrets and know-hows, Trademarks and trade names.
Patents: All kinds of inventions which are original, of first inventorship, novel, and "non-obvious" may be protected by a Patent. A Patent is a government grant made upon full written disclosure of the details of an invention and in compliance with other conditions, and permitting its recipient (owner) to exclude others for a term of years from making, using, or selling the patented subject matter, except in those instances where the owner grants a license.
Technology Mediated Instruction: Instructional activities that use technological innovation in development and the delivery of course content to students in a traditional setting or through distance education.
Trade Secrets: "Trade Secret" is a legal term referring to any information or knowledge, whether or not patentable or copyrightable, which is not generally known or accessible, and which gives a competitive advantage to its owner. Trade Secrets are proprietary information. The law of Trade Secrets and know-hows covers any of an amorphous body of information, typically of an engineering or business nature, intended by its holder to be maintained in secret, and which is not in the public domain.
Trademarks: The law of trademark protects any work name, symbol, or device or combination thereof adopted and used by a manufacturer or merchant to identify his goods, and to distinguish them from those manufactured or sold by others.
Revised: January 2, 2019
Adopted: February 22, 2002