PATENT, INVENTION, AND COPYRIGHT POLICY
Section 1. Patent and Invention Policy
- This policy covers both patented and nonpatented innovations, including computer
software with commercial value, and is applicable to all faculty, staff, and
students. The policy is intended to show the University's positive attitude
toward transfer of results of its research to the private sector.
- The purpose of university research is to seek new knowledge for the general
benefit. Although university research is not directed intentionally toward
inventions, commercially valuable inventions do often result, and it is generally
in the best interests of the University and the public that patents be obtained
and/or licenses granted as described in this policy. Inventions shall be promptly
reported to the University's Office of Intellectual Property and Technology
Transfer and all concerned shall cooperate to assure prompt initiation of
appropriate technology transfer actions. The term "invention" means any invention
or discovery which is or may be patentable or otherwise protectable as to
ownership. An invention may be a process, machine, manufacture, composition
of matter or design, or any new or useful improvement thereof. An invention
is deemed to be "made" when it is conceived or first actually reduced to practice.
- University employees shall report all inventions and discoveries to the
University's Office of Intellectual Property and Technology Transfer. As a condition
of employment, and even if a specific patent agreement is not signed, University
employees agree to assign all inventions in which the University has an interest
to the University, to an invention management agency designated by the University,
or to the sponsor if required under agreements governing the research. Employees
shall execute documents of assignment and do everything reasonably required
to assist the assignee(s) in obtaining, protecting, and maintaining patent or
other proprietary rights. Students who are also employees, students working
on a sponsored project, and students who have used University resources (other
than for lecture-based coursework) shall also report all inventions and discoveries
to the University's Office of Intellectual Property and Technology Transfer
and shall assign all such inventions and discoveries in the same manner as University
employees. Inventions in which the University has an interest but which do not
meet University criteria for patenting shall be managed in accordance with policies
and procedures determined by the University Office of Intellectual Property
and Technology Transfer. If and to the extent permitted by state law and other
University policies, those procedures may include: (a) a mechanism by which
the inventor(s) may personally pay patenting costs; (b) the formation of a commercial
enterprise to pursue commercialization; and, under very rare circumstances,
(c) the transfer, for appropriate consideration, of the patent rights to the
inventor(s). These procedures shall be implemented at the discretion of the
Vice Provost for Intellectual Property and Technology Transfer.
Although all inventions and discoveries must be reported to the Office of Intellectual
Property and Technology Transfer, there are instances when the University may
choose not to assert ownership. The University will not require assignment of
interests for any invention for which no equipment, supplies, facilities, or
trade secret information of the University was used and which was developed
entirely on the employee's own time, unless (a) the inventions related (i) directly
to the business of the University, or (ii) the University's actual or demonstrably
anticipated research or development, or (b) the invention results from any work
performed by the employee for the University.
- Research funded wholly or in part by an outside sponsor is subject to this
policy as modified by the provisions of the agreement covering such work. Employees
engaged in sponsored research are bound by the provisions of the agreement between
the University and the sponsor. Title to any inventions conceived or first reduced
to practice in the course of research supported by Federal agencies, industry,
or other sponsors shall generally vest in the University. In rare cases, an
industrial sponsor may possess a dominant patent position in a certain technology
area so that any patent the University might seek would be of little or no value.
For this or other reasons, an exception to the University title policy may be
approved by the University's Office of Intellectual Property and Technology
Transfer when to do so will honor the general principles of this policy, protect
the equities involved, and satisfy the requirements of the parties.
- Industry supported research is valued by the University when it embraces
a proper balance between the University's educational mission and industry's
quest for the development of commercial products, processes, and services. Interaction
with industry may take any of several forms, including grants, contracts, consortia
agreements, and affiliate programs. Industry sponsors may be assured of at least
a non-exclusive license to inventions conceived or developed with their support.
Where the sponsor uses the invention entirely within its own operations, the
license may be royalty-free. Where the sponsor, or a third party, manufactures
and sells products, services, or processes based on the invention, reasonable
royalty payments to the University, or its assignee, are required. If necessary
for the effective development and marketing of a University invention, an exclusive
license may be granted, usually for a limited time period. Where an invention
is not identifiable in advance, the University may grant the sponsor an option
to an exclusive license if the sponsor agrees to finance the cost of the University's
patent application and observe certain diligence requirements that will assure
promptly bringing the invention into public use. The patent financing may be
treated as an offset against royalties payable when the invention is marketed.
- The University retains the right to file patents itself or to use other
patent management firms. The University has agreements with the Washington Research
Foundation, Research Corporation Technologies of Tucson, Arizona and Battelle
Development Corporation in Columbus, Ohio as patent and license agents.
- Both the University and the inventor are entitled to a share of income from
licensed inventions; the University on the basis of salary and facilities support
for the inventor and the cost of patent or license administration; and the inventor
on the basis of creative activity, documenting the invention, and assisting
as necessary with commercialization. Thus, the University allocates a share
of income to the inventor. The remainder is dedicated to further research by
allocating shares to the college/department (or other unit) in which the invention
was conceived or first reduced to practice and to the Office of the Provost.
- The University may take an equity position in a company
whether or not license fees or royalties are paid to the University as part
of a negotiated agreement. A typical circumstance under which the University
might receive equity would be as part of an agreement licensing University-developed
technology to a start-up or developing business venture. Another example might
occur when an employee of the University utilizes the expertise and/or technology
he or she has developed in the course of University employment and assists a
business venture in the commercialization of an idea. (A business venture includes
corporations, partnerships, or other commercial enterprises.) Such a commercial
association with the University and its employees adds both value and credibility
to the new business venture. To assure a balance of interests for the business
venture as well as for the University, the University will generally require
that it receive an equity position in such circumstances.
The University's equity interests are managed and disposed of in accordance
with guidelines established by the Treasury Office in consultation with the
Office of the Provost and the policies and procedures stated in the University
Handbook and Administrative Policy Statements. University employees
may be eligible to receive a portion of the University's equity interest in
accordance with the policies and procedures described in the University's Administrative
Policy Statements and as allowed under state law and University conflict
of interest policies. When such equities are liquidated, the net proceeds, after
recovery of all University costs and after any distributions to eligible recipients,
accrue to appropriate University accounts and are administered by the Provost
to promote research and technology transfer across the entire University. If
the proceeds from the disposition of a particular equity interest are unusually
large, the Provost shall confer with the University Budget Committee, the Research
Advisory Board, or other appropriate faculty bodies, on alternative uses for
amounts in excess of a base figure (set at $3 million in 2000 dollars).
There may be situations in which both the University and its employees separately
own equity interests in a business venture. In such circumstances, the employee's
equity interest is considered to be independent of the University's equity interest
and is not held, managed, disposed of, or distributed by the University. An
example would be a case in which the University receives an equity interest
in a business venture as a result of licensing certain intellectual property
developed by one of its employees and in which the same employee also owns a
equity interest as a result of being a founder of the business venture receiving
the license. In this example, the employee's equity interest is not held or
managed by the University, but rather by the employee, and the employee's status
as a founder having an ownership stake in the business venture renders the employee
ineligible to receive a distribution of a portion of the University-owned equity.
- As a public institution, the University should undertake sponsored research
only when the results can be published. Publication may be deferred for a reasonable
time during which the University and the sponsor review the feasibility of patent
coverage or other protection on an invention described in the publication. Likewise,
graduate student theses or dissertations containing invention details may be
withheld from the Library shelves for a limited period while this evaluation
process is conducted. Some research agreements may involve University access
to a sponsor's proprietary data subject to a clause defining the conditions
under which such data will be identified, accepted, and used. Students should
be able to participate in such research in a meaningful way without access to
proprietary data. When publication of the research involving proprietary data
is contemplated, the University may agree to provide the sponsor with advance
copy prior to submission for publication to allow the sponsor an opportunity
to identify any inadvertent disclosure of proprietary data.
- Employee consulting with commercial enterprises can be of significant benefit
to the University, the employee, the commercial entity, and the general public.
However, such involvements include the potential for conflicts of interest,
for the inhibition of the free exchange of information, and for interference
with the employee's primary allegiance to the University. University employees
should be guided in these arrangements by the policy stated in Volume Four,
Part V, Chapters 2 and 6
of the University Handbook. Invention clauses in consulting agreements
must be consistent with the policy of the University and with University commitments
under sponsored research agreements. Questions concerning potential conflicts
should be referred to the University's Office of the Provost and the Office
- Conflicts of interest are of prime concern when a faculty member is involved
in "deeper than consulting" arrangements with business ventures. Although the
faculty member may hold an equity interest or a management position in a business
venture, he or she must do so consistent with the principles and procedures
of Executive Order 57 (University Handbook, Volume
Four, Part V, Chapter 6, Section 6, Involvement with Commercial Enterprise,
Deeper than Consulting). In situations where the employee is a board member,
manager, or receives shares of stock, the option to purchase stock, or other
equity interest in return for the use of his or her services and/or inventions
in a business venture, approval by the Office of the Provost (after review by
the dean and the chair) is required. The primary focus of the review by the
Office of the Provost will be to ensure that potential conflicts of interest
and exposure to liability are properly managed. For example, the interests of
the graduate students involved in such cases must be protected, there must be
no direct managerial involvement of the faculty member in the business venture,
there must be an arms-length relationship between the faculty member's responsibilities
to the business venture and the faculty member's academic responsibilities,
and mechanisms must be in place to ensure that the research program of the faculty
member is not distorted by his or her interests in the business venture.
Section 2. Copyright Policy
The University encourages the publication of scholarly works as an inherent
part of its educational mission. In this connection, the University acknowledges
the right of faculty, staff, and students to prepare and publish, through individual
initiative, articles, pamphlets, and books that are copyrighted by the authors
or their publishers and that may generate royalty income for the authors.
The variety and number of copyrightable materials that may be created in the
university community have increased significantly in recent years as have the
author-university- sponsor relationships under which such materials are produced.
Therefore, the following statement of University policy on ownership and use
of copyrightable materials is provided to clarify the respective rights of individuals
and the University in this increasingly important area. The policy will be administered
by the University's Office of Intellectual Property and Technology Transfer.
- General Statement of University Policy on Ownership and Use of Copyrightable
University faculty, staff, and students retain all rights in copyrightable
materials they create, including scholarly works, subject to the following exceptions
- Grant and Contract Limitations. Conditions regarding rights in data or restrictions
on copyright privileges contained in sponsored grants, contracts, or other
awards are binding on the University and on faculty, staff, or student authors.
Copyright works, with the exception of routine progress reports, prepared
as required elements of such sponsored grants, contracts, or other awards
shall be reported to the Office of Intellectual Property and Technology Transfer
for review prior to any external dissemination of the work. If necessary to
fulfill grant and contract limitations, authors shall execute an appropriate
written assignment of copyrights to the University.
- University-Owned Materials. Materials shall be "University-owned" within
the meaning of this policy statement if the work is a "work for hire" under
copyright law or the author was commissioned in writing by the University
(or one of its colleges, schools, departments, or other divisions) to develop
the materials as a part of the author's regularly compensated duties, as for
example, released time arrangements in the case of faculty members. As to
a faculty member, "commissioned in writing" specifically does not refer to
his or her general obligation to produce scholarly works.
- University-Sponsored Materials. Materials shall be "University-sponsored
materials" within the meaning of this policy statement if the author developed
the materials in the course of performance of his or her normal duties and
utilized University staff, resources, or funding to develop the work. As to
a faculty member, "normal duties" does not include his or her usual scholarly
activity unless it involves extensive uncompensated use of University resources.
- Written Agreements. It is desirable to reach agreement in writing as to
the rights of the University and of participants before work begins whenever
(1) a question exists as to whether the materials will be University-owned
or University-sponsored, or (2) copyrightable materials are likely to result
from the joint efforts of persons in academic departments and University service
departments. As to jointly-developed materials, determination of rights in
written form shall be accomplished no later than prior to sale of the materials
in question. Questions concerning the interpretation and administration of
this policy shall be resolved in accordance with Section 3.
- Proportional Ownership. In case of materials developed in substantial part
under commission and in substantial part through other means, the materials
shall be regarded as "University-owned" in an appropriate proportion. In the
case of materials developed in substantial part during the course of normal
duties and with use of University staff, resources, or funding the materials
shall be regarded as "University-sponsored" in an appropriate proportion.
- Royalty-Free Privileges to University. The University retains a right to
royalty-free use of any copyrightable materials developed by University employees
(other than books and materials available from a publisher through normal
distribution channels) when the development of such materials was advanced
through the use of University facilities, supplies, equipment, or staff services.
This right exists even though the materials do not constitute University-owned
or University-sponsored materials as defined above (e.g., where use of facilities
by a faculty member was not extensive).
- Student Writings. Students employed by the University in any capacity are
covered by the terms of this policy. In addition, where a student receives
financial aid or remuneration under a sponsored research, training, or fellowship
program, his or her rights in copyrightable materials are limited by the terms
of the University agreement with the sponsoring agency. The University has
no ownership rights in copyrightable materials developed by students who are
not employees of the University or in materials unrelated to their employment.
- Types of Materials.
The types of materials to which this policy is intended to apply include:
- Video and audio recordings, tapes, and cassettes.
- Film, film strips and other visual aids.
- Books, texts, study guides and similar published materials.
- Computer programs and software when copyright rather than patent or trade
secret protection is relied upon as the primary source of legal protection.
(When the primary commercial value of a computer program lies in its transfer
in limited quantities under arrangements of confidentiality, it shall be treated
as unpatented technology and be subject to the University Patent and Invention
- Musical or dramatic compositions.
- Internet-based productions and multimedia products.
- Other copyrightable materials.
- Rights Involved in use of University-Owned or University- Sponsored Materials.
- Two categories of use are differentiated for purposes of this policy: internal
use and external use. Internal use refers to use by any unit of the University
for instruction, research, or other educational purposes. External use refers
to use by other educational institutions, government and other nonprofit institutions,
and use resulting from lease or other contractual arrangements for commercial
distribution of the materials.
- Use of University-owned or University-sponsored materials under this policy
shall be subject to the following conditions:
- Internal use
- Each instance of use of such materials within
the University requires the approval of the author and the department or college
unless advance approval is waived through a prior written understanding or
the author's consent is implicit in the terms of the grant or contract supporting
the work. Internal uses of such materials will not involve a transfer of funds
between departments unless the lending department incurs incremental costs
in order to make the materials available.
- As long as the author or producer of such
materials remains an employee of the University, the author may: (a) request
reasonable revisions of the materials prior to any instance of internal use,
or (b) ask that the materials be withdrawn from internal use if revisions
are not feasible.
In cases where the University has invested significant funds in the production
of the materials and the author/producer is unable to agree with the department
head on appropriate revision or withdrawal of materials, the question will
be referred to the dean of the school or college for mediation.
- If the author or producer terminates employment
with the University, then the University retains the right to continue internal
use of the material unless the author/producer and the University agree in
writing on special conditions for subsequent internal use of the materials
and the procedures for their revision.
- External use
Licensing or sale of University-owned or University- sponsored materials for
external use shall be preceded by a written agreement between the University
and the author or producer specifying the conditions of use, and including
provisions concerning the right of the author or producer to revise the materials
periodically, or to withdraw them from use-- subject to existing agreements--in
the event revisions are not feasible.
- Division of Royalties.
- General Policy on Royalties. As to University-owned materials, all royalties
and income should inure to the University and its schools, colleges, and departments
as such materials are prepared in exchange for agreed compensation. As to
University-sponsored materials, a sharing of royalties and income is appropriate
because of the author's provision of creative efforts on the one hand and
the University's provision of salary, facilities, administrative support,
and other resources.
- Royalties on Sales to Outside Users. Where University-owned or University-sponsored
materials are to be sold or rented to outside users, the following guidelines
pertaining to financial arrangements should be observed (subject to any limitations
specified by granting agencies):
- All incremental expenses related to the distribution of copies will be
recovered from each sale or rental. Original costs for production of the materials
shall be recovered only if and as agreed to in writing prior to preparation
of the materials by the author and the academic departments and/or other University
units which incur those costs.
- In the case of University-owned materials, royalty and other income from
sale or use of the materials (after recovery of costs as specified in 1.)
shall be divided one-half to the University and one-half to the school/college/department
of the author or authors. The University share shall be used to promote research
across the whole University and shall normally be administered by the Office
of Research. The school/college/department share shall be allocated to the
dean of the college or school, and may be used for research, education, and
communications. At least 75% of this share should normally go to the author's
department for use there according to departmental and college goals. The
dean should have discretion in distributing the remaining 25% to promote activities
according to the nature and needs of the college or school in question.
- In the case of University-sponsored materials, royalty and other income
from the sale or use of materials (after recovery of costs as specified in
a.) shall be divided according to the Administrative Policy Statement 59.4,
"Technology Transfer." In any given case covered by this subsection, the author
may dedicate all or any portion of his/her allocation to the school/college/department,
the Office of Research, or other administrative unit, subject to the provisions
of Administrative Policy Statement 59.4).
- In certain instances it may be advantageous to market University-owned
or University-sponsored materials through outside commercial sources or the
University Press. Net royalty income from such sources shall be divided as
specified in b. and c.
- Royalty and other income from updating and revision of University-sponsored
materials shall be treated as income and royalty from such University-sponsored
materials, unless otherwise agreed to in writing by the author/producer and
the University before preparation of the original materials. The net income
from such upkeep or revision shall be separately computed on an annual basis
for the purpose of applying the distributions referenced in paragraph c.
- Protection and Liability.
- Protection. The Office of Intellectual Property and Technology Transfer
shall investigate allegations of unauthorized use or copyright infringement
of University-owned and University-sponsored materials and shall recommend
appropriate action. If such action is started by the University, all costs
of such action shall be borne by the University. All proceeds in excess of
such costs shall be shared as provided in Subection F. (subject to sponsoring
agency limitations if a grant or contract is involved).
- Liability. When there are allegations of violation of personal or property
rights by the University, or by the author or producer of University-owned
or University-sponsored materials copyrighted by the University, the University
shall assume responsibility for the defense of any action and the satisfaction
of any judgment rendered against the University or the author or producer.
Section 3. Interpretation and Administration of Policy.
- The President has designated the Vice Provost for Intellectual Property and
Technology Transfer as the officer of the University to administer, apply, and
interpret the provisions of this policy. The Vice Provost shall have the authority
to determine whether the facts of a given case merit special consideration.
- Committee. The President of the University will appoint an Intellectual Property
Management Advisory Committee to review periodically the policy set forth in this
statement and recommend such changes to the President as the Committee deems desirable.
The Committee will also advise on broader intellectual property issues that arise
in the promotion and protection of research. The Committee will report to the
Vice Provost for Intellectual Property and Technology Transfer and consist of
no fewer than five members, a majority of whom shall be chosen from the faculty.
- Distribution of Statement. When this statement becomes effective as University
policy, the President's office shall see that all departments and administrative
offices of the University are properly informed. Thereafter, the Vice Provost
for Intellectual Property and Technology Transfer shall remind deans and department
heads periodically of the existence of the policy, inform them about any significant
interpretations of the policy, and invite comments or questions regarding
- Duties of Vice Provost for Intellectual Property and Technology Transfer.
The Vice Provost for Intellectual Property and Technology Transfer shall manage
the Office of Intellectual Property and Technology Transfer, which will represent
the University in negotiating agreements with inventors, authors or producers,
or licensees pursuant to this policy. She or he may consult also with department
heads and the heads of production units involved in a specific technology
transfer transaction, and she or he shall sign or recommend all agreements
for signing consistent with delegated authority. Where copyright coverage
should be obtained on University-sponsored or University-owned materials,
the Office of Intellectual Property and Technology Transfer will facilitate
the copyright application. The faculty or staff member who is the author of
University-owned or University-sponsored materials shall execute a written
transfer of copyright to the University when necessary or appropriate.
- Inquiries on Status of Materials. Any faculty or staff member who has a
question as to whether or not particular materials will be considered University-owned
or University- sponsored should initiate an inquiry to the Office of Intellectual
Property and Technology Transfer as to their status. This inquiry, with all
relevant facts, should be forwarded via the author's department head. Thereafter,
the Vice Provost for Intellectual Property and Technology Transfer shall advise
the author or producer as promptly as possible as to whether or not it appears
that the materials should be regarded as University-owned or University-sponsored
within the meaning of this policy. The Vice Provost for Intellectual Property
and Technology Transfer's decision in such cases will be considered as an
advisory opinion subject to final clarification when the work is completed.
At that time, the faculty or staff member should either (1) indicate concurrence
in the original decision, or (2) request that the question of rights be submitted
for decision to the Vice Provost for Intellectual Property and Technology
Transfer. In the latter case, the decision of the Vice Provost will be final
unless the faculty or staff member requests arbitration of the question.
- Arbitration. In the event of any differences between faculty or staff members,
on the one hand, and the Vice Provost for Intellectual Property and Technology
Transfer, on the other hand, and when the questions cannot be reconciled by
direct negotiation, the matter shall be submitted for binding arbitration
either to a single arbitrator agreed on by all parties or to a special three-person
panel consisting of one person representing the faculty or staff member, one
person representing the University, and a third person designated by the first
two. Knowledgeable members of the University community will normally be chosen
for such panels in order to expedite a decision and minimize cost. In the
event costs are incurred, they shall be divided equally between the faculty/staff
member and the University. Decisions of the panel will be binding on both
parties. The panel shall have full access to any pertinent records over which
the faculty/staff member or the University has jurisdiction.
BR, March 1969; Executive Order No. 36 of the President, June 1, 1972; revised
October 3, 1977; September 26, 1983; September 21, 1992; May 2, 2000, December
20, 2000; October 27, 2003.