|A.||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.
|B.||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.
|C.||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:
|1)||A mechanism by which the inventor(s)
may personally pay patenting costs;
|2)||The formation of a commercial enterprise to pursue
commercialization; and, under very rare circumstances,
||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
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:
|1)||The inventions related:
|a)|| Directly to the business of the University, or
|b)||The University's actual or demonstrably anticipated
research or development, or
|2)||The invention results from any work performed
by the employee for the University.
|D.|| 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.
|E.|| 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.
|F.|| 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
|G.|| 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.
|H.||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
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 Administrative Policy Statements, Board of Regents Governance, Employment and Administrative Policies, Faculty Code and Governance, Presidential Orders, and Student Governance and Policies. 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.
|I.|| 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.
|J.|| 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 Executive Orders No. 32, No. 35, No. 43,
and No. 57.
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 of Research.
|K.||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 No. 57, 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.|
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.
|B.||General Statement of University Policy on Ownership and Use of
University faculty, staff, and students retain all rights in copyrightable materials they create, including scholarly works, subject to the following exceptions and conditions:
|1)||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.
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.
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.
It is desirable to reach agreement in writing as to the rights of the University and of participants before work begins whenever:
|a)|| A question exists as to whether the materials
will be University-owned or University-sponsored, or
|b)||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.
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.
|6)||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).
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.
|C.||Types of Materials
The types of materials to which this policy is intended to apply include:
|1)||Video and audio recordings, tapes, and cassettes.
|2)||Film, film strips, and other visual aids.
|3)||Books, texts, study guides, and similar published
|4)||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 Policy.)
|5)||Musical or dramatic compositions.
|6)||Internet-based productions and multimedia
|7)||Other copyrightable materials.
|D.||Rights Involved in Use of University-Owned
or University-Sponsored Materials
|1)|| 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.
|2)|| Use of University-owned or University-sponsored materials under
this policy shall be subject to the following conditions:
|i)|| 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
|ii)|| As long as the author or producer of such materials remains an employee of
the University, the author may:
|iii)|| 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.
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.
|E.||Division of Royalties
|1)||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.
|2)||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):
|a)|| 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
|b)|| 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 Subsection 2.E.1 above)
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.
|c)|| 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 Subsection 2.E.2.a above) 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 or
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).
|d)|| 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 Subsections 2.E.2.b and 2.E.2.c.
|e)||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 Subsection 2.E.2.c.
|F.|| Protection and Liability
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 Subsection F (subject to sponsoring agency limitations if a grant or contract is involved).
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.
|A.|| 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
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.
|C.||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 it.
|D.||Duties of Vice Provost for Intellectual Property and
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.
|E.||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
|In the latter case, the decision of the
Vice Provost will be final unless the faculty or staff
member requests arbitration of the question.
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; October 3, 1977; September 26, 1983; September 21, 1992; May 2, 2000, December 20, 2000; October 27, 2003.
For related information, see: