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CHAPTER FIVE: 5300
RESEARCH POLICIES
July 2009
5300
COPYRIGHTS, PROTECTABLE DISCOVERIES AND OTHER
INTELLECTUAL PROPERTY RIGHTS
PREAMBLE: This
section outlines UI policy concerning copyrights, as they arise from
university research. Particularly this section discusses the assignment of
ownership to such copyrights. This section was part of the 1979 Handbook but
was revised in a significant way 1) in July of 1992 to reflect changes in
applicable federal law, 2) in January of 1995 by the addition of subsection
C-5 to reflect the change in the Regents' intellectual property and conflict
of interest rule (former IDAPA 08.01.09.101.03c), and 3) in 2007 to update
terminology and add clarity to the rights and obligations of the University
and of its employees and students in dealing with intellectual property,
and in 2008 edited to reflect the restructuring of technology transfer
functions from Idaho Research Foundation to the Office of Technology Transfer.
In 2009 revisions were made to B-2 to comply with federal law.
Unless otherwise noted, the text is as of July 1996. For more information,
contact the Research Office (208-885-6651). [ed. 7-98, rev. 2-07, 4-08, 7-09]
CONTENTS:
A. Introduction
B. Copyrights
C. Protectable Discoveries
D. Dispute Resolution
E. Special Arrangements for
Federal, State, and Private Grants
F. Record-Keeping
A. INTRODUCTION. The UI
encourages the creation of scholarly works as an integral part of its mission.
UI participation in the development, marketing, and dissemination of educational
materials has as its aim the improvement of the quality, effectiveness, and
efficiency of student learning and of faculty and staff development. The UI
recognizes its obligation to transfer technology and useful discoveries to
society. With respect to all types of intellectual property, the rights and
obligations of UI, its employees and students and other third parties shall be
governed by this policy. To the extent permitted by this policy, individuals may
enter into contracts with UI to address intellectual property, in which case the
contract terms shall control, provided that the contract was entered into in a
manner consistent with this policy.
A-1. DEFINITIONS. For
purposes of this Section 5300 and Section 5400, the following terms shall
have the following meanings:
a. “electronic” shall mean
relating to technology having electrical, digital, magnetic, wireless,
optical, electromagnetic, or similar capabilities.
b. “written” or “in writing”
shall include information created, generated, sent, communicated,
received, or stored by electronic means, including without limitation
email, telecopy, and facsimile transmissions.
c. “natural person or
persons” means natural person or persons involved in the creation or
development of intellectual property.
B. COPYRIGHTS. UI
participation in the development of copyrightable works raises questions
concerning the ownership and use of materials in which UI has become an active
and intentional partner through substantial investment of resources. This policy
is established to clarify the rights of the natural person or persons and the UI
regarding ownership and use of copyrightable materials in the absence of a valid
written agreement between the natural person or persons and UI. The UI
acknowledges the right of faculty and staff members and students to prepare and
publish materials that are copyrightable in the name of the natural person or
persons and that may generate royalty income for the natural person or persons.
(In this policy, “the natural person or persons” is to be construed broadly as
including producers of creative works in the arts and sciences and creators of
literary or scholarly writing.)
B-1. Coverage. The types
of materials to which this policy applies include:
a. Study guides, tests,
syllabi, bibliographies, texts, books, and articles.
b. Films, filmstrips,
photographs, slides, charts, transparencies, illustrations, and other
visual aids.
c. Programmed instructional
materials.
d. Audio and video
recordings.
e. Simultaneously recorded
live audio and video broadcasts.
f. Dramatic, choreographic,
and musical compositions.
g. Pictorial, graphic, and
sculptural works.
h. Computer software,
including computer programs, procedural design documents, program
documents, and databases as defined below: [ed. 7-00]
(1) “Computer program”
means a set of instructions that direct a computer to perform a
sequence of tasks.
(2) “Procedural design
document” refers to material that describes the procedural steps
involved in the creation of a computer program.
(3) “Program document”
refers to material created for the purpose of aiding the use,
maintenance, or other interaction with a computer program.
(4) “Data base” means a
collection of data elements grouped together in an accessible
format.
i. Other copyrightable
materials, including materials generated in the production of any of the
above works.
B-2. Assignment of Ownership.
Faculty, staff members, and students retain all rights in the copyrightable
materials they create except in the cases of “UI-Sponsored Materials” as
defined in Subsection B-2-b below, materials subject to grant of a
non-exclusive license to UI for public access as described in Subsection
B-2-c below, materials covered by a Grant or Contract
as discussed in Subsection E below, and materials covered by a valid written
agreement between the natural person or persons and the UI as discussed in
Subsection B-5 below. Faculty members, staff members, and students shall
co-operate with reasonable requests from UI for the creation of any
documents and records needed to vest and memorialize UI’s rights, if any.
[rev. 7-09]
a. Retention of Rights.
Except as otherwise provided in Subsection B-2-b and B-2-c, the natural person or
persons retain the rights to: (1) copyrightable works produced while on
sabbatical leave; (2) study guides and similar materials; and (3) works
prepared as part of the general obligation to produce scholarly or other
creative works of the natural person or persons, such as, but not
limited to articles, books, musical compositions, and works of art.
b. UI-Sponsored Materials.
Materials are “UI-Sponsored Materials” within the meaning of this policy
if the natural person or persons: (1) was commissioned specifically in
writing by UI or one of its distinct units to develop the material as
part of his or her employment duties and the writing states that the
resulting works would be considered “UI Sponsored”; (2) received extra
pay from UI to prepare the specific materials pursuant to a valid
written agreement providing that the extra pay is consideration for the
preparation of the specific materials; (3) received release time from
regular duties to produce the specific materials; or (4) made
“substantial use” of UI resources in the creation or development of the
specific materials, provided however that the use of UI resources
regularly and customarily available to him/her as part of his/her
regular employment or as part of his/her regular academic enterprise,
shall not be considered “substantial use” of UI resources.
c. University
Non-exclusive License for Public Access. In order to permit UI
to comply with public access mandates established by federal law or
federal agency or university policy (e.g. the National Institutes of
Health Public Access Policy, Division G, Title II, Section 218 of PL
110-161 [Consolidated Appropriations Act, 2008]) and related terms and
conditions of research agreements, faculty, staff, and students
accepting research grants or contracts from, and conducting research
from United States federal agencies shall grant UI an irrevocable,
non-exclusive, non-transferable, non-commercial, royalty-free license in
copyrightable materials produced as a result of such research, such
license to be used solely to comply with public access mandates.
This grant of non-exclusive license is deemed by UI to be a special
arrangement for federal grants and contracts, per Subsection E below,
and is not subject to the disposition of rights described in B-2-b or to
negotiation under Section B-5 below. [add. 7-09]
B-3. Registration of
Copyrightable Materials. Absent a valid written agreement otherwise, UI
Sponsored Materials are to be registered in the name of the Regents of the
University of Idaho or its’ assignee. UI or its designee has the right to
file registrations of UI Sponsored copyrightable works.
B-4. Royalties and Income.
a. Out of the gross receipts
from royalties and other income from sale or rental of UI Sponsored
Materials, the UI, college, department, other unit, or UI’s designated
agent may recover reasonable expenses that it incurred in the
development, marketing, or dissemination of the materials.
b. Absent a valid written
agreement to the contrary, the net proceeds are distributed as follows:
40 percent to the natural person or persons, 40 percent to UI or its
designated agent, and 20 percent to the ’college or service unit of the
natural person or persons. At least half of the share allocated to the
college or other unit is given to the department of the natural person
or persons for use in furtherance of its goals.
c. UI retains a right to
royalty-free internal use of any materials designated UI Sponsored under
this policy.
B-5. Written Agreements.
a. The provost represents UI
in negotiating agreements with the natural person or persons pursuant to
this policy. The natural person or persons of copyrightable material may
negotiate with the provost and arrive at a mutually agreeable contract.
The provost consults with the dean or departmental administrator of the
department of the natural person or persons in drafting these
agreements. (For purposes of this policy, “dean” includes persons with
equivalent administrative capacities.)
b. Valid written
agreements concerning copyright ownership, use of copyrighted materials,
and distribution of royalties and income from copyrightable works which
are entered into by one or more natural person or persons and the
provost supersede the provisions of this Section 5300. ’ To be valid,
such agreements must (1) comply with the terms of any relevant Grants or
Contracts as discussed in Subsection E below, (2) comply with the
policies of the UI Board of Regents, and (3) comply with Idaho state and
federal law. (rev. 4-08)
B-6. Use of UI-Sponsored
Materials. Use of UI Sponsored Materials under this policy is subject to
the following conditions:
a. Internal Use. Internal use
is use by anyone employed by UI, or attending the UI as a student, while
acting within the scope of his or her employ or academic enterprise, or
any agent of UI acting within the scope of his or her agency, either
directly or through a grant or contract, or by any UI unit. Internal use
of UI Sponsored Materials for the same general purpose for which they
were developed, and revision of such materials, do not require the prior
approval or notification of any of the natural person or persons.
However, for as long as any natural person or persons involved in the
creation or development of UI Sponsored Materials remains a UI employee
or student, such natural person or persons may, in a professionally
appropriate manner, propose revisions of the material.
b. External Use. External use
is any use other than that defined in Subsection B-6-a. above. Licensing
or sale of UI Sponsored Materials for external use must be preceded by a
valid written agreement between the natural person or persons and UI or
the UI’s designated agent specifying the conditions of use, and
including provisions concerning updating or revision of the materials.
B-7. Protection.
a. Allegations of
unauthorized use or copyright infringement of UI Sponsored Materials
should be made to the Intellectual Property Committee for investigation.
The committee will recommend appropriate action to the provost.
b. If such action is
initiated by UI alone or in concert with the natural person or persons,
the costs are borne by UI or UI’s agent. Proceeds from the action in
excess of costs are shared as provided in Subsection B-4-b.
c. If the natural person or
persons involved in the creation or development of the allegedly
infringed intellectual property desires to institute a suit and UI
decides not to act, UI will co-operate either by assigning to the
natural person or persons such rights as are necessary for the natural
person or persons to pursue redress or by some other reasonable method
acceptable to UI. The costs of the suit will be born by the natural
person or persons desiring to sue, who will also obtain any monetary
relief obtained from the alleged infringer due to the prosecution of the
suit.
B-8. Liability. When
either UI or the natural person or persons involved in the creation or
development of materials copyrighted by UI or its assignee is alleged to
have violated personal or property rights, UI or its designated agent
assumes responsibility for the defense against such allegation and the
satisfaction of any judgment rendered against UI or the natural person or
persons except insofar as liability of governmental entities is limited by
Idaho Code 6-903 as currently written or later amended.
B-9. Waiver. Any person
involved in the development of copyrightable materials governed by Section
5300 B waives any claim that otherwise legal use of the material by UI, its
agents, employees, or distinct units, creates legal liability by UI, its
agents, employees, or distinct units, on any theory of indirect
liability for allegedly infringing actions of third parties. [ed. 4-08]
C. PROTECTABLE DISCOVERIES.
“Protectable Discoveries,” for purposes of this Section 5300 is defined to
include anything which might be protected by utility patent, plant patent,
design patent, plant variety protection certificate, maskwork, or trade secret.
All Protectable Discoveries made by UI employees at any of its facilities in the
course of programs carried on by UI or made by persons in the course of working
on such programs or projects under contracts or agreements with UI belong to UI.
The natural person or persons involved in the creation or development of such
Protectable Discoveries shall assign to UI all such (1) Protectable Discoveries,
(2) applications for legal protection of such Protectable Discoveries, and (3)
utility patents, plant patents, design patents, and plant variety protection
certificates resulting from such Protectable Discoveries. Absent a valid written
agreement to the contrary, any Protectable Discoveries made by UI employees or
such other natural person or persons identified above with the use of facilities
(other than library resources, normal office use, incidental use of the UI
internet network consistent with UI internet use policy, and other facilities
for which the person has paid use fees) owned by UI or made available to it for
project or research purposes are deemed to have been made in the course of
working on a research program or project of UI.
C-1. Ownership by Other Than
UI. A Protectable Discovery made by a natural person or persons wholly
on his or her own time outside of his or her duties at UI and without the
use of UI facilities (other than library resources, normal office use,
incidental use of the UI internet network consistent with UI internet use
policy, and other facilities for which the person has paid use fees) belongs
to that natural person or persons, even though it falls within the field of
competence relating to the person’s UI position. This provision also allows
any Protectable Discovery made by a natural person or persons in the course
of private consulting services carried out by the person in conformance with
the UI’s policy on professional consulting and additional workload [see
3260] to be assigned to the consulting sponsor.
C-2. UI Processes.
All Protectable
Discoveries made by a natural person or persons in the course of working on
a UI research program or project must be submitted to the Office of
Technology Transfer (OTT). If
a Protectable Discovery is accepted by OTT for development, management,
marketing, licensing, or assignment in any manner for the purposes of this
policy, OTT must ensure that such property is conveyed, assigned, or transferred
to UI. OTT shall have full power to manage such rights and to enter into contracts
and licenses concerning such rights, including the right to join in
agreements with other nonprofit intellectual property-management entities.
[rev. 7-97, 7-06, 4-08]
a. Upon submission of
intellectual property to OTT, OTT must make a formal written decision to
pursue commercialization for that property within three months. If OTT does not file for protection of the
intellectual property within eighteen months of the date the disclosure
was submitted, the rights shall be evaluated for return to the inventors. If
OTT submits a provisional patent application for intellectual property
protection, a “full” and non-provisional patent application must be
submitted within nine months of the date of the submission of the
provisional patent.
[add. 7-97; ed. 7-98, rev. 4-08]
b. The OTT shall submit
semi-annual reports, as long as UI owns the property, to both the
inventor/natural person or persons of and to the college or center where
the inventor(s) are located. The report will include: 1) the status of the
application until such time that protection is granted, 2) the marketing
activities for the property being serviced, and 3) an accounting for
funds received from the property. In the event that OTT has been
unsuccessful in transferring a property or filing a patent application
within three years after its first acceptance, OTT must notify the
college or center and inventor(s) in
writing. [add. 7-97, rev.
7-06, 4-08]
c. If OTT determines not to
pursue commercialization of a Protectable Discovery, the University may elect, subject to controlling federal law,
including but not limited to 37 CFR 401 (“Bayh-Dole”), to reconvey, assign
and transfer the Protectable Discovery to the natural person or persons
(inventors) involved in the creation of the intellectual property.
[rev. 4-08]
C-3. Proceeds. OTT will
make provision to share the net proceeds, management, and licensing of any
Protectable Discovery as follows: [rev. 4-08]
a. Legal and development
expenses incurred by OTT will be reimbursed first out of the net proceeds,
prior to any distributions. [rev. 4-08]
b. Absent a valid written
agreement to the contrary, the net proceeds in excess of legal and
development expenses
shall be distributed as follows: 40 percent to the natural person or
persons; 40 percent to OTT; and 20 percent to
the college or service unit of the natural person or persons. At least
half of the share allocated to the college or other unit is given to the
department of the natural person or persons for use in furthering its
goals. [rev. 4-08]
C-4. Ownership Questions.
Questions as to the ownership of a Protectable Discovery or division of
proceeds between persons involved in development of such discoveries and
departments are referred in the first instance to the Intellectual Property
Committee. The disputes will be decided in accordance with Section 5300(D).
D. DISPUTE RESOLUTION. From
time to time, disputes will inevitably occur concerning ownership of the
intellectual property (copyrights and Protectable Discoveries) contemplated in
this Section 5300. Resolution of such disputes shall be achieved by the
following procedure:
D-1. Intellectual Property
Dispute Committee. The Intellectual Property Dispute Committee (IPD
Committee) shall be an Ad Hoc Committee formed when necessary by
appointments made by the Provost, in consultation with the Chair of Faculty
Senate and the President of the Graduate and Professional Student
Association (GPSA). Normally the IPD Committee shall be composed of five
faculty members and two graduate students. The Provost shall appoint the
chair from among the faculty members. In the event the GPSA shall fail to
appoint one or more student members, the IPD Committee may nonetheless be
formed by the Provost and conduct business without the GPSA student
representatives. [ed. 7-09]
D-2. Recommendation by the
Intellectual Property Dispute Committee. The IPD Committee considers,
investigates, and makes recommendations toward resolution of disputes
concerning (1) ownership of copyrightable materials and Protectable
Discoveries, and (2) allegations or unauthorized use or copyright
infringement of UI Sponsored Materials. It reviews all relevant evidence
submitted to it before making its recommendation to the provost. The IPD
Committee’s recommendation is to be made no later than 60 days after
receiving the matter for consideration. The IPD Committee’s recommendation
is determined by a majority of all its members voting by secret ballot at a
meeting at which over one-half its appointed members are present. No member
may participate in any matter in which his or her ownership rights are being
determined.
D-3. Decision by the Provost.
After receiving the recommendation of the IPD Committee, the provost makes a
decision concerning ownership or infringement. The provost’s decision is
made no later than 30 days after receiving the IPD Committee’s
recommendation. That decision is transmitted in writing to the natural
person or persons and to his or her departmental administrator and dean.
D-4. Appeal of the Decision of
the Provost. The decision of the Provost may be appealed to the
President of the University. Further appeals shall be made as from any other
decision of an administrative body under the laws of the State of Idaho in
effect from time to time.
E. SPECIAL ARRANGEMENTS FOR
FEDERAL, STATE, AND PRIVATE GRANTS. Nothing in this policy shall prevent UI
from accepting research grants from, and conducting research for, agencies of
the United States upon terms and conditions under applicable provisions of
federal law or regulations that require a different disposition of rights in any
form of intellectual property. Moreover, nothing herein shall prevent
cooperative arrangements with other agencies of the state of Idaho for research.
Where receipt of a grant in support of research from any nonprofit agency or
group may be dependent upon acceptance of terms and conditions of the
established intellectual property policy of the grantor that differ from those
stated herein, UI may specifically authorize acceptance of such grant upon such
terms and conditions. UI may also specifically authorize contractual
arrangements with an industrial sponsor for different disposition of rights in
any form of intellectual property resulting from its sponsored research.
F. RECORD-KEEPING. See Section
5500 for record-keeping procedures that are recommended in order to safeguard
the property rights of UI or the faculty member in research and potentially
patentable results.
[For
form of employment agreement concerning patents, see 5400.]
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