b. UI-Sponsored Materials. Materials are “UI-Sponsored Materials” within the meaning of this policy and shall be and are assigned to UI consistent with Subsection G, if the natural person or persons: (1) prepared the work as part of his or her employment duties at UI; (2) was specially ordered or commissioned in writing by UI or one of its distinct units to develop the work; (3) 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; (4) received release time from regular duties to produce the specific materials; or (5) made “substantial use” of UI resources in the creation or development of the specific materials, provided however that the use of UI resources openly available to the public shall not be considered “substantial use” of UI resources. Works identified in Section B-2-a of this policy shall not be considered, even if they otherwise fall within the definition of UI-Sponsored Materials, unless there is a valid written agreement between the University and the Faculty member providing for University ownership of specific work(s) or such disposition is contrary to the requirements of a sponsored program award. See Section E., below. [rev. 7-16]

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, UI employees and students accepting research grants or contracts from, and conducting research from United States federal  agencies do hereby 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, ed. 7-16]   

B-3. UI Administration of UI Sponsored 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, through the provost or his or her designee, has the right to file registrations of UI Sponsored copyrightable works. Additionally, UI, through the provost or the provost’s designee, may market, protect, transfer, convey, license, or otherwise derive income from University-Sponsored Materials. The provost, or designee, shall undertake evaluation, protection, transfer, and commercialization of UI Sponsored Materials consistent with this policy and the policies of the Board of Regents of the University of Idaho, including but not limited to Idaho State Board of Education Policy Section V. Financial Affairs, Subsection M. Intellectual Property and the related Idaho State Board of Education Institution Technology Licensing Guidelines. In light of the university’s educational mission and its role in the creation of the copyrightable materials, when entering into agreements to transfer, convey, or license the copyrightable works, the university may retain an irrevocable, non-exclusive, non-transferable, royalty-free license in University-Sponsored Materials. [rev. 7-16]

B-4. Royalties and Income.

a. Out of the gross receipts from royalties and other income from sale or licensing 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. [rev. 7-16]

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. In the event that any UI Sponsored Material is a jointly authored work, the portion of the net proceeds allocated to the natural person or persons, 40 percent, shall be divided among the original authors of the UI Sponsored Material and the portion of the net proceeds allocated to the college or service unit of the natural person or persons, 20 percent, shall be divided among the appropriate colleges and/or service units. 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. [rev. 7-16]

c. Allocation and distribution of any royalties or other income from a jointly authored work constituting UI Sponsored Material and to which ownership vests in UI and another third party shall be made in accordance with a written agreement between UI and the third party. UI’s portion of royalties or other income distributed to UI pursuant to such an agreement shall be distributed within UI following the schedule set forth in Section B-4(b), unless subject to a prior agreement between UI and the UI original author(s) of such works. [rev. 7-16]

B-5. Written Agreements.

a. The provost, or designee, represents UI in negotiating agreements with the natural person or persons pursuant to this policy. The natural person or persons who authored the 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.) [ed. 7-16]

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, or designee, 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, ed. 7-16]

c. The provost, or designee, represents UI in negotiating and exercising agreements with third parties with respect to the transfer and/or commercialization of UI Sponsored Materials. [add. 7-16]

B-6. Use of UI-Sponsored Materials. Use of UI Sponsored Materials under this policy is subject to the following conditions:

a. 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. [rev. 7-16]

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.  Defense of claims against UI employees arising from creation, development or use will be governed by the Idaho Tort Claims Act. [rev. 7-16]

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-1. Ownership by Other Than UI. A Protectable Discovery conceived and reduced to practice 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 those resources openly available to the public) 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. [rev. 7-16]

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. At its discretion, UI shall, through OTT, initiate and control the prosecution of patents on or otherwise secure the legal protection of Protectable Discoveries subject to assignment to UI under this policy. OTT shall be responsible for financing associated with such Protectable Discoveries, including but not limited to the payment of legal fees associated with the prosecution and/or protection of such Protectable Discoveries. In those circumstances in which OTT decides to seek legal protection for Protectable Discoveries, OTT shall provide direction to and shall be responsible for payment of legal counsel engaged by UI. OTT may, however, enter into alternate arrangements for legal protection of Protectable Discoveries by third parties, through written agreement with such third parties. OTT shall undertake protection and commercialization of Protectable Discoveries consistent with this policy and the policies of the Board of Regents of the University of Idaho, including but not limited to Idaho State Board of Education Policy Section V. Financial Affairs, Subsection M. Intellectual Property and the related Idaho State Board of Education Institution Technology Licensing Guidelines.  [rev. 7-97, 7-06, 4-08, 7-16]

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 on 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]

d. OTT may, in furtherance of the dissemination, use, or commercialization of UI Protectable Discoveries, engage in a range of activities including but not limited to: granting exclusive or non-exclusive licenses; assigning rights in Protectable Discoveries; entering into contracts with third parties to provide controlled access to information concerning Protectable Discoveries, materials closely related to Protectable Discoveries, or Protectable Discoveries; negotiating for acceptance of an equity interest by the Idaho Research Foundation in a company licensing a Protectable Discovery; offering guidance with respect to business planning; or making University facilities available for further development of licensed UI Protectable Discoveries or business incubation, subject to contract. [add. 7-16]

C-3. Proceeds. OTT will make provision to share the net proceeds, management, and licensing of any Protectable Discovery as follows: [ed. 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 Dispute Committee. The disputes will be decided in accordance with Section 5300(D). [ed. 7-16]

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. 1-10]