PRP 2910 - Patents and Copyrights

Issued by: Daniel C. Pantaleo, Interim Provost and VPAA
Effective Date:
Notes: Reviewed and endorsed by President's Cabinet, 11/7/86

Purpose:

The purpose of this policy statement is to clarify (1) ownership of patents and copyrights arising out of faculty research scholarship; (2) distribution of royalties where ownership is shared or vested in the University; and (3) to provide a framework for decision-making that will resolve questions arising under this policy in a timely, cost-effective and fair manner which encourages faculty creativity and scholarship while assuring that the interests of the university community as a whole are protected.

Recent changes in U.S. Copyright Law, and recent litigation and scholarship in the field of patents and copyrights, makes it clear that past assumptions about ownership and royalties of faculty scholarship produced while faculty are under contract with the university could prove to be a matter of dispute, in particular if specialized funding or support is provided or if the value of the work-product is significant. As a practical matter, we cannot decide in advance how Courts will interpret particular issues, such as the application of the "work for hire" doctrine to faculty scholarship, but we can establish a policy that will fairly avoid most problems, serve the public interest and enhance academic values.

Policy:

First Principle - Copyrights and Patents for, and Royalties from faculty scholarship arising in the normal course of faculty duties, and supported only by incidental university support such as access to secretarial assistance, office space, the library, and the like, shall belong to the faculty person or persons involved, and may be retained or assigned by them. Examples of such work product may include (but are not limited to) Textbooks, Reference Works, Articles submitted to professional or other Journals and periodicals, ideas, inventions and discoveries which are a product of the faculty person's training and scholarship and not specifically the result of a separate project independently funded by the university or with university support beyond that ordinarily made available to all faculty in that field. Computer software and related materials are excluded from this general category and dealt with separately.

Second Principle - In light of the significant cost of providing support for computer related research, and the goal of assuring that support for computer related research is available for all components of the University, Copyrights and Patents for, and Royalties from, faculty scholarship arising in the normal course of faculty duties in the field of Computer Software, Computer Programs, Data Bases, related Documentation, Computer Hardware, and any other computer-related research and scholarship shall belong to the university with the following exceptions and qualifications:

a. Academic Texts or Treatises aimed at the teaching market shall automatically be assigned to the faculty author or authors for them to retain or assignas they see fit;

b. Existing Copyrights, Patents, and Royalty arrangements as of the time of adoption of this policy shall not be disturbed;

c. There shall be a presumption that any faculty scholarship in the Computer field as described above which occurs during the period while the faculty person is under contract with the university has arisen "in the normal course of faculty duties;" this presumption can be rebutted by the faculty person documenting that the work is distinct from that which he or she does under their normal contract, and was wholly produced outside the line of University duty, on their own time, and without the use of any university facilities;

d. Royalties and other profits from scholarship in the Computer field governed by this Second Principle shall be disbursed according to the following formula:

i. Ordinarily, 30% to the author or authors of the work product, and 70% to the university, of which 35% shall be allocated to support of Computer related research within the cooperating unit or units of the author(s) and 35% to the University-Wide computer-related technology and support services;

ii. Where active University involvement in marketing and promotion of the work product is involved, the 15% of Royalties and other profits will go to the author(s) and 85% to recovery of such marketing and promotion costs; after they are recovered, then the ordinary formula will be applied, as outlined in (i) above;

iii. Who is/are the author(s) shall be determined by prior agreement among those involved, in some cases taking into account university guidelines still to be developed (such as the proposal to require student assistants to sign waivers of any authorship rights as a condition of receiving grants). Also, distribution of royalties and other profits among authors shall also be by prior agreement among the parties.

e. The use of work-processing and like equipment to produce a text in another field does not, by itself transform scholarship covered by the First Principle into computer-related scholarship.

Third Principle - Ownership of Copyrights and Patents, and rights to Royalties and other profits therefrom, arising from any other work-product produced by persons under faculty contract shall be determined on an express case-by-case basis, taking into account the general policy suggested by the first two principles, that is: That research of the sort ordinarily done by faculty without unusual supports should vest in them, whereas research of the sort involving expensive and complex new technology and equipment and other novel forms of support ought to vest in the university community as a whole, with royalties shared in a manner to serve as an incentive to the authors and a source of support for the entire community.

Examples illustrative of this principle, but not intended to exclude others, are:

a. University assists faculty in acquiring outside grant funding for special equipment, supplies and material, which make possible discovery of a patentable product or process; ownership would vest in the University, and disbursements would be made pursuant to the formula laid down in the Second Principle, unless other arrangements were made in advance; in anticipation of such a possibility, persons seeking special assistance of this sort would be expected to sign a separate contract with the University consistent with this policy;

b. Faculty applies for travel money to attend a conference, pursuant to standard University procedures, while at the conference, he/she submits a paper, which is later published; ownership would vest in the faculty person pursuant to the First Principle;

c. Faculty applies for release time and funding during this period to pursue research. University grants this, plus funds replacement faculty.

Process

Implementation of this policy should be by means consistent with existing university institutions and procedures. An advisory committee of faculty and administrators to discuss close questions will be created. Where the Third Principle controls, freedom of contract between the University and faculty person(s) should be the rule. A reference file and other support services for persons contemplating negotiating such a contract should be maintained by the Advisory Committee.

Assumptions

It is assumed that this policy would be appropriate for a University where the primary emphasis is on teaching, and where faculty scholarship usually requires a significant independent effort by the faculty in question which must be fostered rather than discouraged. The policy attempts to be flexible and does not purport to anticipate or decide all cases in advance, nor is such a more detailed policy considered wise, possible, or necessary.

Should the research role of the University be changed, a different and more detailed policy would be appropriate.

When significant outside grants and supports come into play, it is assumed that the rules and procedures imposed by the funding sources would take precedence over this policy, subject to state and federal law.