Intellectual Property Policy

AUDIENCE

All University employees and students.

PURPOSE STATEMENT

The purpose of this Policy is to inform all employees and students of Thomas More University of their rights and responsibilities whenever the results of their research or creative endeavors are patentable, copyrightable, or commercially marketable.

DEFINITIONS

Copyright: an original work of authorship that has been fixed in any tangible medium of expression from which it can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.  Copyright includes a bundle of rights: the right to make reproductions of the work, the right to distribute copies of it, the right to make derivative works that borrow substantially from a copyrighted work, and the right to make public performances or displays of most works.

Directed Work: materials produced in direct response to a request or tasking by the University, but outside of work produced for any specific course or duties. 

Intellectual Property: certain creations of the human mind that are granted legal aspects of a property right.  These property rights include patents, copyrights, trademarks, trade secrets, and any other such rights that may be created by law in the future.

Invention: any new and useful process, art, method, technique, machine, device, manufacture, software, composition of matter, or improvement thereof.

Inventor: a person subject to this Policy who makes an Invention.

Inventions Made on Own Time: inventions or discoveries made by University faculty, staff, or students entirely on their personal time and not involving the use of University Facilities or materials.

Originator: the individual(s) responsible for the creation of an original work of authorship that results in a Copyright.

Patent: a grant issued by the U.S. or a foreign patent office that gives an Inventor the right to exclude others from making, using, or selling the Invention within the United States or other geographic territories for a period of years from the date of filing of the patent application.

Personal Time: time other than that devoted to normal or assigned functions in teaching, University service, or direction or conduct of research on University premises or utilizing University Facilities.

Royalties: all compensation of whatever kind received from the sale, license, or other transfer of Intellectual Property rights by the University to a third-party.  This includes, but is not limited to, percentage payments, up-front fees, milestone payments, shares of stock, and any other financial or in-kind consideration.

Sponsored or Externally Contracted Works: any type of copyrighted work developed using funds supplied under a contract, grant, or other arrangement between the University and third-parties, including sponsored research agreements.

Traditional Works or Non-Directed Works: a pedagogical, scholarly, literary, or aesthetic (artistic) work resulting from non-directed effort.  Such works may include textbooks, manuscripts, scholarly works, fixed lecture notes, distance learning materials not falling into one of the other categories of this Policy, works of art or design, musical scores, poems, films, videos, audio recordings, or other works of the kind that have historically been deemed in academic communities to be the property of their creator.

University Facilities: means any facility, including equipment and material, available to the inventor as a direct result of the inventor’s affiliation with the University, and which would not be available to a non-University individual on the same basis.

THE POLICY

Thomas More University is committed to providing an atmosphere conducive to scholarship, research, and creative activity.  University employees and students are encouraged to engage in the scholarly pursuit of knowledge, artistic production, and research.  Although not the original intent, the results of such pursuits on the part of employees and students may lead to the development of Intellectual Property that may be patented, copyrighted, or otherwise have commercial value.  The University recognizes the need to balance a number of diverse interests in such matters; thus, this Policy reflects the University’s commitment to (a) encourage, support, and motivate Thomas More University employees and students in the creation of new knowledge and new applications of existing knowledge; and (b) safeguard the current and potential financial assets of the University.

Note: If any portion of this Policy conflicts with any agreement signed by the University, the provisions of the agreement will prevail.  If any portion of this Policy conflicts with a signed agreement between the University and an Inventor/Originator (or a person who assists in the creation of Intellectual Property) or between the University and an external funding agency, the terms of the signed agreement will prevail.

I. Copyright Ownership

With respect to determining ownership of Copyright, the University's policy addresses works by category of copyrightable work (i.e., Traditional or Non-directed Works, Directed Works, and Sponsored or Externally Contracted Works) and by category of author (i.e., faculty, staff, or student).  Ownership of copyrighted subject matter, including software, hinges on which category of work and which category of author, pertain to the work at issue.

A. Works by Faculty

1. Traditional Works or Non-Directed Works: The faculty member, as the Originator of a Traditional Work or Non-Directed Work, is the owner.

Because the University has contributed to the production of Traditional Work or Non-Directed Work materials, the University also has the following rights and privileges regarding Traditional or Non-Directed Works produced by members of the faculty:

• To be notified of potential publication or other form of dissemination; and
• To require (or bar) the faculty member to identify herself/himself as an employee of Thomas More University in any publication or dissemination.

If the University is to be involved in commercializing a Traditional Work or Non-Directed Work, the faculty member shall assign the work to the University under an Assignment Agreement.  The Assignment Agreement shall contain provisions outlining the commercialization responsibilities of the University and a mechanism for the sharing of commercial proceeds with the faculty member.  

In cases of ownership by the faculty member of a Traditional Work or Non-Directed Work, the University has a non-exclusive, nontransferable, royalty-free license for its own educational or research use (hereinafter referred to as a "Shop Right").

2. Traditional Works or Non-Directed Works Involving Exceptional Use of Institutional Resources: "Exceptional use of Institutional Resources" means University support of Traditional Works with resources of a degree or nature not routinely made available to faculty or other employees in a given area. In such circumstances, ownership is negotiable.  However, upon agreement by the Provost, the University may release or transfer its rights to the faculty member, with the University retaining (a) a Shop Right, and/or (b) the University’s right to require reimbursement and/or income sharing from the faculty member to the University if the work produces income for the faculty member.  The parties may also negotiate for joint ownership of such works, with the approval of the Provost.
3. Directed Works: The University is the owner of "Directed Works." The faculty member, where practical, shall be granted a Shop Right.  The University may release or transfer its authorship rights to the work's Originator under a written agreement negotiated between the faculty member and the University, usually with the University retaining (a) a Shop Right, and/or (b) the right to require reimbursement and/or income sharing from the work's faculty member to the University if the work produces income for the faculty member.  The parties may also negotiate for joint ownership of such works, with the approval of the Provost.
4. Sponsored or Externally Contracted Works: For a Sponsored or Externally Contracted Work created under an agreement that expressly requires copyright ownership by the University, the faculty member of the work must disclose the work to the University. Provided there is no conflict with a sponsored agreement, the University may release or transfer its rights to the work's Originator under an agreement negotiated between the faculty member and the University, usually with the University retaining (a) a Shop Right, and/or (b) the right to require reimbursement and/or income sharing from the work's faculty member to the University if the work produces income for the faculty member; or the parties may also negotiate for joint ownership of such works, with the approval of the Provost. 

For a Sponsored or Externally Contracted Work created under an agreement that does not expressly require copyright ownership by the University or a third-party, the faculty member of the work shall own the work, subject to required disclosure to the University.  In case of ownership by the work's faculty member, the University, if practical, shall be assigned a Shop Right.

B. Works by Staff

Most works by staff members are considered to be Directed Works and shall be owned by the University.  In special cases, though, the University may enter into an agreement in advance that the staff employee shall own the copyright.  In addition, the Chief Financial Officer may waive institutional ownership.

C. Works by Independent Contractors

Works by independent contractors are considered Directed Works and shall be owned in accordance with the contract under which the work was created.  The University shall insure that there is a written contract for work by an independent contractor specifying institutional ownership.

D. Works by Students

Ownership of works such as papers, computer programs, theses, artistic and musical works, and other creative works produced by a student as part of academic course work belongs to the student unless the work falls within one of the exceptions described below:

1. Sponsored or Externally Contracted Works: Ownership shall be in accordance with the section of this policy on sponsored or externally contracted works made by faculty.
2. Directed Works: Student works created by students in the course of their employment with the University shall be considered to fall within the scope of Directed Works in accordance with the section of this policy on works for hire made by staff.

Rights in student works may be transferred between the student and the University.  In such cases, a written Assignment Agreement shall specify the respective rights and obligations of the parties.  The parties may also negotiate for joint ownership of such works, with the approval of the Provost.

II. Patent Ownership

A. Disclosure and Patent Rights

University faculty, staff, and students (hereinafter “Inventor”) must promptly and fully report to the Provost any discovery, invention, possible device, or potentially useful biological or chemical material the individual has made and has reason to believe might be useful, patentable, or otherwise protectable.  This is to be done regardless of whether University funds or funds from an external source provided the immediate support for the work from which the invention resulted. If the Provost determines that such a discovery or invention or possible invention occurred within the scope of the individual’s research, teaching, or other University-related duties, then the following Patent rights will apply:

• The Provost will determine whether or not to submit the invention disclosure for evaluation by a patent attorney selected by the Board of Trustees and under the terms of a general agreement between the attorney and the Board of Trustees. The Inventor is expected to cooperate in every way necessary (but at no expense to the individual) with the University and the patent attorney, including the assigning of any patent rights the individual may have, to permit the University and the attorney to pursue the appropriate steps to obtain a patent.  Patents on inventions made by Inventors may be applied for in any country.
• If the University determines not to submit the documents of invention disclosure for evaluation by the Board of Trustees and its patent attorney, or if after three months from the date of disclosure to the Provost there has been no evaluation, the Inventor may elect to pursue the patenting and commercial introduction of a potential invention without assistance from the University.
• If the University elects not to pursue a Patent at any point in time between the time of disclosure and the final awarding (e.g. the stages of: submission of the provisional patent, patent filing and full prosecution of a Patent to its awarding) the Inventor may elect to pursue the patenting and commercial introduction of a potential invention without assistance from the University.
• In any of these events, the Provost must be so notified in writing and the plans for doing so briefly described. The Provost shall notify the Inventor as to the University’s intent with regard to the discovery or Invention, including, if appropriate, a document that releases the University from any rights to the invention and assigns those rights wholly to the inventor(s).  An Inventor who obtains a Patent, under the terms of this paragraph, without assistance from the University will be entitled to all royalties and other income resulting   It is expected that in pursuing Patents, individuals will make arrangements that best serve the public interest, and the Provost will be available to advise (in confidentiality) individuals on this question.
• Royalties or other income resulting from the discovery or invention will be shared among the Inventor and the University. The Royalty-Sharing Policy of this Policy sets forth the distribution of income to be implemented after the University has complied with the terms of its agreement with any Outside Agent.  The University, whether through an arrangement with the Outside Agent for handling patents or on its own, will exercise its rights of ownership of such patent(s), with or without financial gain, with due regard for the public interest, as well as the interests of the Inventor(s) and any sponsors concerned.

B. Inventions Made on Own Time

Inventions or discoveries made by University Inventors entirely on their personal time and not involving the use of University facilities or materials are the property of the Inventor except in case of conflict with any applicable agreement between the University and the federal or state government or agency thereof. 

University Inventors who claim that Inventions are made on personal time have the responsibility to demonstrate that Inventions so claimed are invented on personal time.  All such inventions must be disclosed in accordance with the University’s disclosure procedures to the Provost and must demonstrate the basis of the Inventor’s claim that only personal time was utilized.  In each instance so demonstrated to conform to the definition of personal time, the University will acknowledge in writing that the Invention is the sole property of the Inventor.

C. Consulting Activities

University Inventors participating in consulting engagements with an outside company must make the organization aware of their obligation to disclose Inventions to the University.  University Inventors are encouraged to include a provision in their consulting agreements acknowledging that the individual has a pre-existing obligation to disclose all Inventions to the University.

On occasion, it may be necessary to disclose company propriety information to the University in order for the employee to disclose an invention as required by this Policy.  In this case, company proprietary information may be protected by executing a non-disclosure agreement between the outside company and the University.  An outside company’s proprietary information either existing prior to the consulting relationship or embodied in an invention made under the consulting relationship may be included under the terms of such non-disclosure agreement.

III. Royalty and Revenue Sharing

A. Ownership Retained by the Originator/Inventor

Neither the University nor any of its faculty and staff should benefit financially from the sale of materials that are developed solely for sale to Thomas More University students (e.g., course packs).  It is understood that royalties will accrue from materials that are developed for sale to an audience broader than just Thomas More University students.  University faculty and staff who may potentially retain royalties from the sale of these materials to Thomas More University students must inform the Provost if either of the following conditions is met:

• Students purchased the materials in conjunction with a course taught by University faculty or staff who will earn the royalties, or
• University faculty or staff who will earn the royalties were involved in selecting the materials that students are expected to purchase.

B. Ownership Retained by the University

Royalties and other income will first be used to reimburse documented expenses in the following order:

• Direct costs paid by the University in conjunction with processing of Patent or Copyright application, marketing or licensing the Intellectual Property, or related legal costs;
• Documented out-of-pocket costs paid by the Originator/Inventor;
• Costs associated with the use of equipment, materials, and staff services of any of the various campus units that assisted in the development of the materials.

Costs will be determined by the normal fee schedule of the department providing the support; funds, supplies, or services provided to the project by a department, or by any other unit of the University; normal salary, even that provided by sabbatical, need not be repaid.

After direct and indirect expenditures are reimbursed, the royalties and other income will be disbursed as follows:

Inventor/Originator  - 50%    

University                - 50%                           

The Inventors/Originators’ share will normally be shared equally among all Inventors. For example, if there are co-inventors, the University retains 50% and the Inventors divide the other 50% of royalty income. 

Note: If an infringement suit or claim of patent invalidity is brought against the University during the life of a Patent, the income distribution attributable to that Patent may be halted pending settlement of the suit.  Similarly, if there is a legal challenge to the validity of a Copyright, income distribution may be halted pending settlement of the suit.

RELATED POLICIES AND APPLICABLE LEGAL OR ACCREDITATION STANDARDS

Not Applicable.

PROCEDURES

Dispute Resolution Procedures

Any disputed issues related to Intellectual Property, or the interpretation of this Policy, shall be referred to an ad hoc committee for its recommendations and advice.  The committee will be composed of three members of the tenured faculty appointed by the Faculty Coordinating Committee, one of the College Deans, a representative from the Business Office (appointed by the Chief Financial Officer), and the Provost, who serves as the chair and a non-voting member.

The committee shall make a recommendation to the University President of whether the University or any other party has rights to the Intellectual Property, and, if so, the basis and extent of those rights.  The committee shall also make a determination on resolving competing University Employees claims to ownership when the parties cannot reach an agreement on their own.  The committee will review the merits of inventions, and other creations, and make recommendations for the management of the Intellectual Property, including development, patenting, and exploitation.  The President has final authority for resolving the disputed issues.

REFERENCING THE POLICY

HISTORY

APPENDIX

There are no appendices to this Policy.

APPROVALS

Dr. Kathleen Jagger, Acting President, September 10, 2018