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University Policy Concerning Intellectual Property - 1L15

Intellectual property includes all forms of creativity, such as inventions, processes, materials, improvements to existing technology, software, and creative and artistic works. Intellectual property is protected legally through patents, copyrights, and trademarks.

This policy applies to employees (which includes but is not limited to faculty, staff, students, and administrators), students, and visitors as defined below.

This policy establishes requirements for disclosure and assignment of ownership of technology, proprietary information and potentially patentable inventions created in the course of work at SIUE or with use of SIUE resources. This policy further establishes copyright assignments.

Definitions

  1. “Inventions” are defined as all new processes (including computer programs), machines, manufactured products, compositions of matter, any new and useful improvements thereof, and any new uses for these products or processes that were not obvious to one skilled in the art at the time of invention.
  2. “Inventors” are defined as those persons who have contributed to the conception of an invention and this is ultimately determined by whether a person has contributed to an invention as defined by at least one claim in a patent application and/or an issued patent. A person who reduces an invention to practice, follows the instructions of another, or suggests an idea of a result to be accomplished rather than the means of accomplishing it, is not an inventor or co-inventor.
  3. “Copyrighted works” are defined as original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Copyrighted works include but are not limited to: literary works; course materials; software; musical works including any accompanying words; dramatic works including any accompanying music; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works.
  4. “Intellectual property” is a category of intangible property that includes: inventions and issued patents; copyrighted works and registered copyrights; trademarks; trade secrets; know-how; mask works; and tangible scholarship property.
  5. “Personnel” refers to all employees (which includes but is not limited to faculty, staff, students, and administrators), students, and visitors.
  6. “Visitors” refer to all non-employees who have been granted access to University resources.  This category includes visiting faculty, students, and scholars from universities, government and industry.
  7. “Work-for-hire” is defined as a work product prepared by personnel within the scope of his or her employment or a work specially ordered or commissioned under terms that have been expressly agreed upon in a written instrument that states that the work shall be considered a work made for hire.
  8. “University resources” is defined as the use of any SIUE facilities, materials, equipment, personnel, funds, or other resources that are under the control of or administered by SIUE.
  9.  “Independent scholarship” is defined as research and creative activities conducted by personnel on his or her own time and at his or her own expense and that is not based on or otherwise made possible through scholarship performed at or with the University or University resources.

Ownership of Intellectual Property

  1. All SIUE faculty, including visiting professors and postdoctoral fellows, must sign the Patent and Copyright Agreement. In addition, all personnel who participate or intend to participate in scholarship projects at SIUE must also sign the SIUE Patent and Copyright Agreement. Each program is responsible for getting the Patent and Copyright Agreement signed, normally at the time of the individual's initial association with SIUE.  Further, any incoming faculty or visiting professor must identify to the Associate Provost for Research or a designee any prior obligations and/or agreements regarding intellectual property with any other entity that may impact the intellectual property rights of the University as defined under this policy or impact their capacity to perform scholarship with the University.
  2. The University makes no claim to intellectual property generated by independent scholarship. The individual may voluntarily assign all or part of his or her claim to the scholarship to the University. However, the University is under no obligation to accept an assignment or to pursue protection of the intellectual property after reviewing its merits.
  3. Intellectual property that is conceived or created as a work-for-hire or that results from the use of university resources will be owned exclusively by SIUE in accordance with the provisions of this policy, unless the University decides to release its proprietary interest to the individual of record.
  4. When an agreement is made beyond the scope of this or other related university policies delineating individual and university rights, claims, and responsibilities, it shall be made in writing before application for a patent or copyright resulting from university sponsored scholarship is submitted to the United States or a foreign government.
  5. Questions of ownership or other matters pertaining to materials covered by this policy shall be resolved by the Associate Provost for Research (or his or her designee) in consultation with the Provost and Vice Chancellor for Academic Affairs and Legal Counsel.  Decisions by the Associate Provost for Research are subject to appeal through the University Grievance Procedures.

Responsibility to Disclose

  1. Potentially patentable intellectual property must be disclosed to the Associate Provost for Research. Such disclosure is without prejudice to the inventor’s ownership claim and shall be kept confidential.
  2. The University, or its designated agent, shall assume full responsibility, when evaluated to be in the best interest of the University and public, for obtaining a patent or copyright and for protecting and promoting the property rights inherent in such patents and copyrights.
  3. Just prior to departure of a faculty member or visiting professor, he or she will participate in an exit interview with the Associate Provost for Research or a designee to identify any intellectual property rights created while with the University and any ongoing obligations regarding such rights.

Externally Sponsored Projects

  1. Grants and contracts between the University and other agencies shall state clearly the obligations and rights of the University and of the cooperating agency and the procedure to be followed in case patentable discoveries or materials subject to copyright grow out of the project.
  2. All personnel rights to all externally sponsored project patents, copyrights, patent rights, and/or discoveries will be assigned and are hereby assigned to the University.
  3. Materials produced under grants from various federal agencies frequently require the involvement of and prior approval by such agency of the terms and conditions of copyright/patent agreements in respect to development and dissemination of the product and the sharing of pertinent royalties or proceeds. Federal regulations govern rights for intellectual properties developed from federal funding provided jointly to the University and an external entity.
  4. Materials produced under grants from non-federal agencies frequently require the involvement of and prior approval by such agency of the terms and conditions of copyright/patent agreements in respect to development and dissemination of the product and the sharing of pertinent royalties or proceeds. Such conditions may influence ultimate arrangements between the University, the faculty member involved, and any private developer, marketing agency, and other persons sharing in royalties or proceeds. In each case the University shall be free to negotiate with the sponsoring agency so far as the rights of patent and copyright are concerned.
  5. Subject to the written approval of the Associate Provost for Research, faculty members engaged in externally sponsored projects can agree to terms of a grant or contract that require that any inventions or discoveries and patents and copyrights therefrom shall be assigned to the sponsor of such project or its designee. Prior to approval, the faculty member shall provide a copy of the terms and conditions of the grant or contract to the Associate Provost for Research.

Copyright

Copyright is the ownership and control of the intellectual property in published and unpublished original works of authorship fixed in a tangible medium of expression. Authorship includes literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation but could protect the way these things are expressed. Copyright provides the owner with the right to determine how the work is copied and distributed to others (e.g., through sale, lease, or lending).

It is the policy of the University that all rights in copyright shall remain with the creator unless the work is a work-for-hire (and copyright vests in the University under copyright law), is supported by a direct allocation of funds through the University for the pursuit of a specific project, is commissioned by the University, or is otherwise subject to contractual obligations.

Works owned by the University should contain the following notice: ©YEAR Southern Illinois University Edwardsville. 

Subject to the windfall clause below, copyright assignments for several categories of scholarly product are given below.

  1. Books, Articles, and Similar Works, Including Unpatentable Software
    In accord with academic tradition, except to the extent set forth in this policy, SIUE does not claim ownership to pedagogical, scholarly, or artistic works, regardless of their form of expression. Such works include those of students created in the course of their education, such as dissertations, papers and articles. The University claims no ownership of popular nonfiction, novels, textbooks, poems, musical compositions, unpatentable software, or other works of artistic imagination that are not institutional works.

  2. Institutional Works
    The University shall retain ownership of works created as institutional works. Institutional works include works that are supported by a specific allocation of university funds or that are created at the direction of the University for a specific purpose. Institutional works also include works whose authorship cannot be attributed to one or a discrete number of authors but rather result from simultaneous or sequential contributions over time by multiple faculty and students. For example, software tools developed and improved over time by multiple faculty and students where authorship is not appropriately attributed to a single or defined group of authors would constitute an institutional work. The mere fact that multiple individuals have contributed to the creation of a work shall not cause the work to constitute an institutional work.

  3. Works of Non-Employees
    Under the Copyright Law, works of non-employees, such as consultants and independent contractors, generally are owned by the creator and not by the University, unless there is a written agreement to the contrary. As it is SIUE's policy that the University shall retain ownership of such works (created as institutional rather than personal efforts, as described in Section 2, above), SIUE will generally require a written agreement from non-employees that ownership of such works will be assigned to the University.

  4. Courseware
    Courses taught and courseware developed for teaching at SIUE will be assigned to the authors of such work.  For example, class notes, syllabi, and other material referred to as “courseware” are granted to and owned by the member of the faculty who created the material, regardless of whether the material appears on paper or in some electronic form. Authors hereby grant to SIUE:
    1. a royalty-free non-exclusive license to use the material for internal educational purposes
    2. free updates and revisions of the material to SIUE while employed by SIUE
    3. assurances that the authors have secured permissions and/or licensing agreements for all non-original material used in the work, or that use of non-original material is consistent with fair use doctrine of copyrighted materials, and that the authors hold SIUE harmless for any copyright infringements contained in the work
    4. the right to update, alter, and revise the original material
    5. the right to assign others to teach using the developed courseware

      Online courses and any courses that are recorded using any media are SIUE property and may not be further distributed without permission from the Provost and Vice Chancellor for Academic Affairs. Blanket permission is provided for evanescent recording or other copies for the use of students, or for other University purposes. Prior to recording, written permission should be obtained from anyone who will appear in the final program and an agreement should be obtained that any copyright interest resulting from the recording is assigned to the University.

  5. Contractual Obligations of the University
    This Copyright Policy shall not be interpreted to limit the University's ability to meet its obligations for deliverables under any contract, grant, or other arrangement with third parties, including sponsored project agreements, license agreements and the like. Copyrightable works that are subject to sponsored project agreements or other contractual obligations of the University are assigned to the University so that the University may satisfy its contractual obligations.

  6. Use of University Resources
    SIUE resources are to be used solely for university purposes and not for personal gain, personal commercial advantage, nor any other non-university purposes. Therefore, subject to the windfall clause as defined below, if the creator of a copyrightable work makes use of the services of university non-faculty employees or university resources to create the work, he or she shall disclose the work to the Office of Research and Projects and assign title to the University.

  7. Re-conveyance of Copyright to Creator
    When copyright is assigned to SIUE because of the provisions of this policy, the creator of the copyrighted material may make a request to the Provost and Vice Chancellor for Academic Affairs that ownership be re-conveyed back to the creator. Such a request can, at the discretion of the Provost and Vice Chancellor for Academic Affairs, be granted if it does not (i) violate any legal obligations of or to the University, (ii) limit appropriate university uses of the materials, (iii) create a real or potential conflict of interest for the creator, or (iv) otherwise conflict with university goals or principles.

Copyright Royalties

Any work made possible by or developed with support provided by the University or the use of University resources is subject to the windfall clause, which is defined as follows.  The creator of the work shall retain in full the first $100,000 of royalties accumulated during the work’s lifetime.  After the first $100,000 of royalties, the creator shall retain 50% of all royalties and the University shall retain 50% of all royalties.  A creator of a work that incurs a “windfall,” as defined above, is required to report such royalties in writing to the Associate Provost for Research once the creator’s cumulative royalties from the work exceed $100,000.

Patents

  1. Potentially patentable and/or licensable intellectual property must be disclosed to the Associate Provost for Research. Such disclosure is without prejudice to the inventor’s ownership claim and shall be kept confidential. These inventions, whether conceived or first reduced to practice in whole or in part by personnel, students, and visitors in the course of their university responsibilities shall be disclosed on a timely basis to the University by way of a signed Invention Disclosure Form. Title to such inventions are assigned to the University, regardless of the source of funding and if doing so is not in violation of the terms of any agreements that supported or related to the work.
  2. Upon submission of a complete disclosure to the Associate Provost for Research or his or her designee, the University has up to 12 months to decide if it will file a patent and/or pursue a license.  This timeframe is contingent on timely responses from the inventor(s) to requests from parties involved in the patentability analysis.  If extenuating circumstances arise, the inventor(s) and/or University can request additional time for a decision.
  3. If the University cannot or decides not to proceed to patent and/or license an invention and if requested by the inventors, it must reassign ownership to the inventors to the extent possible under the terms of any agreements that supported or related to the work.
  4. The inventors, acting collectively where there is more than one, may place their inventions in the public domain only after the University has filed for a patent or has decided not to exercise such option and if doing so is not in violation of the terms of any agreements that supported or related to the work.
  5. Waivers of the provisions of this policy may be granted by the Associate Provost for Research on a case-by-case basis, giving consideration among other things to university obligations to sponsors, whether the waiver would be in the best interest of technology transfer, whether the waiver would be in the best interest of the University and whether the waiver would result in a conflict of interest. Such waiver must be made in writing.  In addition, the Associate Provost for Research may expand upon these provisions and shall adopt rules, based on the same factors as well as appropriateness to the University's relationship with inventors, for the ownership of potentially patentable inventions created or discovered with the use of university resources.

Trade and Service Marks

Trade and service marks are distinctive words or graphic symbols identifying the sources, product, producer, or distributor of goods or services. Trade or service marks relating to goods or services distributed by the University are owned by the University. Examples include names and symbols used in conjunction with computer programs or University activities and events. See Policy 5F3 for logo and trademark use and licensing.

Licensing

The University encourages the development of inventions and technology for public use and benefit. SIUE’s Office of Research and Projects handles the evaluation, marketing, negotiations and licensing of university-owned inventions with commercial potential.

Patent and Licensing Royalties

Royalty income is defined as the income received by SIUE from an invention or other form of intellectual property.

Unless otherwise authorized in writing by the Associate Provost for Research, royalty income is divided as follows.

a)  Royalties shall be divided 60% paid to SIUE and 40% paid to the Inventors, until royalties reach $2,500,000. The 40% share paid to the inventors shall be divided between them equally unless the inventors decide on a different arrangement and submit the information in writing to the Associate Provost for Research prior to payments being made.

b)  At such time that royalties cumulatively exceed $2,500,000, SIUE shall be paid thereafter 35% of net royalties and inventors shall be paid thereafter 65% of net royalties. The 65% share paid to the Inventors shall be divided between them in the same manner as decided in (a).

Royalties received by the University shall be used to support scholarly activities and development and commercialization of University intellectual property (including but not limited to the payment of expenses related to evaluating disclosures, filing and maintaining patents, licensing patents, and tracking and processing royalties).

Expenses, income, and balances related to patent and licensing royalties shall be reported annually to the Provost and Graduate Council.

Note: Portions of this policy are adapted with permission from Stanford University and University of Nevada Las Vegas (2010).

Date This Policy Shall Become Effective

This policy shall become effective on June 4, 2014, and shall apply to all projects in progress. Patents issued prior to the effective date shall follow the previous policy or contractual agreements with third parties unless the University and inventors agree to follow this policy.

Approved by Chancellor effective 6/4/14
This policy was issued on July 14, 2014, replacing the February 1, 2001 version.
Document Reference: 1L15
Origin: GR 2-00/01; GR 13/14-12

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