A Brief Comparative Survey Of Selected Intellectual Property Policies

Policy Topic	American Association of University Professors AAUP http://www.aaup.org/Issues/DistanceEd/intro.htm	CSU System Selected School: SDSU http://gra.sdsu.edu/dra/Intell_Property_5-9-00_Final.htm	Private School – West Coast Selected School: USC http://policies.usc.edu/policies/intellectualproperty040301.pdf	Private School – East Coast Selected School: Johns Hopkins http://jhuresearch.jhu.edu/ott/Inventors/Policies.asp
Development Timetable for Policy		1996 –1999	1999 – 2001	Begun in 1984, , revised 1992, 1999, 2001
Length of Policy	8 position papers	17 pages	24 pages --– with some schools having an additional policy specific to their discipline	10 pages – with some schools having an additional policy specific to their discipline.
Policy Objectives Preamble	Preamble The parties to this agreement believe that the public interest is best served by creating an intellectual environment whereby creative efforts and innovations can be encouraged and rewarded, while still retaining for the college or university and its learning communities reasonable access to, and use of, the intellectual property for whose creation the college or university has provided assistance. The college or university supports the development, production, and dissemination of intellectual property by its faculty members.	It is the intention of these intellectual property policies to foster and encourage the development of creative works and further to protect the rights of all parties involved: San Diego State University, the San Diego State University Foundation, SDSU faculty, staff, and students, and outside sponsors and contractors. It is further intended that these policies serve to educate the University community in the proper use of intellectual property and the application of intellectual property law. It is the responsibility of members of the University community to become familiar with the provisions of these policies prior to engaging in activities covered by these policies. In some instances it may be necessary to disclose the creation of intellectual property and to sign a written agreement regarding this work. Inquiries concerning these policies should be addressed to the Division of Research Administration of the Office of Graduate and Research Affairs.	A goal of the University of Southern California is to encourage creative activity and the prompt and open dissemination of ideas and inventions by recognizing and rewarding individual members of the faculty and staff. The commitment to develop new knowledge includes facilitating the practical application of that knowledge for public use. The University wishes to demonstrate that the public and private investment in funded research at USC results in the creation of ideas and inventions that benefit society. The University wishes to preserve the academic tradition of faculty ownership of certain scholarly works within the context of applicable law. Both California and federal law provide that the University owns all intellectual property created or developed by an employee within the scope of his or her employment, including works developed under sponsored research or other agreements and works that make significant use of University funds or facilities. In seeking an appropriate balance between academic tradition and law, USC’s Intellectual Property Policy recognizes certain exceptions to the law that are well established traditions in the academic setting. The purpose of this Policy is to educate members of the University community about their rights and responsibilities regarding intellectual property. This Policy also describes the ways in which USC faculty, staff and students can protect the intellectual property that they create for their benefit as well as preserve the interests of the University and the public. This Policy obviously cannot address every situation that may arise in the development, enforcement and management of intellectual property rights. Rather, this Policy is intended to serve as a set of guidelines for USC’s faculty, staff, students and visitors.	The Johns Hopkins University strives to support its faculty and employees in securing commercial development of intellectual and other property resulting from their research so that the benefits of that research may reach society at the earliest opportunity. This is consistent with the University's mission of developing new knowledge and facilitating the practical application of such knowledge to the benefit of the public. The University has developed policies and guidelines that provide incentives for its researchers while protecting the integrity of research emanating from this institution. Moreover, the University provides an array of administrative services to its Inventors to assist them in protecting rights to University Intellectual Property and fostering commercial development. This document describes University policy relevant to Intellectual Property and lists the available University-wide resources. The policy shall be interpreted in a manner consistent with applicable federal and state statutes and implementing regulations. It shall apply to all students receiving remuneration for services, faculty, and staff of the University Faculty, staff and students shall be referred to as "faculty" throughout the remainder of this document
General Policy	Although the law provides for a several different types of Intellectual Property, faculty concerns center on two: copyrights and patents. The following definitions are taken from pertinent federal statutes: When used in this agreement, the term "Copyright" shall be understood to mean that bundle of rights that protect 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. " Works of authorship" (including computer programs) include, but are not limited to the following: literary works; musical works, including any accompanying words; dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works (photographs, prints, diagrams, models, and technical drawings); motion pictures and other audiovisual works; sound recordings; and architectural works. " Tangible media" include, but are not limited to, books, periodicals, manuscripts, phonorecords, films, tapes, and disks. [Note on computer software: Computer programs fall into a gray area between the two types of intellectual property. Programs that are a part of a "new and useful process" may be eligible for patent protection, while programs embodying minimally original expression may be eligible for copyright protection.]	The intellectual property policies of the University consist of two components: the SDSU Patents Policy and the SDSU Copyright, Trademark, and Trade Secrets Policy. For purposes of these policies, intellectual property shall include works of authorship, inventions and discoveries that may be subject to protection by copyrights, trademarks, patents and trade secrets. San Diego State University is committed to the development of ideas and to the broad dissemination of these ideas for the purpose of serving the public interest. The University also recognizes and strives to protect the legitimate private interests of those members of the University community who engage in research. Where this research yields inventions, equitable treatment of all public and private interests necessitates the formulation and implementation of a University policy governing the ownership of patent rights, the distribution of royalties, and the granting of licenses.		For purposes of this policy, Intellectual Property is defined as any new and useful process, machine, composition of matter, life form, article of manufacture, software, copyrighted work or tangible property. It includes such things as new or improved devices, circuits, chemical compounds, drugs, genetically engineered biological organisms, data sets, software, musical processes, or unique and innovative uses of existing Inventions. Intellectual Property may or may not be patentable or copyrightable. It is created when something new and useful has been conceived or developed, or when unusual, unexpected, or non-obvious results, obtained with an existing Invention, can be practiced for some useful purpose. Intellectual Property can be created by one or more individuals each of whom, to be an Inventor, must have conceived of an essential element or have contributed substantially to its conceptual development.
Ownership Of Intellectual Property	Within that tradition, it has been the prevailing academic practice to treat the faculty member as the copyright owner of works that are created independently and at the faculty member's own initiative for traditional academic purposes. Examples include class notes and syllabi, books and articles, works of fiction and nonfiction, poems and dramatic works, musical and choreographic works, pictorial, graphic, and sculptural works, and educational software, commonly known as "courseware." This practice has been followed for the most part, regardless of the physical medium in which these "traditional academic works" appear, that is, whether on paper or in audiovisual or electronic form. As will be developed below, this practice should therefore ordinarily apply to the development of courseware for use in programs of distance education. Special works created in circumstances that may properly be regarded as "made for hire." [See the AAUP Statement on Copyright for an extended discussion of work for hire. A work should NOT be treated as "made for hire" merely because it is created with the use of university resources, facilities, or materials of the sort traditionally and commonly made available to faculty members.] Negotiated contractual transfers, and "Joint works" as described in the Copyright Act, where the institution can be considered a co-author. The university shall own copyright only in the following 3 circumstances: I. The college or university expressly directs a faculty member to create a specified work, or the work is created as a specific requirement of employment or as an assigned institutional duty that may, for example, be included in a written job description or an employment agreement. II. The faculty author has voluntarily transferred the copyright, in whole or in part to the institution. Such transfer shall be in the form of a written document signed by the faculty author. III. The college or university has contributed to a "joint work" under the Copyright Act. The institution can exercise joint ownership under this clause when it has contributed specialized services and facilities to the production of the work that goes beyond what is traditionally provided to faculty members generally in the preparation of their course materials. Such arrangement is to be agreed to in writing, in advance, and in full conformance with other provisions of this agreement.	As an institution of higher education, San Diego State University is dedicated to basic and applied research. It is fully expected that, at times, such research will lead to the conception and/or development of an invention. In the event that institutional support in the form of either financial or physical resources is used in the research process from which the invention results, then the institution has ownership rights in said invention The assignment of property rights between the institution and its employees is dependent upon the degree of institutional support devoted to the conception, reduction to practice and development of an invention and products or processes which utilize such an invention. For the purposes of this policy, institutional support for an employee's project yielding an invention will be classified into one or two categories: full commission or assignment, and partial institutional support. These types of support are defined below, and the ownership rights relating to each category are detailed...	Unless otherwise stated in this Policy, the University is the owner, under federal and California law, of all intellectual property created by members of the University community which is: · created or developed during the course of an individual’s responsibilities to USC, · including works made for hire; or · created or developed pursuant to a sponsored agreement or pursuant to a written agreement to transfer ownership to USC; or · created or developed with the significant use of University facilities, funds, resources or supplies. Members of the University community own intellectual property that is developed on their own personal, unpaid time, in the absence of any sponsored project agreement or other agreement giving rights to USC, and with only incidental use of University funds or facilities. Incidental use of University resources includes the following: · only a minimal amount of unrestricted funds have been used; and · only a minimal amount of time has been spent using University facilities, equipment, or resources (use of offices, libraries and routinely available office type equipment such as desktop personal computers are not considered significant). Consistent with long standing academic tradition, the University does not claim an ownership interest in faculty authored textbooks or scholarly publications, art works, musical compositions, or literary works, whether or not related to the professional fields of the faculty members and regardless of the medium of expression, unless the work is subject to contractual restrictions. This exception from the general ownership principle expressed above is applicable to all USC faculty. It is vital for the University to be able to ensure the continuity and consistency of the educational experience that it provides its students. Accordingly, it is essential that the University maintain the right to use and adapt materials that are created for purposes of teaching and instruction at USC. These materials include an instructor’s syllabi, lecture notes, lecture presentations and other materials in whatever medium that are useful in presenting the substance of a course, even after the instructor leaves the University. The University does not claim ownership of traditional teaching materials, lecture notes, lecture presentations and technology-based courseware prepared, developed or presented while at the University. Rather, the University treats them as traditional exceptions, like textbooks and scholarly publications, but as a condition of such treatment the University retains a license to use all such material for educational or academic purposes.	A. In general, the University has the right to obtain title to Intellectual Property developed as a result of support either directly from or channeled through the University. B. University support is defined as financial or other support, regardless of origin, which is used in the discovery or development of Intellectual Property and is provided through University channels. In the absence of University support, rights of ownership of Intellectual Property remain with the Inventor. Provision of an appointment shall not in and of itself be construed as University support for purposes of this definition. D. When software or other unpatented tangible research property (is developed by faculty using University support, the University will own all rights to such property, including copyright. E. Copyright to, and royalty from, literary or scholarly works in tangible or electronic form produced by faculty members as a part of their usual teaching, service, and research activities, …shall belong to the faculty who prepared such works and may be assigned or retained by them.
Faculty Staff Responsibilities	In light of the changing legislative environment, and in view of the evolution of contracts and policies in the intellectual property area AAUP believes that the establishment of an on-going Intellectual Property Committee representing both faculty and administration would serve a useful purpose in both collective bargaining and non-collective bargaining environments. Such a committee could serve a variety of purposes, including keeping faculty and administration apprised of technological changes that will affect the legislative, contract, and policy contexts. Such a committee would play a role in policy development, as well as perform a dispute resolution function. In the absence of such an overall policy committee, a dispute resolution committee with both administrative and faculty representation is essential. The Intellectual Property Policy and Rights Committee will be composed of members equally apportioned between faculty (elected by the Faculty Senate, or some similar faculty body) and administration (appointed by the president or his/her designee.) The committee members shall elect a chair from among themselves each year. At the time of initial appointment or election, each member shall be designated as serving a one or two, or three year term, so that the term of one faculty committee member and one administration member will expire each year and replacements will be appointed or elected each year. After the first appointment subsequent members shall serve a three year term, commencing on July 1 and terminating on June 30. Committee members may serve one additional three year term. The Committee shall monitor and review technological and legislative changes affecting intellectual property policy and shall report to relevant faculty and administrative bodies, when such changes affect existing policies. The committee shall serve as a forum for the receipt and discussion of proposals to change existing institutional policy and/or to provide recommendations for contract negotiations. Disputes over ownership, and its attendant rights, of intellectual property will be decided by the Intellectual Property Policy and Rights Committee. The committee shall make an initial determination of whether the college or university or any other party has rights to the invention or other creation, and, if so, the basis and extent of those rights. The committee shall also make a determination on resolving competing faculty 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 invention, including development, patenting, and exploitation. If the inventors/creators disagree with the determination of the committee he/she may appeal to binding arbitration. The cost of the arbitration shall be borne equally by the university and the creator(s).	Responsibilities of University Employees and Other Included Parties 7.61 It is the responsibility of the University, its employees, faculty, students, staff, independent contractors, and any person or entity deriving any interest pursuant to this policy to ensure adherence to this policy and any referenced agreement. 7.63 The author shall inform all other persons who may have rights to the copyrightable work (e.g. collaborators, research assistants, students) of the terms and obligations of this policy. 7.64 The author shall assign to the San Diego State University Foundation any and all rights in and to a copyrightable work in which the University has an interest as determined by the University Patents and Copyrights Committee and in accordance with the provisions of this policy. 7.65 The author shall cooperate with the San Diego State University Foundation in pursuing copyrights, obtaining licenses or otherwise commercializing intellectual property which has been assigned to the San Diego State University Foundation. 7.66 The author shall not enter into any "exclusivity agreements" with respect to the licensing of copyrightable works that would conflict with normal university work assignments or the satisfactory performance of all duties of the unit employee. (See also Position Statement on Outside Employment, II-P-2, sections 2.4, 2.81, 2.10). 7.67 Authors who enter independent copyright agreements with publishers should reserve rights with those publishers to reproduce their own materials for their own instructional and research purposes.	Section 2.4. Faculty, Staff, Student and Visitor Responsibilities Faculty, staff, students and visitors recognize their responsibility as members of the University’s community of scholars to cooperate in the prompt and open dissemination of ideas and inventions by: a. disclosing promptly and completely the creation of new intellectual property to the OTL, even if the University does not necessarily have rights to such intellectual property under the provisions of this Policy; b. executing in a timely fashion all appropriate documents upon the University’s request, such as an assignment of rights; c.adhering to restrictions on the assignment, sale, licensing, commercialization, distribution or transfer of intellectual property that belongs to the University; d. not taking any action which is inconsistent with the University’s exclusive ownership of its intellectual property; e. cooperating in technology transfer activities in a manner consistent with University policy and procedure, including those governing conflicts of commitment and conflicts of interest (see Section 4.4); and f. cooperating with the University in legal actions relating to intellectual property (e.g., including administration, infringement and ownership litigation). Faculty, staff and students should contact the OTL prior to publication or dissemination of information that may have commercial value to ensure that such actions will not adversely impact the University’s ability to protect or commercialize intellectual property.	III. Faculty Responsibilities Faculty members who create Intellectual Property shall: A. Disclose to appropriate University or Division officials the creation of Intellectual Property; B. Conduct technology transfer activities in a manner consistent with University and Divisional policies and procedures, including those governing conflicts of commitment and conflicts of interest;, and C. Cooperate with the University in defending and prosecuting patents and in legal actions taken in response to infringement.
University Responsibilities		The Division of Research Administration of the Office of Graduate and Research Affairs is the University administrative office responsible for providing assistance to faculty, students, and other University employees in complying with this policy. The Technology Transfer Office of the San Diego State University Foundation is responsible for providing assistance to faculty, students, and other University employees in recognizing, securing, and protecting intellectual property rights associated with the products of their research and other scholarly endeavors. The author of copyrightable works should contact the Technology Transfer Office and/or the Division of Research Administration for current information on intellectual property procedures and to assure that appropriate action is taken in accordance with the San Diego State University Copyright, Trademark, and Trade Secret Policy.	The University acknowledges the importance of encouraging the prompt and open dissemination of research findings and the importance of making its intellectual property available to industry and others for the benefit of society. In recognition of these important objectives, the University: a. does not limit the right of faculty, staff and students to publish their own research results and other scholarly information unless the principal investigator has agreed to restrictions in the agreements supporting such sponsored research; b. recognizes that any individual who creates intellectual property should have a significant role in the determination of how such intellectual property will be publicized, commercialized or developed; c. permits faculty, staff and student inventors/authors freedom to place their inventions in the public domain if they believe that would be in the best interest of science or technology transfer and that doing so would not violate the terms of any agreements regarding the implications of placing intellectual property into the public domain]; d. provides patent, copyright, licensing, and technology transfer services to assist in the protection, marketing and promotion of University owned intellectual property; e. provides legal advice and services to assist in the protection and commercialization of University owned intellectual property; f. provides services for registering trademarks and service marks; g. in appropriate cases, provides the necessary financial resources for the protection and commercialization of intellectual property; h. rewards authors and inventors through a generous sharing of royalties from inventions assigned to the University; and i. rewards Schools and Departments for creating productive research environments by sharing a portion of the royalties from inventions assigned to the University.	The University acknowledges the importance of transferring its Intellectual Property in an appropriate and cost-effective manner. To that end, the University shall establish efficient mechanisms for technology transfer, so as to maximize the value of the technology to the faculty and the University. A. The University Administration shall: 1. Provide oversight of Intellectual Property management and technology transfer to ensure adherence to University policies; 2. Assist the Divisions in establishing and maintaining effective technology transfer mechanisms and Divisional policies and procedures consistent with University policies; 3. Provide legal services and cooperate with the Divisions in promoting and licensing Intellectual Property; and 4. Take appropriate actions to protect the University's Intellectual Property. B. Divisional Administrations shall: 1. Promote technology transfer in a manner consistent with the Division's objectives and academic environment; 2. Establish policies and procedures for technology transfer and the avoidance of conflicts of interests, consistent with University policies; and 3. Review and approve all agreements that convey or affect the University's rights to Intellectual Property originating in that Division
Student Exceptions		Intellectual property developed by students as a result of classwork is ordinarily owned by the student unless (1) significant institutional resources have been used in the development of the work, in which case, ownership shall be determined in accordance with Sections 3.33 and 3.4 above; (2) the student has entered an agreement with the instructor specifying alternative terms of copyright ownership; or (3) the work was completed under the terms of a contract with the University or its auxiliaries, in which case ownership shall be determined in accordance with Section 3.31 above. Ordinarily, the author of a thesis/dissertation completed at San Diego State University shall hold the copyright to the manuscript, but that right does not automatically extend to the data used in developing the manuscript or to subsequent publications based on that data.	Exception for Student Works The University acknowledges students’ ownership of works created in the course of their education, such as dissertations, papers and articles. Students do not hold the copyright in these works if they are created in the course of rendering services for which USC compensates the student; or as part of research performed pursuant to a sponsored agreement or project; or under a special agreement where the student assigns the copyright to the University or a third party. Although a student retains copyright ownership to his/her thesis or dissertation or other student created works, the student grants the University permission to use, reproduce and publicly distribute copies of those works. If the student works contain software, patentable subject matter, inventions or other intellectual property and the student uses a significant amount of USC facilities, funds, resources and supplies in those works, the University owns the underlying intellectual property in the student
Royalty Sharing /Distribution of Funds	Funds received by the faculty member from the sale of intellectual property owned by the faculty author or inventor shall be allocated and expended as determined solely by the faculty author or inventor. Funds received by the college or university from the sale of intellectual property owned by the college or university shall be allocated and expended as determined solely by the college or university. Funds received by the faculty member and the college or university from the sale of intellectual property owned jointly by the faculty member and the college or University shall be allocated and expended in accordance with the specific agreement herein provided: [must be negotiated by the parties.] In the event of multiple creators, the creators will determine the allocation their individual shares when the work is first undertaken.	Any funds that are received by the San Diego state University Foundation through royalties or licenses or other consideration for copyrightable works shall be distributed in accordance with the Distribution of Royalty Guidelines developed by the University Copyrights and Patents Committee, recommended by the Vice President for Research and Dean of the Graduate Division on advice of the college deans and approved by the President. Such funds shall be used for support of scholarly activities at San Diego State University,	One of the objectives in the commercialization of USC technology is the generation of royalty income. Because USC is a research and service oriented institution, it does not focus solely on the maximization of profits. The University does, however, seek to generate the greatest possible royalty revenue it can without compromising its research and education mission. This is done through the negotiation of fair, reasonable and consistent license and other agreements that serve as the base for a long-term relationship. The proceeds from such agreements are generously shared with inventor/authors, as detailed below	Revenues received as a result of Licensing Agreements in the form of cash royalties and/or equity holdings shall be distributed in such a manner as to encourage technology development within and technology transfer from the University. "Revenues" shall not include funds received for research support. This policy provides for the distribution of revenues from both net cash royalties and equity shams resulting from intellectual property agreements. The distribution of revenue is in two tiers: at or below $300,000 per year as shown in Table I……
Distance Education	http://www.aaup.org/Issues/DistanceEd/deipdocs.htm
Other Topics	Formulation of Intellectual Property Committee In light of the changing legislative environment, and in view of the evolution of contracts and policies in the intellectual property area AAUP believes that the establishment of an on-going Intellectual Property Committee representing both faculty and administration would serve a useful purpose in both collective bargaining and non-collective bargaining environments. Such a committee could serve a variety of purposes, including keeping faculty and administration apprised of technological changes that will affect the legislative, contract, and policy contexts. Such a committee would play a role in policy development, as well as perform a dispute resolution function. In the absence of such an overall policy committee, a dispute resolution committee with both administrative and faculty representation is essential. COMPONENTS TO BE INCLUDED WHEN NEGOTIATING CONTRACT LANGUAGE OR A POLICY ON OWNERSHIP OF INTELLECTUAL PROPERTY What is "intellectual property"? Who owns the intellectual property? Who may use the intellectual property? How are any funds to be distributed? How are emerging issues and disputes resolved?

Policy Topic

American Association of

University Professors

AAUP

http://www.aaup.org/Issues/DistanceEd/intro.htm

CSU System

Selected School:

SDSU

http://gra.sdsu.edu/dra/Intell_Property_5-9-00_Final.htm

Private School – West Coast

Selected School:

USC

http://policies.usc.edu/policies/intellectualproperty040301.pdf

Private School – East Coast

Selected School:

Johns Hopkins

http://jhuresearch.jhu.edu/ott/Inventors/Policies.asp

Development Timetable for Policy

1996 –1999

1999 – 2001

Begun in 1984, ,

revised 1992, 1999, 2001

Length of Policy

8 position papers

17 pages

24 pages --– with some schools having an additional policy specific to their discipline

10 pages – with some schools having an additional policy specific to their discipline.

Policy Objectives

Preamble

The parties to this agreement believe that the public interest is best served by creating an intellectual environment whereby creative efforts and innovations can be encouraged and rewarded, while still retaining for the college or university and its learning communities reasonable access to, and use of, the intellectual property for whose creation the college or university has provided assistance.

The college or university supports the development, production, and dissemination of intellectual property by its faculty members.

It is the intention of these intellectual property policies to foster and encourage the development of creative works and further to protect the rights of all parties involved: San Diego State University, the San Diego State University Foundation, SDSU faculty, staff, and students, and outside sponsors and contractors. It is further intended that these policies serve to educate the University community in the proper use of intellectual property and the application of intellectual property law.

It is the responsibility of members of the University community to become familiar with the provisions of these policies prior to engaging in activities covered by these policies. In some instances it may be necessary to disclose the creation of intellectual property and to sign a written agreement regarding this work. Inquiries concerning these policies should be addressed to the Division of Research Administration of the Office of Graduate and Research Affairs.

A goal of the University of Southern California is to encourage creative activity and the prompt and open dissemination of ideas and inventions by recognizing and rewarding individual members of the faculty and staff. The commitment to develop new knowledge includes facilitating the practical application of that knowledge for public use. The University wishes to demonstrate that the public and private investment in funded

research at USC results in the creation of ideas and inventions that benefit society.

The University wishes to preserve the academic tradition of faculty ownership of certain scholarly works within the context of applicable law. Both California and federal law provide that the University owns all intellectual property created or developed by an employee within the scope of his or her employment, including works developed under sponsored research or other agreements and works that make significant use of University funds or facilities. In seeking an appropriate balance between academic tradition and law, USC’s Intellectual Property Policy recognizes certain

exceptions to the law that are well established traditions in the academic setting.

The purpose of this Policy is to educate members of the University community about their rights and responsibilities regarding intellectual property. This Policy also describes the ways in which USC faculty, staff and students can protect the intellectual property that they create for their benefit as well as preserve the interests of the University and the public. This Policy obviously cannot address every situation that may arise in the development, enforcement and management of intellectual property rights. Rather, this Policy is intended to serve as a set of guidelines

for USC’s faculty, staff, students and visitors.

The Johns Hopkins University strives to support its faculty and employees in securing commercial development of intellectual and other property resulting from their research so that the benefits of that research may reach society at the earliest opportunity. This is consistent with the University's mission of developing new knowledge and facilitating the practical application of such knowledge to the benefit of the public. The University has developed policies and guidelines that provide incentives for its researchers while protecting the integrity of research emanating from this institution. Moreover, the University provides an array of administrative services to its Inventors to assist them in protecting rights to University Intellectual Property and fostering commercial development.

This document describes University policy relevant to Intellectual Property and lists the available University-wide resources. The policy shall be interpreted in a manner consistent with applicable federal and state statutes and implementing regulations. It shall apply to all students receiving remuneration for services, faculty, and staff of the University Faculty, staff and students shall be referred to as "faculty" throughout the remainder of this document

General Policy

Although the law provides for a several different types of Intellectual Property, faculty concerns center on two: copyrights and patents. The following definitions are taken from pertinent federal statutes:

When used in this agreement, the term "Copyright" shall be understood to mean that bundle of rights that protect 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. "

Works of authorship" (including computer programs) include, but are not limited to the following: literary works; musical works, including any accompanying words; dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works (photographs, prints, diagrams, models, and technical drawings); motion pictures and other audiovisual works; sound recordings; and architectural works. "

Tangible media" include, but are not limited to, books, periodicals, manuscripts, phonorecords, films, tapes, and disks.
[Note on computer software: Computer programs fall into a gray area between the two types of intellectual property. Programs that are a part of a "new and useful process" may be eligible for patent protection, while programs embodying minimally original expression may be eligible for copyright protection.]

The intellectual property policies of the University consist of two components: the SDSU Patents Policy and the SDSU Copyright, Trademark, and Trade Secrets Policy. For purposes of these policies, intellectual property shall include works of authorship, inventions and discoveries that may be subject to protection by copyrights, trademarks, patents and trade secrets.

San Diego State University is committed to the development of ideas and to the broad dissemination of these ideas for the purpose of serving the public interest. The University also recognizes and strives to protect the legitimate private interests of those members of the University community who engage in research. Where this research yields inventions, equitable treatment of all public and private interests necessitates the formulation and implementation of a University policy governing the ownership of patent rights, the distribution of royalties, and the granting of licenses.

For purposes of this policy, Intellectual Property is defined as any new and useful process, machine, composition of matter, life form, article of manufacture, software, copyrighted work or tangible property. It includes such things as new or improved devices, circuits, chemical compounds, drugs, genetically engineered biological organisms, data sets, software, musical processes, or unique and innovative uses of existing Inventions. Intellectual Property may or may not be patentable or copyrightable. It is created when something new and useful has been conceived or developed, or when unusual, unexpected, or non-obvious results, obtained with an existing Invention, can be practiced for some useful purpose. Intellectual Property can be created by one or more individuals each of whom, to be an Inventor, must have conceived of an essential element or have contributed substantially to its conceptual development.

Ownership Of Intellectual Property

Within that tradition, it has been the prevailing academic practice to treat the faculty member as the copyright owner of works that are created independently and at the faculty member's own initiative for traditional academic purposes. Examples include class notes and syllabi, books and articles, works of fiction and nonfiction, poems and dramatic works, musical and choreographic works, pictorial, graphic, and sculptural works, and educational software, commonly known as "courseware." This practice has been followed for the most part, regardless of the physical medium in which these "traditional academic works" appear, that is, whether on paper or in audiovisual or electronic form. As will be developed below, this practice should therefore ordinarily apply to the development of courseware for use in programs of distance education.

Special works created in circumstances that may properly be regarded as "made for hire." [See the AAUP Statement on Copyright for an extended discussion of work for hire. A work should NOT be treated as "made for hire" merely because it is created with the use of university resources, facilities, or materials of the sort traditionally and commonly made available to faculty members.]

Negotiated contractual transfers, and

"Joint works" as described in the Copyright Act, where the institution can be considered a co-author.

The university shall own copyright only in the following 3 circumstances:

I. The college or university expressly directs a faculty member to create a specified work, or the work is created as a specific requirement of employment or as an assigned institutional duty that may, for example, be included in a written job description or an employment agreement.

II. The faculty author has voluntarily transferred the copyright, in whole or in part to the institution. Such transfer shall be in the form of a written document signed by the faculty author.

III. The college or university has contributed to a "joint work" under the Copyright Act. The institution can exercise joint ownership under this clause when it has contributed specialized services and facilities to the production of the work that goes beyond what is traditionally provided to faculty members generally in the preparation of their course materials. Such arrangement is to be agreed to in writing, in advance, and in full conformance with other provisions of this agreement.

As an institution of higher education, San Diego State University is dedicated to basic and applied research. It is fully expected that, at times, such research will lead to the conception and/or development of an invention. In the event that institutional support in the form of either financial or physical resources is used in the research process from which the invention results, then the institution has ownership rights in said invention

The assignment of property rights between the institution and its employees is dependent upon the degree of institutional support devoted to the conception, reduction to practice and development of an invention and products or processes which utilize such an invention. For the purposes of this policy, institutional support for an employee's project yielding an invention will be classified into one or two categories: full commission or assignment, and partial institutional support. These types of support are defined below, and the ownership rights relating to each category are detailed...

Unless otherwise stated in this Policy, the University is the owner, under federal and California law, of all intellectual property created by members of the University community which is:

· created or developed during the course of an individual’s responsibilities to USC,

· including works made for hire; or

· created or developed pursuant to a sponsored agreement or pursuant to a written agreement to transfer ownership to USC; or

· created or developed with the significant use of University facilities, funds, resources or supplies.

Members of the University community own intellectual property that is developed on their own personal, unpaid time, in the absence of any sponsored project agreement or other agreement giving rights to USC, and with only incidental use of University funds or facilities.

Incidental use of University resources includes the following:

· only a minimal amount of unrestricted funds have been used; and

· only a minimal amount of time has been spent using University facilities, equipment, or resources (use of offices, libraries and routinely available office type equipment such as desktop personal computers are not considered significant).

Consistent with long standing academic tradition, the University does not claim an ownership interest in faculty authored textbooks or scholarly publications, art works, musical compositions, or literary works, whether or not related to the professional fields of the faculty members and regardless of the medium of expression, unless the work is subject to contractual restrictions. This exception from the general ownership principle expressed above is applicable to all USC faculty.

It is vital for the University to be able to ensure the continuity and consistency of the educational experience that it provides its students. Accordingly, it is essential that the University maintain the right to use and adapt materials that are created for purposes of teaching and instruction at USC. These materials include an instructor’s syllabi, lecture notes, lecture presentations and other materials in whatever medium that are useful in presenting the substance of a course, even after the instructor leaves the University.

The University does not claim ownership of traditional teaching materials, lecture notes, lecture presentations and technology-based courseware prepared, developed or presented while at the University. Rather, the University treats them as traditional exceptions, like textbooks and scholarly publications, but as a condition of such treatment the University retains a license to use all such material for educational or academic purposes.

A. In general, the University has the right to obtain title to Intellectual Property developed as a result of support either directly from or channeled through the University.

B. University support is defined as financial or other support, regardless of origin, which is used in the discovery or development of Intellectual Property and is provided through University channels.

In the absence of University support, rights of ownership of Intellectual Property remain with the Inventor. Provision of an appointment shall not in and of itself be construed as University support for purposes of this definition.

D. When software or other unpatented tangible research property (is developed by faculty using University support, the University will own all rights to such property, including copyright.

E. Copyright to, and royalty from, literary or scholarly works in tangible or electronic form produced by faculty members as a part of their usual teaching, service, and research activities, …shall belong to the faculty who prepared such works and may be assigned or retained by them.

Faculty Staff Responsibilities

In light of the changing legislative environment, and in view of the evolution of contracts and policies in the intellectual property area AAUP believes that the establishment of an on-going Intellectual Property Committee representing both faculty and administration would serve a useful purpose in both collective bargaining and non-collective bargaining environments. Such a committee could serve a variety of purposes, including keeping faculty and administration apprised of technological changes that will affect the legislative, contract, and policy contexts. Such a committee would play a role in policy development, as well as perform a dispute resolution function. In the absence of such an overall policy committee, a dispute resolution committee with both administrative and faculty representation is essential.

The Intellectual Property Policy and Rights Committee will be composed of members equally apportioned between faculty (elected by the Faculty Senate, or some similar faculty body) and administration (appointed by the president or his/her designee.) The committee members shall elect a chair from among themselves each year. At the time of initial appointment or election, each member shall be designated as serving a one or two, or three year term, so that the term of one faculty committee member and one administration member will expire each year and replacements will be appointed or elected each year. After the first appointment subsequent members shall serve a three year term, commencing on July 1 and terminating on June 30. Committee members may serve one additional three year term.

The Committee shall monitor and review technological and legislative changes affecting intellectual property policy and shall report to relevant faculty and administrative bodies, when such changes affect existing policies.

The committee shall serve as a forum for the receipt and discussion of proposals to change existing institutional policy and/or to provide recommendations for contract negotiations.

Disputes over ownership, and its attendant rights, of intellectual property will be decided by the Intellectual Property Policy and Rights Committee.

The committee shall make an initial determination of whether the college or university or any other party has rights to the invention or other creation, and, if so, the basis and extent of those rights. The committee shall also make a determination on resolving competing faculty 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 invention, including development, patenting, and exploitation.

If the inventors/creators disagree with the determination of the committee he/she may appeal to binding arbitration. The cost of the arbitration shall be borne equally by the university and the creator(s).

Responsibilities of University Employees and Other Included Parties

7.61 It is the responsibility of the University, its employees, faculty, students, staff, independent contractors, and any person or entity deriving any interest pursuant to this policy to ensure adherence to this policy and any referenced agreement.

7.63 The author shall inform all other persons who may have rights to the copyrightable work (e.g. collaborators, research assistants, students) of the terms and obligations of this policy.

7.64 The author shall assign to the San Diego State University Foundation any and all rights in and to a copyrightable work in which the University has an interest as determined by the University Patents and Copyrights Committee and in accordance with the provisions of this policy.

7.65 The author shall cooperate with the San Diego State University Foundation in pursuing copyrights, obtaining licenses or otherwise commercializing intellectual property which has been assigned to the San Diego State University Foundation.

7.66 The author shall not enter into any "exclusivity agreements" with respect to the licensing of copyrightable works that would conflict with normal university work assignments or the satisfactory performance of all duties of the unit employee. (See also Position Statement on Outside Employment, II-P-2, sections 2.4, 2.81, 2.10).

7.67 Authors who enter independent copyright agreements with publishers should reserve rights with those publishers to reproduce their own materials for their own instructional and research purposes.

Section 2.4. Faculty, Staff, Student and Visitor Responsibilities

Faculty, staff, students and visitors recognize their responsibility as members of the University’s community of scholars to cooperate in the prompt and open dissemination of ideas and inventions by:

a. disclosing promptly and completely the creation of new intellectual property to the OTL, even if the University does not necessarily have rights to such intellectual property under the provisions of this Policy;

b. executing in a timely fashion all appropriate documents upon the

University’s request, such as an assignment of rights;

c.adhering to restrictions on the assignment, sale, licensing, commercialization, distribution or transfer of intellectual property that belongs to the University;

d. not taking any action which is inconsistent with the University’s exclusive ownership of its intellectual property;

e. cooperating in technology transfer activities in a manner consistent with University policy and procedure, including those governing

conflicts of commitment and conflicts of interest (see Section 4.4); and

f. cooperating with the University in legal actions relating to intellectual property (e.g., including administration, infringement and ownership

litigation).

Faculty, staff and students should contact the OTL prior to publication or dissemination of information that may have commercial value to ensure

that such actions will not adversely impact the University’s ability to protect or commercialize intellectual property.

III. Faculty Responsibilities

Faculty members who create Intellectual Property shall:

A. Disclose to appropriate University or Division officials the creation of Intellectual Property;

B. Conduct technology transfer activities in a manner consistent with University and Divisional policies and procedures, including those governing conflicts of commitment and conflicts of interest;, and

C. Cooperate with the University in defending and prosecuting patents and in legal actions taken in response to infringement.

University Responsibilities

The Division of Research Administration of the Office of Graduate and Research Affairs is the University administrative office responsible for providing assistance to faculty, students, and other University employees in complying with this policy.

The Technology Transfer Office of the San Diego State University Foundation is responsible for providing assistance to faculty, students, and other University employees in recognizing, securing, and protecting intellectual property rights associated with the products of their research and other scholarly endeavors.

The author of copyrightable works should contact the Technology Transfer Office and/or the Division of Research Administration for current information on intellectual property procedures and to assure that appropriate action is taken in accordance with the San Diego State University Copyright, Trademark, and Trade Secret Policy.

The University acknowledges the importance of encouraging the prompt and open dissemination of research findings and the importance of making its intellectual property available to industry and others for the benefit of society. In recognition of these important objectives, the University:

a. does not limit the right of faculty, staff and students to publish their own research results and other scholarly information unless the principal

investigator has agreed to restrictions in the agreements supporting such sponsored research;

b. recognizes that any individual who creates intellectual property should have a significant role in the determination of how such intellectual property will be publicized, commercialized or developed;

c. permits faculty, staff and student inventors/authors freedom to place their inventions in the public domain if they believe that would be in the best interest of science or technology transfer

and that doing so would not violate the terms of any agreements regarding the implications of placing intellectual property into the public domain];

d. provides patent, copyright, licensing, and technology transfer services to assist in the protection, marketing and promotion of

University owned intellectual property;

e. provides legal advice and services to assist in the protection and commercialization of University owned intellectual property;

f. provides services for registering trademarks and service marks;

g. in appropriate cases, provides the necessary financial resources for the protection and commercialization of intellectual property;

h. rewards authors and inventors through a generous sharing of royalties from inventions assigned to the University; and

i. rewards Schools and Departments for creating productive research environments by sharing a portion of the royalties from inventions

assigned to the University.

The University acknowledges the importance of transferring its Intellectual Property in an appropriate and cost-effective manner. To that end, the University shall establish efficient mechanisms for technology transfer, so as to maximize the value of the technology to the faculty and the University.

A. The University Administration shall:

1. Provide oversight of Intellectual Property management and technology transfer to ensure adherence to University policies;

2. Assist the Divisions in establishing and maintaining effective technology transfer mechanisms and Divisional policies and procedures

consistent with University policies;

3. Provide legal services and cooperate with the Divisions in promoting and licensing Intellectual Property; and

4. Take appropriate actions to protect the University's Intellectual Property.

B. Divisional Administrations shall:

1. Promote technology transfer in a manner consistent with the Division's objectives and academic environment;

2. Establish policies and procedures for technology transfer and the avoidance of conflicts of interests, consistent with University policies; and

3. Review and approve all agreements that convey or affect the University's rights to Intellectual Property originating in that Division

Student Exceptions

Intellectual property developed by students as a result of classwork is ordinarily owned by the student unless (1) significant institutional resources have been used in the development of the work, in which case, ownership shall be determined in accordance with Sections 3.33 and 3.4 above;

(2) the student has entered an agreement with the instructor specifying alternative terms of copyright ownership; or

(3) the work was completed under the terms of a contract with the University or its auxiliaries, in which case ownership shall be determined in accordance with Section 3.31 above.

Ordinarily, the author of a thesis/dissertation completed at San Diego State University shall hold the copyright to the manuscript, but that right does not automatically extend to the data used in developing the manuscript or to subsequent publications based on that data.

Exception for Student Works

The University acknowledges students’ ownership of works created in the course of their education, such as dissertations, papers and articles.

Students do not hold the copyright in these works if they are created

in the course of rendering services for which USC compensates the student; or
as part of research performed pursuant to a sponsored agreement or project;
or under a special agreement where the student assigns the

Although a student retains copyright ownership to his/her thesis or dissertation or other student created works, the student grants the University

permission to use, reproduce and publicly distribute copies of those works.

If the student works contain software, patentable subject matter, inventions or other intellectual property and the student uses a significant amount of USC facilities, funds, resources and supplies in those works, the University owns the underlying intellectual property in the student

Royalty Sharing

/Distribution of Funds

Funds received by the faculty member from the sale of intellectual property owned by the faculty author or inventor shall be allocated and expended as determined solely by the faculty author or inventor.

Funds received by the college or university from the sale of intellectual property owned by the college or university shall be

allocated and expended as determined solely by the college or university.

Funds received by the faculty member and the college or university from the sale of intellectual property owned jointly by the faculty member and the college or University shall be allocated and expended in accordance with the specific agreement herein

provided: [must be negotiated by the parties.]

In the event of multiple creators, the creators will determine the allocation their individual shares when the work is first undertaken.

Any funds that are received by the San Diego state University Foundation through royalties or licenses or other consideration for copyrightable works shall be distributed in accordance with the Distribution of Royalty Guidelines developed by the University Copyrights and Patents Committee, recommended by the Vice President for Research and Dean of the Graduate Division on advice of the college deans and approved by the President. Such funds shall be used for support of scholarly activities at San Diego State University,

One of the objectives in the commercialization of USC technology is the generation of royalty income. Because USC is a research and service oriented institution, it does not focus solely on the maximization of profits. The University does, however, seek to generate the greatest possible royalty revenue it can without compromising its research and education mission. This is done through the negotiation of fair, reasonable and consistent license and other agreements that serve as the base for a long-term relationship. The proceeds from such agreements are generously shared with inventor/authors, as detailed below

Revenues received as a result of Licensing Agreements in the form of cash royalties and/or equity holdings shall be distributed in such a manner as to encourage technology development within and technology transfer from the University. "Revenues" shall not include funds received for research support.

This policy provides for the distribution of revenues from both net cash royalties and equity shams resulting from intellectual property agreements. The distribution of revenue is in two tiers: at or below $300,000 per year as shown in Table I……

Distance Education

http://www.aaup.org/Issues/DistanceEd/deipdocs.htm

Other Topics

Formulation of Intellectual Property Committee

In light of the changing legislative environment, and in view of the evolution of contracts and policies in the intellectual property area AAUP

believes that the establishment of an on-going Intellectual Property Committee representing both faculty and administration would serve a useful purpose in both collective bargaining and non-collective bargaining environments.

Such a committee could serve a variety of purposes, including

keeping faculty and administration apprised of technological changes that will affect the legislative, contract, and policy contexts. Such a

committee would play a role in policy development, as well as perform a dispute resolution function. In the absence of such an overall policy

committee, a dispute resolution committee with both administrative and faculty representation is essential.

COMPONENTS TO BE INCLUDED WHEN NEGOTIATING CONTRACT LANGUAGE OR A POLICY ON OWNERSHIP OF

INTELLECTUAL PROPERTY

What is "intellectual property"?

Who owns the intellectual property?

Who may use the intellectual property?

How are any funds to be distributed?

How are emerging issues and disputes resolved?