Review: Intellectual Property Policy

REVIEW: INTELLECTUAL PROPERTY POLICIES

351.230 Management, development and disposition of intellectual property.

The State Board of Higher Education may manage, develop or dispose of by assignment, sale, lease, license or other action deemed advisable by the board, property acquired under ORS 351.220, and may contract with any person or agency, board, commission or department of this or any other state or with the federal government regarding the management, development or disposition thereof. The board may make gratuitous assignments of such property to any trust or fund, the sole beneficiary of which is the State Board of Higher Education or any of the institutions or activities under its control, subject to the share, if any, agreed to be paid to the assignor. The board may reassign such property to the inventor, author or discoverer.

351.240 Terms and conditions of transactions in intellectual property; dissemination of information.

(1) The State Board of Higher Education may determine the terms and
conditions of any transaction authorized by ORS 351.220 to 351.250 and
need not require competitive bids in connection therewith. No formal
publicity or advertising is required regarding property for the
development of which the board wishes to contract, but the board
shall make reasonable efforts to disseminate such information
in appropriate research and industrial circles.

(2) The board may delegate any of the duties, functions and powers
granted to the board under ORS 351.220 to 351.250 to any state
institution of higher education within the Oregon University System.
[remainder of section and citations omitted]

”OAR 580-043http://arcweb.sos.state.or.us/rules/OARS_500/OAR_580/580_043.html

OAR 580-043-0006

Policy

The educational and research activities of employees of the Board of
Higher Education and its institutions frequently result in the
discovery of new knowledge in the form of inventions, technological
improvements, and the production of educational and professional
materials. It shall be the general policy of the Board that such
results be made available to the public in the most expeditious
manner.

580-043-0007

Objectives of Policies

It is Board intent to:

(1) Provide systematic means of bringing inventions, technological
improvements and educational and professional materials into the
public domain.

(2) Encourage the development of new knowledge while protecting
traditional academic freedom of employees in the publication of
materials, development of inventions and discovery of technological
improvements.

(3) Establish principles and procedures for equitably sharing net
royalty income with employees, and with sponsoring agencies
when required by an agreement.

580-043-0011

Employee Responsibilities and Rights

(1) As a condition of employment, all Board and institution employees
shall agree to assign to the Board rights to:

(a) Any invention or improvement in technology conceived or developed
using institutional facilities, personnel, information or other
resources; and

(b) Educational and professional materials, whether or not registered
for copyright, that result from the instructional, research or public
service activities of the institutions.

(2) Employees shall be responsible for disclosing to designated
institutional representatives all inventions, technological improvements
and educational and professional materials conceived, developed and/or
produced during the conduct of normal activities.

(3) Employees shall be responsible for cooperating and assisting Board
and institutional representatives responsible for patenting, licensing,
registering for copyright, publishing and generally assisting public
access to new knowledge resulting from employee activities.

(4) Employees shall be eligible to share in net royalty income from
each invention or separate improvement thereof, an amount not to
exceed:

(a) 40 percent of the first $50,000, 35 percent of the next $50,000,
and 30 percent of all additional net royalty income received by the
Board for inventions and technological improvements; and

(b) 50 percent of net royalty income from educational and professional
materials.

(5) For the limited purposes of administering the policies under
Division 43, persons acting in the following capacities shall be
entitled to the benefits and subject to the responsibilities of
said rules: graduate teaching assistants, graduate teaching fellows,
graduate research assistants and student employees.

580-043-0016

Institutional Responsibilities

To manage inventions, technological improvements and educational
and professional materials developed by employees, institutions shall:

(1) Apply Board-adopted policies and procedures.

(2) Encourage employee activities that lead to new knowledge.

(3) Actively seek applications for new knowledge developed by employees.

(4) Anticipate and comply with conditions in contracts, grants and
agreements with sponsoring agencies.

(5) Recommend to the Vice Chancellor for Finance and Administration
or designee contractual agreements, patent applications and equitable
sharing of net royalty income.

580-043-0026

Office of Finance and Administration Responsibilities

The Office of Finance and Administration shall:

(1) Assist institutions in the development of procedures implementing
Board policies and managing new knowledge.

(2) Monitor institutional application of Board policies.

(3) Review and approve institutional recommendations regarding
assignment of rights, applications for patents, execution of
licenses and agreements and distribution of royalties.

[remainder of section and citations omitted]

”UO Faculty Handbook, Chapter III, Section Q”http://academicaffairs.uoregon.edu/handbook/Chapter03.html’:http://academicaffairs.uoregon.edu/handbook/Chapter03.html

Q. Other General Conditions of Employment

1. Patents, Copyrights and Licenses

By rule, the rights to the products of a university faculty member’s
scholarly or creative activities belong to the University of Oregon.
See the state board’s rule 580-43-006 et seq. Under those rules,
faculty members as individuals share in the benefits that come from
creative work. Technology transfer services, a unit within the office
of the vice provost for research, will assist faculty in securing
the rights and benefits that may accrue from their creations. Call
346-3176 for more information about rights to intellectual property.

”Internal Management Directives Sections 6.205 – 6.255 : Licensing,
Patent, Educational, and Professional Materials Development, and
Copyright Policies and Procedures
http://techtran.uoregon.edu/IMDs.html

6.205 Application of Policies and Procedures

The policies for licensing, patents, educational and professional
materials development, and registration of copyrights apply to all
Department of Higher Education employees whose work-related assignments,
regardless of location, might enable them to develop new knowledge
which was conceived purposely or fortuitously. The policies also
apply to other persons using institutional facilities, personnel, or
other resources.

6.210 Definitions

(1) Inventions or technological improvements to which these policies
apply include any new and useful process, machine, device, manufacture,
or composition of matter, and any new and useful improvements.

(2) Educational and professional materials to which these policies
and procedures apply are those used or distributed primarily for the
formal or informal instruction or education of professional or general
students. Such materials may result from the instructional, research,
or public service activities of employees.

(3) Materials to which these policies and procedures apply are
exemplified by:

(a) Writings, lectures, study guides, books, text-books, journal articles,
glossaries, laboratory manuals, proposals, musical or dramatic compositions,
listings, tables, charts, graphs, figures, manuals, codes, software,
unpublished scripts, and programmed instructional materials.

(b) Video and audio recordings, live video and audio broadcasts, cassettes,
tapes, films, filmstrips, slides, transparencies, and other reproductions
and visual aids.

(c) Computer programs and computer-assisted course-ware.

(4) Inventor(s) means the individual(s) who first conceived the idea,
invention, or technological improvement.

(5) Author(s) means the individual(s) responsible for primary subject-matter
guidance and development of educational and professional materials.

(6) Material is said to be in the public domain if it is not protected by
common law or statutory copyright and, therefore, is available for copying
without infringement.

(7) Publication occurs when by consent of the copyright owner, the original
or tangible copies or phono records of a work are sold, leased, loaned, given
away, or otherwise made available to the general public, or when an authorized
offer is made to dispose of the work in any such manner, even if a sale or
other disposition does not in fact occur.

(8) The term “owner” refers to the party who owns or controls the copyright
and who has the right to sell, assign, distribute, or license the use of
such material.

(9) Board- and institution-assisted effort is individual effort which involves
institution and Board support in the form of significant personnel time,
facilities, or other resources.

(10) Sponsored effort is institution-assigned effort, and assignment,
among others, to conduct research and to develop materials, with substantial
or all of the personnel time, facilities, or other resources for the assignment
being provided by the institution and Board, or an outside sponsor such as a
federal agency or private corporation.

6.215 Rights to Inventions, Tech Improvements, Educational and Professional
Materials

(1) The Board reserves the ownership rights to all institutional work-related
inventions, and to educational and professional materials developed with
institutional resources, including the right to a free and irrevocable
license for usage, and if desired, the licensing for use by others. The
foregoing does not preclude an institution employee from granting copyright
privileges to the publisher of a scholarly or professional journal when no
compensation or royalty is involved.

(2) Educational and professional materials shall be considered as having
been developed in the course of employment in those cases when the
individual was employed for the specific purpose of preparing or producing
the material, or was specifically directed to develop the material as part
of general employment duties and responsibilities.

(3) Lecture notes and other materials prepared by academic staff in
connection with a teaching assignment and with only incidental use of
institutional facilities, funds, staff, and other resources normally shall
be viewed as flowing from individual effort and initiative and shall not
be construed as having been produced in the course of discharging the
obligations of employment.

(4) Funds and facilities provided by governmental, commercial, industrial,
or other public or private organizations, but administered and controlled
by the institution and Board, shall be considered to be funds and facilities
provided by or through the institution and Board.

(5) If it is determined that inventions or materials developed are not
related to work or to an assigned project and that development involved
no or minimal use of institutional funds or facilities, or that the material
developed is incidental to the individual’s work assignment, or that the
institution and Board have no right, vested interest, or claim in an
invention, and the Institution decides to forego the licensing or patenting
of an invention or the publishing and copyrighting of the material, the
president or designee may recommend to the Vice Chancellor for Finance and
Administration or a designee that the Board’s interest and rights be waived,
and that a statement be issued which waives any institution or Board claim.
Such a waiver may be granted only if preexisting commitments to sponsoring
agencies have been cleared. Upon receipt of such waiver, the inventor or
author shall be free to take such further steps as desired. In the case
of an invention, however, the institution has usually provided substantial
laboratory, supply and equipment support. Therefore, the president or
designee will normally recommend the execution of a limited release only
after the institution has exhausted efforts to license or patent the
invention. This release enables the inventor to exploit the invention and
recover reasonable exploitation, licensing, and patenting costs related
thereto and a sum up to $10,000 out of the royalty income receipts, with
the inventor and the Board sharing equally in the balance of the net
royalty income.

(6) Except as provided above, the ownership rights to all forms of
educational and professional material in the form of books, musical or
dramatic composition, architectural designs, paintings, sculptures,
or other works of comparable type developed by institution and Board
employees, either in conjunction with or aside from their employment,
shall accrue to the author, unless the material is prepared in
compliance with contractual provisions or as a specific work
assignment, or significant institutional and Board resources were
utilized. An academic staff person’s general obligation to produce
scholarly works does not constitute such a specific institution
or Board assignment.

6.220 Research and Development of Inventions and Materials with
Outside Organizations

(1) In accepting grant and research funds from governmental,
nonprofit, and commercial agencies, the institution and researcher
shall agree to the conditions in the agreement with the sponsoring
agency pertaining to licensing, patent policies, and ownership of
all copyrightable material conceived and developed in the course
of work required by the agreement. Such agreements shall normally
include provisions enabling the institution to publish the
findings of research and rights to take title to patentable
inventions, discoveries, and educational and professional
materials arising from the work performed. In the absence of
such agreement or terms, the products shall be the property of
the institution and Board.

(2) At the time any sponsored assignment is made and when
inventions, new technology, or materials subject to copyright
may be expected to be produced, affected institutional staff
are to be advised of copyright limitations and rights to
inventions imposed by extramural sponsors as well as
institutional and Board policies and procedures regarding
the same.

(3) In cases where it appears in the interest of the Board,
institution, inventor, and sponsor, and upon the recommendation
of the president or designated administrator, the Vice Chancellor
for Finance and Administration or designee may grant rights to
the sponsor, including the right to acquire a proprietary
interest in and to any invention or patent developed during
the sponsored research project.

(4) When an invention is developed in the course of sponsored
research, the sponsor may be granted a non-exclusive license
for its own use and, only if appropriate, an option to acquire
a limited term, royalty-bearing, exclusive license to such invention.

6.225 Disclosure of Inventions and Copvrightable Materials

(1) Employees and any other persons who conceive or develop
inventions or technological improvements while engaged in
activities utilizing institutional resources shall report
the findings on a Department of Higher Education standard
disclosure form to, and confer with, the institutional
committee, or person designated by the president to administer
licensing, patent, educational and professional materials
development and copyright policies and procedures. The
purpose of the disclosure of an invention or materials
developed is to enable the institution to determine
potential for licensing, patenting, publishing, and
registering of copyright, and the equities of the
inventor, author, institution, and Board. Disclosure of
details of an invention which might jeopardize the licensing
or patent potential may be delayed until the committee or
president designee has acted.

(2) If it is determined that the Board and institution have
vested interest and claim in an invention, the inventor
shall enter into a standard Department of Higher Education
Licensing and Patent Assignment Agreement. The agreement
shall be prepared initially at the institution.

6.230 Agreement to Assign Rights

(1) As part of the acceptance of the Notice of Appointment,
each academic employee is obligated to comply with conditions
of employment including agreement to assign rights to
inventions conceived and materials developed while employed
by the institution.

(2) In cases where a Notice of Appointment is not used,
and the employee’s work involves potential for discovery
or invention, the employee shall execute a standard
Department of Higher Education Agreement to Assign
Invention, Licensing, and Patent Rights prepared at
the institution.

6.235 Administration of Policies and Procedures

(1) The Board delegates to the Vice Chancellor for Finance
and Administration or designee authority to work with each
president or designated administrator to obtain licensing,
production, and publishing agreements and patents, develop
and approve forms used in administering licensing and patent
policies, and execute all types of agreements, waivers,
releases, and net royalty distribution agreements.

(2) Each institution and the Board reserve the sole right
to make agreements with sponsoring agencies and to include
therein provisions regarding ownership and disposition of
rights in inventions and materials deemed to be in the
interest of the institution, Board, and public.

(3) The president is responsible for informing employees
regarding Board licensing, patent, educational, and
professional materials development, and copyright policies
and procedures. The president may delegate this responsibility
to a committee or an administrator.

(4) The duties of the president, committee or a designated
administrator shall be:

(a) To protect confidentiality of the inventor’s or author’s disclosure.

(b) To counsel with the inventor or author, examine the invention
or materials disclosure, and appraise the equities of all concerned
parties. If it is determined that the institution and Board have
no rights, vested interest, or claim, the committee or administrator
shall recommend that the president seek a release or waiver for the
inventor or author.

(c) To counsel with the inventor or author concerning Board
policies and procedures applicable to the invention or material
and with policies of sponsoring agencies, if any, and to assist
with compliance.

(d) To recommend to the president options for maximizing public,
Board, institution, and inventor or author benefits when seeking
licenses, patents, and publishing agreements. Such action shall
be preceded by the execution by an inventor of a Licensing and
Patent Assignment Agreement initiated at the institution.

(e) To recommend to the president appropriate action pertaining
to the invention or Material within 60 days after its disclosure.

(5) When institutional facilities are utilized on a reimbursable
basis to develop educational or professional materials or to
conduct research on an invention, an agreement shall be prepared
and recommended by the president or designee to the Vice
Chancellor for Finance and Administration or designee. Such
agreement shall be executed in advance of use of the facilities
and shall set forth the understanding regarding the use of facilities,
ownership rights, and financial arrangements.

6.240 Determination of Securities

In determining equities relating to ownership rights in an invention
or material, institutional personnel and the Vice Chancellor for
Finance and Administration or designee shall follow these guidelines:

(1) Consideration shall be given to the equity of all parties in
light of circumstances surrounding the development of the new knowledge.

(2) If an invention or material is deemed to be the result of joint
efforts, an agreement shall be reached among the inventors or authors,
institution, and Board for distribution of any royalties. The total
of net royalty income paid to all inventors or authors shall not
exceed the maximum percentage of net royalty income which Board
policy allows to be distributed to a single inventor or author.

(3) In the event an agreement cannot be reached regarding the amount
of equity of each party and subsequent distribution of net royalty
income, the president shall recommend resolution to the Vice Chancellor
for Finance and Administration after having taken affirmative steps
to assure thorough consideration of the equities of all parties.

6.245 Commercialization of Inventions

(1) The Board encourages the president to assist the invention
commercialization process to the extent that the invention contributes
toward fulfillment of the institution’s mission. Resource allocation
for licensing, patenting, and technology transfer, however, is the
responsibility of the president.

(2) The president, designee, or appointed committee shall counsel
with inventors to determine how to make the invention available to
industry and the public in an effective and non-discriminatory manner,
to obtain reasonable royalties for use in furthering institutional
education and research objectives, and to reward the inventor through
participation in net royalty income received.

(3) When feasible, the president or designated administrator shall
recommend that the Vice Chancellor for Finance and Administration
grant non-exclusive royalty-bearing licenses to all qualified
organizations. Exclusive licenses may be recommended if it is
determined that such a license is required in the best interest
of the public, Board, institution, and inventor in order to encourage
marketing and eventual public use of the invention.

(4) Before granting an exclusive license, a bona fide effort shall
be made by the institution to apprise qualified organizations known
to be interested in the subject matter of the invention and in
developing the invention through a non-exclusive license.

(5) When it is deemed appropriate to grant an exclusive license,
the length of exclusivity shall be limited to that time deemed
necessary to provide the licensee with the necessary incentive
and opportunity to market the product and recover developmental
costs, usually not more than five years from the date of first
commercialization of the invention, or the issuance of a patent,
whichever comes first, and a non-exclusive license for the life of
the patent. Exclusive licenses may include the right of the
licensee to sublicense others. Exceptions to the length of
exclusivity, when justified and recommended by the institution,
may be approved by the Vice Chancellor for Finance and
Administration and the Chancellor.

(6) Licensing and sponsored research agreements shall include
provisions:

(a) Prohibiting the use of the name of the researcher, institution,
and Board, either directly or implied, in any advertising relating
to the commercialization of the product or process or in supporting
evidence provided in prospectus literature, and the use of any
statements which imply approval of the licensee’s or sponsoring
agency’s marketing techniques, business objectives, or relationships
with wholesalers, retailers, or consumers. Exceptions to this policy
require Board approval.

(b) Indemnifying the institution against any and all claims, demands,
damages, costs, and other related items arising from the manufacture,
use, or sale of the licensed invention or process, and, whenever
possible, from any liability for damages resulting from a final
judicial determination that such commercial utilization of the
invention constitutes an infringement of any third party patent.

(c) Allowing the institution to produce and use the invention or
process for its own educational or research purposes.

(d) Allowing the institution and inventor to publish the findings
of research and to continue with research related to the process
or invention including publication of future findings.

(e) For receiving or examining accounting records maintained by
the licensee and any sub-licensees.

(f) For removing licensing rights and terminating the agreement
should the licensee fail to develop and market the product within
a reasonable time.

6.250 Distribution of Royalties

(1) The Vice Chancellor for Finance and Administration or designee,
upon the recommendation of the president, shall act on behalf of the
Board to conclude agreements to share net royalty income accruing to
the Board from licensing and patent agreements, and from the sale,
lease, or licensing of materials outside the institution.

(2) Agreements involving the sharing of net royalty income shall be
initiated in writing at the institution and recommended by the president
or designee to the Vice Chancellor for Finance and Administration or
designee for review and approval. In determining disposition of income,
due consideration shall be given to the equity of all parties in the
light of all circumstances surrounding the development of the invention
or material.

(3) Prior to distribution of any royalty income, the Vice Chancellor
for Finance and Administration or designee shall require deduction from
gross royalty income, of all institutional expenses and reasonable costs
incurred in developing the invention or material, expenses incurred in
enforcing or defending any patent, copyright litigation, licensing,
interference, and marketing costs attributable to the invention or material,
as well as any other expenses deemed necessary to recoup. Gross royalty
income minus all such costs and expenses constitutes net royalty income.

(4) The maximum net royalty income which may be distributed to the
inventor shall be 40 percent of the first $50,000 of net royalty income
received by the Board, 35 percent of the next $50,000, and 30 percent of
all additional net royalty income.

(5) The maximum net royalty income which may be distributed to the
author shall be 50 percent of the net royalty income received by the Board.

(6) Net royalty income received by the Board, less the amount distributed,
if any, shall be dedicated to the institution of the inventor, or author,
subject to the limitation of ORS 351.250. The use made of such net income
shall be at the discretion of the president, subject to Board-established
budget policy.

(7) If the originator and developer of an invention or author of material
cannot be determined, or if the inventor or author waives any claim to net
royalty income, the percent share of royalties intended for such person may
be distributed, upon recommendation of the president or designee, to the
originating department, laboratory, or center at the institution.

6.255 Copyright Registration Procedures

In establishing copyright registration procedures, institutional
personnel and the Vice Chancellor for Finance and Administration or
designee shall follow these guidelines:

(1) All educational and professional materials developed with
significant Board and institution-assisted effort shall be registered
for copyright, at the option of the institution and Board, in the name
of the institution and Board. The institution and Board shall provide
for disclosure of appropriate credits and shall counsel with
participating employees regarding presentation of materials.

(2) Educational and professional materials developed with minimal
Board or institution-assisted effort should be registered for copyright,
if at all, in the name of the author. The cost of institutional support
for such effort will be agreed upon by the author and the president or
his designated representative, and the author will reimburse the
institution for such costs out of royalties received from the registered
materials.

(3) Materials developed under sponsored assignments should be registered
for copyright, if at all, in the name of the institution and the Board,
with appropriate acknowledgment to the author. The institution and author
are obligated to adhere to any publication rights included in agreements
made with grant or contract sponsors.

(4) Educational and professional materials developed solely by individual
effort shall be registered for copyright, if at all, in the name of the
author. All rights, including those to royalties, reside with the author.