Faculty & Admin : Policies & Guidelines

Intellectual Properties Policies

1. Introduction
2. Definitions
3. Applicability of the Policy
4. Ownership of Intellectual Property
5. Administration
6. Procedures for Notification
7. Protection and Commercialization
8. Distribution of Income
9. Dispute Resolution

1. INTRODUCTION

This document establishes a policy for Virginia Commonwealth University with respect to intellectual properties developed by members of the University community.

The University shall retain all rights, title, and interest in any and all intellectual properties generated, created, or developed in facilities operated or controlled by the University, supported by funds administered by the University, and/or performed in the course of regular duties by University members, unless exempted by other provisions of this policy.

The Provost shall have the right reasonably to exercise broad discretion necessary for the encouragement, development, and protection of inventions, patents, and other intellectual discoveries. The Provost shall consult with the Intellectual Properties Committee in matters requiring the exercise of broad discretion.

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2. DEFINITIONS

Assigned duty.

Assigned duty is narrower than 'scope of employment,' and is a task or undertaking resulting from a specific request or direction. The general obligation to engage in research and scholarship which may result in publication is not an assigned duty. A specific direction to prepare a particular article, laboratory manual, computer program, etc., is an assigned duty.

Author.

One or more University member(s) who create a copyrighted work.

Claims an interest.

The University claims an interest in intellectual property when it asserts a right in that property under its Intellectual Properties Policy. The University may choose not to claim an interest in some forms of intellectual property, even though legally it may be able to assert ownership.

Committee.

The Intellectual Properties Committee of Virginia Commonwealth University.

Copyrighted work.

An original work of authorship (i.e., writing, work of art, work of music, computer program, etc.) for which property rights are protected under copyright legislation.

Creator.

One or more inventor(s) in the context of inventions protectable by patent or contract and/or author(s) in the context of copyrightable works of authorship.

Intellectual property.

Anything developed by anyone covered by this policy that fits one or more of the following categories:

1. an invention,
2. an issued patent,
3. a copyrighted work, or
4. a legal right that inheres in a patent or a copyright.

Invention.

A machine, article of manufacture, composition of matter, process, or use for and/or improvement in any of these for which property rights may be protected under patent law and/or contract.

Inventor.

One or more University member(s) who create an invention.

Provost.

For purposes of this policy, 'Provost' shall mean the Provost or his or her designee. If a designee is appointed by the Provost, the appointment must be in writing and revocation must be in the same manner.

Royalties received.

Any value received by the University, including cash payments as well as the market value of any property or services received, in consideration for a transfer of rights and/or title to intellectual property in which the University claims an interest.

Significant use of University resources.

What constitutes significant use of University facilities, personnel, and resources is a question that must be answered on the basis of the facts and circumstances of each case. A University-wide formulaic approach is inappropriate because of different needs among the various disciplines. Normal usage of library resources, secretarial help, word processing equipment, or other support services do not constitute a significant use. If a question arises, the creator should seek a written opinion from the department chair or program head, and if there is a disagreement, may appeal to the Committee.

University.

Virginia Commonwealth University, including the Medical College of Virginia Hospitals, and any other enterprise in which Virginia Commonwealth University is involved.

University member.

All full- and part-time faculty, classified employees, administrative staff, paid student assistants, students, fellows and trainees, visiting faculty and researchers, and those employees and visitors covered by sponsored program agreements or other contractual arrangements are considered University members for purposes of this policy, and are subject to its terms.

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3. APPLICABILITY OF THE POLICY

This policy shall apply to all University members.

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4. OWNERSHIP OF INTELLECTUAL PROPERTY

The University recognizes the traditional distinction made between intellectual properties subject to copyright and those subject to patent protection. Within higher education, the right of faculty and others to create and produce materials subject to copyright protection and to receive royalties generated from their use has long been recognized. This policy reaffirms that distinction.

1. Inventions. Properties of this nature developed by members of the University community, using facilities owned or operated by, or resources administered by the University, become the property of the University.

2. Copyrighted works. Generally, the ownership of the copyright interest in a work vests initially in the author of that work. However, the Copyright Act of 1976 provides that when a copyrighted work is produced by one person who has been employed by another for that purpose, the employer is considered the owner of the property. For purposes of this policy, the University shall own the entire right, title, and interest in all materials subject to copyright when required by law or contract or when the University member:

   1. creates the material as an assigned duty; or

   2. makes significant use of University facilities and resources in their creation.

   University members shall retain all rights relating to publication, distribution, and classroom use of works which they have prepared on their own initiative, including both papers published in scholarly journals and books, provided the University does not possess rights of ownership as defined above.

3. In the event an intellectual property is created under a grant, contract, or other agreement approved by the University, the terms of which stipulate ownership of intellectual property, the terms of the agreement will prevail over conflicting terms of this Policy.

   When the University possesses rights of ownership, it will be the duty of the University member to acknowledge University ownership of such materials and to execute such documents as shall be required to document such ownership.

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5. ADMINISTRATION

The University vests administrative authority over all matters of intellectual property in the Provost who, from time to time, may issue such administrative procedures as are necessary or desirable for the implementation of this policy. The Provost shall be responsible for ensuring that information relative to the existence and terms of this policy be regularly disseminated or made available to University members.

The Provost shall have authority to act for the University in all matters involving intellectual properties, including the making of contracts and the waiving, assigning, or transferring of University rights, consistent with law and policy.

The Provost shall appoint a University Intellectual Properties Committee with not fewer than nine (9) members. The Committee shall consist of two (2) deans (one from each campus), two (2) department chairpersons (one from each campus), and five (5) faculty members. No two members of the Committee shall come from the same school. In addition, there shall be three (3) nonvoting ex officio members consisting of the Director of Sponsored Programs Administration, one representative from the Office of Research and Graduate Studies, and one representative from the Office of the General Counsel.

The initial appointees shall be divided into three groups of three persons each. One group shall be appointed to one-year terms, the second group will be appointed to two- year terms, and the third group to three-year terms. Thereafter, all regular appointments will be for three years each.

Appointments to fill vacancies created other than by expiration of term shall be for the unexpired term. Reappointment to the Committee shall be at the discretion of the Provost, but no member shall be reappointed to more than two consecutive three-year terms. The provost shall annually appoint one member of the Committee to serve as its chairperson.

The Intellectual Properties Committee shall: be responsible for monitoring implementation of this policy; be advisory to the Provost on interpretations and applications of this policy; periodically review and recommended changes to the policy; and be responsible for all other duties assigned to it from time to time by the Provost. The Committee shall formulate its own operating procedures and inform University members of these procedures.

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6. PROCEDURES FOR NOTIFICATION

University members are required to report all intellectual properties in which the University claims an interest, including expressly all inventions and copyrighted works which are owned by the University in accordance with Section 4 above, to the Intellectual Properties Committee through its administrative office. This report shall be made to the Committee in writing as promptly as possible, using the appropriate form(s) provided by the administering office.

The confidence of all proprietary information in the report and in all correspondence between the creator(s) and the Committee pertaining to the intellectual property shall not be compromised by the Committee or its administering office. The report must identify the creator(s), include essential data describing the intellectual property, identify the source(s) of funding that supported its creation, and contain any other relevant information deemed necessary by the Committee. When more than one individual has participated in the creation of the intellectual property, the report must specify the percentage that each individual claims to have in its creation.

If so requested, the Committee must notify the creator(s) in writing within 90 days of receipt of the completed report whether or not the University claims an interest in the intellectual property. The deadline for this decision may be extended by mutual agreement of the creator(s) and the Committee.

If the Committee determines that the University does not claim such an interest, the University will no longer have any responsibilities, rights, or obligations pertaining to that intellectual property except the obligation of confidentiality of proprietary information.

If the University at any time no longer wishes to pursue further development of the property, the Committee will notify the creator(s), and the appropriate University officer will execute the necessary documents assigning all rights to the creator(s).

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7. PROTECTION AND COMMERCIALIZATION

In order to provide maximum benefit to the University, the public, and the creators of intellectual properties, it is the policy of the University to seek appropriate protection and commercialization of all intellectual properties.

The Provost is charged with the responsibility for the protection and commercialization of intellectual property coming under the provisions of this policy.

The Provost will determine promptly if a disclosed intellectual property should be protected and if so, will initiate the appropriate actions to secure protection in a timely manner. Reasonable commercial judgment will be used in determining the appropriateness and the methods of protection and commercialization. The methods of commercialization may include, but will not be limited to:

1. contracting with an organization which has as one of its primary functions the management of inventions or other intellectual properties;
   
2. utilizing an entity whose purpose is to benefit the University, e.g., an intellectual property foundation should it be established by the University;
   
3. direct negotiation with profit, nonprofit, or governmental entities desiring to utilize and/or further develop and market the intellectual property.

In order to protect the rights of the creators and the University, all details relating to intellectual property disclosure will be maintained in confidence. Disclosures to outside parties will be through appropriate nondisclosure agreements.

Publication of details of inventions prior to initiation of protection procedures may result in the loss of legal protection. It is therefore in the interest of inventors to consult with the appropriate administrator prior to submitting papers revealing patentable discoveries to scholarly publications or for presentation at conferences.

To protect the rights of the author and University, any copyrighted work should contain an appropriate copyright notice. Because copyright procedures differ significantly from those regarding patents, it is unnecessary for the authors of copyrighted works to consult with the University administrator so long as they affix the appropriate copyright notice.

When it is in the best interests of the University, the Provost, after consultation with the Intellectual Properties Committee, may enter into agreements that relate to the assignment of rights and the division of royalties that differ from other provisions of this document.

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8. DISTRIBUTION OF INCOME

Where there are two or more creators, each shall share equally in the creators' share of royalties, unless all creators previously have agreed in writing to a differing percentage of the creation in accordance with Section 6 above.

With the exception of other contractual arrangements, the University shall pay semi- annually to the creator(s), or their heirs, successors, or assigns, fifty percent (50%) of the net royalties received by the University, subject to the following considerations:

1. When the University undertakes the cost of development and/or protection of an intellectual property, sixty-seven percent (67%) of the initial gross royalties received by the University shall be applied to the reimbursement of direct costs and expenses incurred by the University with respect to the intellectual property. The remaining thirty-three percent (33%) will be treated as net royalties and distributed fifty percent (50%) to the creator(s) and fifty percent (50%) to the University. After the direct costs and expenses incurred by the University for the development of the intellectual property have been reimbursed, all subsequent income from that property shall be treated as net royalties, and divided fifty percent (50%) to the creator(s) and fifty percent (50%) to the University.
2. When the University enters into an institutional agreement with an outside firm for the development of an intellectual property, the distribution of net royalties from this arrangement shall be divided fifty percent (50%) to the creator(s) and fifty percent (50%) to the University.
3. When the creator(s) initiate and develop arrangements with a third party for intellectual property development, the distribution of royalties may be negotiated among the three principals, subject to existing law and policy.

The disposition of any net royalties accruing to the University as specified in sections 8.a, 8.b, and 8.c shall be distributed one-third each to the University (in the form of unrestricted funds), the Office of the Associate Provost for Research and Graduate Affairs (to be used to develop intellectual properties), and the school(s) from which the intellectual property was derived. All funds, however, are subject to prior conditions embodied in grants, contracts or other agreements regarding their use.

The creator(s)' share of noncash value comprising net royalties income shall be paid in United States funds.

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9. DISPUTE RESOLUTION

When a dispute arises between a creator and the University involving the application of this policy, the dispute shall be presented to the Provost for informal mediation. If the mediation is not satisfactory to all parties to the dispute, the unsatisfied party may request a hearing before the Intellectual Properties Committee.

Applications for a hearing before the Committee shall be in writing and directed to its chairperson. The applicant shall serve (by mail or by hand) a copy of the application on the other party to the controversy.

Applications for a hearing must contain a statement of the specific nature of the controversy, the grounds upon which the claim is based, and a summary statement of the facts supporting the applicant's position. It also may include any other material which the applicant believes relevant to the dispute.

The other party to the dispute shall, upon receipt of the application, have fourteen (14) calendar days in which to file a response with the Committee chairperson. The response shall include a summary statement of the facts supporting the respondent's position, specific responses to points in the application, and any additional material the respondent believes is relevant.

Upon receipt of the response, the chairperson of the Committee shall see that copies are sent to each member of the Committee, and shall call a meeting of the Committee within ten (10) calendar days. The chairperson will notify by mail or by phone all parties to the dispute of the time and place of the meeting. If any special equipment is needed by either appellant or respondent in making his or her case, it shall be his or her responsibility to arrange to have such equipment, in working order, at the meeting.

The hearing will be structured generally as follows, and a tape recording will be made of the proceedings:

1. The applicant will present testimony and evidence to support his or her position in the dispute. Members of the Committee as well as the respondent may question any witness offered by the applicant.
2. The respondent will present testimony and evidence to support his or her position in the dispute. Members of the committee as well as the applicant may question any witness offered by the respondent.
3. The parties may each be accompanied at the hearing by an advisor of their choosing who may be an attorney. The parties themselves, however, must present their evidence and position statements.
4. The hearing is not a legal proceeding, but an effort to establish facts so that the Committee may resolve the dispute. Legal rules regarding evidence are, therefore, not applicable.
5. The Committee may, at its discretion, call additional witnesses if it believes their testimony will assist in its deliberations. Such witnesses may be questioned by the parties to the dispute.
6. At the conclusion of the hearing, the Committee will deliberate privately. During these deliberations, the Committee may recall the parties for additional questioning.

Within ten (10) calendar days following the conclusion of its deliberation, the chairperson of the Committee will notify the parties in writing of the Committee's decision.

The decision of the Intellectual Properties Committee shall be final, unless either party appeals in writing to the President of the University within ten (10) calendar days of receipt of the Committee's decision.

In the event of an appeal, the President shall review the record and render a decision in writing within thirty (30) calendar days. The President's decision shall be final, and there shall be no further appeal within the University.

Revised document approved by the Board of Visitors: May 20, 1988
Effective Date: May 20, 1988

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