User-Fillable PDF: Faculty/Staff Disclosure Form
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1. ADMINISTRATIVE SCOPE
This policy applies to all Professional Staff including students, faculty, staff; all other employees; and all non-employee students of Andrews University. This policy replaces previous policies governing the same subject matter. This policy may be amended at any time by the Dean of Research after consultation with the Scholarly Research Council, the Director of Innovation & Entrepreneurship after consultation with the Innovation & Entrepreneurship Council, and the Provost. The Office of Research and Creative Scholarship (“ORCS”) and the Office of Innovation & Entrepreneurship (“OI&E”) shall administer this Policy and implement rules and procedures within the framework provided to facilitate compliance with this Policy.
SUBJECT MATTER SCOPE
The Policy defines the ownership, distribution, and commercialization of Intellectual Property (IP), including copyrights, patents, trademarks, and trade secrets, developed at Andrews University (University) or by its employees or students, or received by the University. This policy also specifies the obligations associated with the technology licensing process at the University.
2. GENERAL PROVISIONS REGARDING OWNERSHIP OF INTELLECTUAL PROPERTY (IP)
2.1. Professional Staff and Non-Student Employees: Except as to certain copyrights (per Section 3. below) or as otherwise may be agreed in a writing signed by the University, ownership of IP shall be as follows:
2.1.1. IP conceived or developed with the direct or indirect support of funds administered by the University (regardless of the source of the funds) shall be the exclusive property of the University. Funds administered by the University include funds for employee compensation, scholarships, grants, facilities, materials, and equipment provided by the University.
2.1.2. IP derived from sponsored University research shall be the exclusive property of the University.
2.1.3. IP produced by employees while participating in sabbaticals or other external activities shall be the exclusive property of the University if such employees receive a salary from the University for such activities. Employees engaged in activities with outside entities must ensure that their activities and agreements with such third parties are not in conflict with this policy and that said third parties have been adequately informed of, and have assented to, this policy.
2.2. Student Employees: IP conceived or developed as a result of student employment or work for hire shall be the exclusive property of the University. Student research support through undergraduate research scholarships or graduate grants in aid of research shall not constitute employment by the University. The rights to IP conceived or developed by students in their academic capacities shall be governed by Subsection 2.3. below.
2.3. Student Academics: The University shall not claim ownership of IP conceived or developed by a student to meet course requirements.
188.8.131.52. Students who author or create copyrighted works which are submitted to meet course requirements own the copyrights in such works, even if they have been created using University facilities. Neither the course instructor nor the University may utilize or distribute student-owned copyrighted works for purposes beyond those of the course in which they are submitted without obtaining the written permission of the student. Students also own the copyrights in their theses and dissertations. Notwithstanding this policy, doctoral and master’s students must submit digital copies of their theses and dissertations in accordance with Bulletin requirements by the School of Graduate Studies.
184.108.40.206. In certain cases, a student participating in research is expected to sign, upon request, an IP waiver to maintain the IP rights of a third-party involved in a research or research & development project with the University.
220.127.116.11. In certain cases, a student participating in research is expected to sign, upon request, an IP waiver to maintain the IP rights of the University (or its designee(s)) when that IP is conceived or developed as part of the research work of a University employee.
18.104.22.168. A student may choose to relinquish his or her ownership rights in IP entirely or partially, by signing an IP waiver, in exchange for commercialization assistance services by the OI&E. In the case of a partial IP surrender, the University will obtain partial ownership of that IP under terms then to be negotiated in a writing signed by the parties.
2.4. Donated IP: Decisions to accept IP rights donated to the University shall be made by the Vice President for University Advancement, OI&E, and the President.
3. SPECIFIC PROVISIONS REGARDING COPYRIGHTS
3.1. Ownership. The University follows standard academic practice in disclaiming ownership of, and royalties proceeding from, traditional academic works (books, essays, works of art, musical compositions and recordings, and the like) created by a University Author, unless one or more “Special Circumstances” exist, such as:
3.1.1. Creation of the work involved substantial use without charge of equipment, materials, or staff services of any of the various units of the University;
3.1.2. Creation of the work was supported with money, released time, or other substantial resources from any unit of the University;
3.1.3. Creation of the work was directly commissioned by the University or one of its units, where the employee(s) who created the work did so using some part of the time for which compensation was received from any University budget, including any grant or contract budget administered by the University; or
3.1.4. Creation of the work occurs in University-approved employee outside work for pay, if in the opinion of the administrators approving such outside work for pay the work predictably competes with University functions or products that are, or reasonably might be, developed and offered by the University in the furtherance of its mission.
3.1.5. Payment of salary to an individual on sabbatical shall not be construed as support for the creation of a specific work, and hence shall not by itself constitute a Special Circumstance.
3.2. Software as Copyright. The University shall own all copyrights and other intellectual property rights in such computer software. Where a patent is filed on a software invention, the University shall have a right of ownership in all associated copyrights as supporting technology.
3.3. Third-Party Ownership. Copyrighted works created by University employees and produced under grants to the University from the federal government or other extramural funding sources, or produced under contracts between the University and third parties, shall be subject to the contract or grant with respect to copyright ownership, distribution and use, and other rights.
3.4. Commercialization. Subject to the provisions of this policy, the University may, at its sole discretion, assign, transfer, lease, or sell all or part of its legal rights in a University-owned work, or place such work in the public domain. Where academically appropriate and feasible, the University may obtain other forms of legal protection for such University-owned works in the name of the University.
3.5. Release of Copyrights. If the University decides not to commercialize a copyrighted work, then so long as the University is not otherwise bound by grant or contract, and if all living University Authors of the instructional materials so request in writing, the University may transfer and reassign its copyright interests in such instructional materials to the University Author(s) in such shares as the University Author(s) may all agree. In accordance with Subsection 8.8, the reassignment of the copyrights shall be the subject to the prior recovery of the University’s out-of-pocket expenses associated with the transfer (including expenses associated with copying, mailing and handling, duplication and copyright transfer), plus the payment of 10% royalties or equity in perpetuity.
3.6. Revenue Sharing. Where revenue is generated as a result of commercializing a University-owned copyright material, it will be shared according to Section 8. Revenue Sharing of this policy.
4. SPECIFIC PROVISIONS REGARDING INVENTIONS AND PATENTS
4.1. Disclosure Obligations. All Inventions (including software) resulting from the Inventor's University activities, responsibilities, or involving significant use of University facilities or its resources must be reported to the Institutional Officer (Director of I&E) within a period of 90 days from the moment the current state of the Invention was conceived or developed. Employees must submit to the OI&E a summary describing the Invention and identifying the names of all Inventors and persons who contributed to the making of the IP, together with a copy of any contract with a third-party relating to the Invention. The Office of Innovation & Entrepreneurship must notify the Office of Research and Creative Scholarship (ORCS) on a quarterly basis of any Inventions reported by University personnel, including the summary and names of all Inventors and any related third-party contracts. Upon review of the Invention disclosure and any third-party contract, the OI&E shall determine who are the Inventor(s), consistent with U.S. patent law.
4.2. Ownership Determination. Subject to any third-party ownership rights under grants or contracts recognized by the University, the University shall have the right to own the Invention. Within a period of 6 months after disclosure, the University will either claim the Invention for development by the University, or released such Invention to the Inventor(s) in accordance with the provisions of this policy.
4.3. Ownership Challenges. Individual utilizing the Appeals Process (see Section 9.) to challenge the University’s claims to an Invention shall not, during the pendency of the appeal, commercialize such Invention or file for a patent without obtaining prior written authorization from the Institutional Officer of the University (Director of I&E).
4.4. Patent Applications. OI&E shall be solely responsible for determining whether a patent application shall be filed on an Invention owned by the University. Filing determinations may be made on the basis of commercial potential, obligations to and rights of third parties, or for other reasons which OI&E, in its discretion, deems appropriate. Inventor(s) for which a patent applications are filed shall cooperate, without expense to the Inventor(s), in the patenting process in all ways required by the University or its designee.
4.5. Patent Administration. Patent administration shall be the shared responsibility of OI&E, Dean of ORCS, and University Counsel. The OI&E shall be responsible for the transfer of University-owned patents in consultation with the Dean of ORCS and the University President.
4.6. Software as Invention. All software inventions to be disclosed under this Section shall be treated for all purposes under this policy like other Inventions. The University shall own all patents and other intellectual property rights in such computer software.
4.7. Commercialization. Subject to the provisions of this policy, OI&E shall have the sole authority and discretion to commercialize an Invention as it deems appropriate and shall make reasonable efforts to keep Inventor(s) involved and informed of its commercialization efforts. Where an Invention is subject to an external agreement with a third party (for example, the federal government or other funding sponsor), OI&E shall make decisions consistent with such agreement.
4.8. Release of Inventions. Where the University determines that it will not file a patent application on an Invention, abandons a patent application on an Invention prior to issuance of the patent, or abandons an issued patent on an Invention, the Inventor(s) may request a release of the Invention. Upon determining that releasing the Invention to the Inventor(s) will not violate the terms of an external funding or other agreement and is in the best interest of the University, OI&E may agree to a release of the Invention and in such case will reassign all interest which it holds or has the right to hold in the Invention to the Inventor(s) in such shares as the Inventor(s)) may all agree. In accordance with Subsection 8.8, the reassignment of the Invention shall be the subject to the prior recovery of the University’s out-of-pocket expenses, plus the payment of 10% royalties or equity in perpetuity.
4.9. Revenue Sharing. Where revenue is generated as a result of commercializing an Invention, they will be shared according to Section 8. Revenue Sharing of this policy.
5. UNPATENTED MATERIALS
5.1. Ownership. The University shall own all rights in Unpatented Materials. The legal policy regarding Unpatented Materials, for the purposes of this policy, shall follow the stipulations in Section 4., except as it relates to patent applications and administration.
5.2. Commercialization. The University may make appropriate distribution in the public interest, including licensing or transferring Unpatented Materials, for research and commercial purposes.
5.3. Revenue Sharing. Individuals named as Contributor(s) shall be entitled to revenue sharing in accordance with Section 8. Revenue Sharing of this policy.
The University Administration shall:
1. Establish efficient, cost-effective mechanisms for the efficient technology transfer to maximize the value of its IP to employees and the University.
2. Give oversight of IP management and transfer in accordance with University policies.
3. Provide legal counsel and support to promote the licensing, marketing, and commercializing of IP.
4. Protect the IP of the University.
5. Provide an appeal process to resolve disputes arising under this policy.
7. REVENUE SHARING
7.1. Net Revenue. Subject to any third-party contracts, University employees who create IP are entitled to benefit from Net Revenue generated from the licensing or sale of IP. Net Revenue (as defined in Subsection 10.8.) from the licensing or sale of IP is shared with employees to encourage development of IP. However, notwithstanding any provision herein to the contrary, prior to any revenue sharing the University shall be reimbursed for any and all costs, fees, and expenses it incurred (including attorneys’ fees) relating to or arising from the IP, including the maintenance, protection, prosecution, registration, licensing, or transfer of such IP.
7.2. The University employs a single uniform structure for distribution of Net Revenue to Inventor(s), Author(s) and Contributor(s) (for the purposes of this Section 8, collectively, “Creator(s)”). The University will distribute Net Revenue received by the University from the licensing (including royalties, option fees, and license fees) and sale of its IP, and/or from the receipts from the sale of the University’s equity interest in IP, or other distribution of its IP or technology covered by this policy, as and to the extent provided in this policy.
7.3. The Net Revenue Distribution from IP is as follows:
7.4. The OI&E shall calculate the Creator(s)’ share of revenue with the parameters outlined in this policy and shall set and administer rules for cases where Creator(s) switch departments/schools, colleges, or other extraneous circumstances. The departments/schools and colleges who will receive royalties shall be those at which the Creator(s) were employed at the time the IP was created and developed.
7.5. Upon request, the ORCS will work with any faculty member to provide a portion of their royalties as non-taxable research expense reimbursement rather than taxable cash. This shall be done by transferring the allocated funds to a research grant account to be used for expense reimbursement at the faculty member’s discretion. This shall be only at the discretion of the researcher rather than as a fixed percentage dictated by the University.
7.6. Institutional funds derived from IP shall be used to promote research, educational purposes, or invested to improve commercialization activities.
7.7. The Dean of ORCS, in collaboration with the OI&E, the Office of the Provost, and the Creator(s), shall have the authority to resolve unusual circumstances.
7.8. The University may, at its discretion, reassign its license or rights to IP to a Creator(s) where commercialization routes are not effective or as otherwise desired. Where the rights have been granted back to Creator(s), the University shall not be required to market, protect or license the IP. Any and all reassignments of University IP shall include and be subject to the prior recovery of the University’s out-of-pocket expenses (as described in Subsection 8.1.), plus payment of 10% royalties or equity in perpetuity.
7.9. The University’s name shall not be used for written or broadcast promotional purposes of any material without the written approval of the President prior to use.
The formal appeal process to challenge the determination of IP rights under this policy shall be as follows:
8.1. A written request for review shall be addressed to the Director of OI&E.
8.2. If unresolved, such a person may send an appeal in writing to the Dean of ORCS, who shall seek to resolve the matter after consultation with the Director of OI&E, Office of the Provost, University Counsel and external patent counsel.
9.1. Contributors – those individuals who are determined by the head of the laboratory or the principal investigator of a research program, as applicable, to have made a contribution to the development of the Unpatented Materials
9.2. Copyright – is a form of protection provided by the laws of the United States (title 17, U.S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works. Section 106 of the 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:
9.2.1. To reproduce the work in copies or;
9.2.2. To prepare derivative works based upon the work;
9.2.3. To distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
9.2.4. To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;
9.2.5. To display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and
9.2.6. In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.
In addition, certain authors of works of visual art have the rights of attribution and integrity as described in section 106A of the 1976 Copyright Act.” (Circular 1: Copyright Basics, issues by the United States Copyright Office in the Library of Congress).
9.3. Employee – a person who receives a salary or other consideration from the University for the full-time or part-time performance of services. A student compensated through wages or a stipend, including graduate student research, is considered an employee.
9.4. Gross Revenues – all income received by the University under a License Agreement (including royalties, option fees, license fees, etc.) and/or receipts from the sale of the University’s equity interest in IP.
9.5. Intellectual Property – any new useful process, know-how, machine, composition of matter, life form, article of manufacture, software, copyrighted work, or tangible property. That includes improved devices, circuits, chemical compounds, drugs, genetically engineered biological organisms, data sets, software, musical processes, or unique and innovative uses of existing Inventions (John Hopkins, 2001).
9.6. Invention – any patentable or potentially patentable idea, discovery or know-how and any associated or supporting technology that is required for development or application of the idea, discovery or know-how (Harvard University, 2019).
9.7. Inventor – any employee who makes an inventive contribution to the Intellectual Property as defined by under U.S. patent laws, meaning that an Inventor must have contributed to the conception of ideas claimed in a patent (University of Michigan, 2015).
9.8. Net Revenues – Gross revenues less any and all unreimbursed costs, fees, and expenses relating to the maintenance, protection, prosecution, registration, licensing, or transfer of IP.
9.9. Professional Staff – students, faculty, and staff who are responsible for exercising discretion, analytical skill, personal accountability and responsibility in a wide range of areas including academic, administrative, managerial and student services functions.
9.10. Unpatented Materials (including biological materials) – cell lines, organisms, proteins, plasmids, DNA/RNA, chemical compounds, transgenic animals and other materials useful for research or for commercial purposes for which patent applications are not filed or, if filed, do not issue, where such materials are developed by persons covered by this policy:
9.10.1. Under or subject to agreement between the University and a third party; or
9.10.2. With use of direct or indirect financial support from the University, including support or funding from any outside source awarded to or administered by the University; or
9.10.3. With use of space, facilities, materials or other resources provided by or through the University.
9.11. University Author – anyone who, in the scope of his/her employment at the University, authors or creates, either alone or in collaboration with others, a University-owned work.