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1. PURPOSE
The purpose of this policy is to clarify issues related to the ownership, use, and sale of intellectual property Intellectual Property created by university personnel.University personnel and the rights and privileges of those involved.
Eastern Mennonite University (“EMU” or “University”) wishes to foster an intellectual environment that encourages creativity, innovation, and excellence while managing its resources for the benefit of all constituents. In this policy the university University seeks to foster these goals and honor traditions in the academic setting while recognizing federal laws.
Definitions
Intellectual property refers to any copyrightable or patentable work.
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2. DEFINITIONS
Copyrightable Work
Copyrightable Work includes original works of authorship fixed in a tangible format including syllabi and other course materials, books and other literary works, articles, dramatic works, musical compositions, sound recordings, choreographic works, visual artworks, photographs, motion pictures, multimedia products, software, internet sites or other material that qualifies for protection under United States copyright law.
Creator
Creator means an Inventor in the context of patentable inventions, or an Author in the context of copyrightable works of authorship.
Employee
Employee means a full-and part-time faculty; classified employees, administrative staff; and students who are paid for specific work by the University. Students may be Employees for some purposes and not for others. If they are paid as student assistants, for example, or given grants to do specific research, they will be Employees. Students receiving general scholarship or stipend funds would not normally be considered Employees.
Intellectual Property
Intellectual Property refers to any copyrightable or patentable work.
Patentable Work
Patentable workWork is any new and useful discovery, process, machine, device, manufactured product, composition of matter, or other invention that qualifies for protection under United States patent law, including for utility, design and plant patent protection.
Scholarly and
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Artistic Works
Scholarly and Artistic Works are works reflecting research and/or creativity that within a university the University are considered as evidence of professional advancement or or accomplishment. Examples include publications, dramatic works, musical compositions, sound recordings, choreographic works, visual artworks, photographs, motion pictures, multimedia products, and the products of science.
Student Course Work
Copyrightable or patentable creations made during the course of activities leading to academic credit.
Substantial Use of University Resources
Substantial Use of University Resources refers to extensive use of resources beyond what is ordinarily made available to Employees. What constitutes “Substantial Use” of University resources must be answered on the basis of the facts and circumstances of each situation. The University will not ordinarily construe the provision of office or laboratory space, access to the library, use of the University’s information technology infrastructure, or the payment of Employees’ salary as Substantial Use of University Resources. Any departments or offices that support the Employee’s activities must be construed in any determination of Substantial Use. As a general guideline, the use of University resources (other than the library, the Employee’s office or laboratory, and salary) will be considered substantial if the value of those other resources exceeds $10,000.00, including expenses such as computer charges, graduate assistant or other related salaries and wages, laboratory equipment and materials, and secretarial salary.
University Resources
University Resources refers to University funds, facilities, equipment and personnel.
Works for
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Hire
Works for Hire refer to works prepared by an employee Employee within the scope of employment. (Note that the The law recognizes that ownership of the copyright for works Works for hire Hire rests with the institutionUniversity. Materials created by faculty for their courses, however, have been considered an exception since the administration provides very little control and direction for their development.)
University resources refers to university funds, facilities, equipment and personnel.
Substantial use of university resources refers to extensive use of resources beyond what is ordinarily made available to employees. For example, for faculty “substantial use” would be reduction in teaching load or funding that goes beyond the customary release time, grants and sabbaticals awarded within current policy. A specific example would be a year of release time to write a history of a prominent leader or agency of the Mennonite Church. Other examples include extraordinary use of special equipment, facilities, supplies or time of university employees.
Policy Statement
EMU policy seeks to encourage faculty creativity while conserving the resources of the university. Thus, in spite of the “work for hire” principle, intellectual property of a scholarly or artistic nature shall be the sole and exclusive property of the creator unless a specific contract with alternative provisions has been negotiated prior to the creation of the property. The latter is desirable when the production of intellectual property involves “substantial use” of university resources. In this case the provost on behalf of the administration is responsible to initiate the negotiation.
In cases where employees (with or without the participation of students) create intellectual property (such as a video or internet site) for an agency outside the institution and make “substantial use” of university resources, prior negotiation to determine ownership shall be carried out by the provost on behalf of the university. (In general the agency will control the distribution of property, while copyright ownership will remain with the creators.)
In the case where EMU commissions a piece of work with a person within or outside of the university, ownership is determined by a written contract prepared prior to the start of the project.
Policy with respect to pedagogical materials seeks to balance the needs of all faculty and the administration. Materials created for pedagogical purposes, such as syllabi and tests, are considered to be owned by the person who authored them. However, the institution and its personnel are permitted to use or modify such materials for internal educational and administrative purposes, including reporting to accreditation agencies. Excluded from the understandings in this paragraph are works published by an established publishing house and sold to students through a vendor. In addition, in selected cases (for instance, ones that involve substantial use of university resources) the university may negotiate a different understanding than recorded here; such an understanding must be negotiated prior to the creation of the property and should be initiated by the administration.
Works for hire that would not customarily be considered of an artistic or scholarly nature, nor created for pedagogical purposes, shall be considered jointly owned by the creator and the university.
Intellectual property created by a university employee outside of work time, outside the scope of the employee’s job responsibilities, and without the use of university resources is the sole property of the creator even though the work is similar to the employee’s job duties.
Policy with respect to students attempts to balance student and institutional needs. Intellectual property created by students is considered the property of the student. The university, however, reserves the right to use such material, with appropriate discretion and attribution, in promotion of the university. Intellectual property created by students and employees jointly is considered to be jointly owned by the creators. (The employee shall have decision-making powers in regard to permissions and sales of jointly created property.)
Funds received from the sale of intellectual property shall be allocated by proportion of ownership and expended as determined solely and independently by the owner(s).
Questions or disputes regarding the interpretation of this policy shall be mediated by a mutually agreed upon third party.
Responsible Party
Responsibility for this policy lies with the provost.
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For the purpose of this policy, it shall be deemed that an invention is a Work for Hire if the Employee is employed, directed or assigned to:
- Invent, improve, develop or perfect any art, machine, design, manufacture, or composition of matter,
- Conduct or perform research, development work, or both,
- Supervise, direct, coordinate, or review University financed or conducted research or development work, or both, or
- Act in a liaison capacity with agencies or individuals engaged in such research or development.
This assignment, however, does not preclude the sharing of royalties or other payments with the employee in accordance with this policy
3. APPLICABILITY
This policy applies to all Employees, students, visiting faculty and researchers, and Employees and visitors covered by sponsored program agreements or other contractual arrangements.
4. POLICY STATEMENT
A. Patentable Discoveries and Inventions
University Ownership: Patentable materials developed by University Employees shall usually be the property of the University. A discovery or invention developed by an Employee that is a Work for Hire, or that is developed or created with Substantial Use of University Resources, or that is related to any University research program involving the Employee within the past twelve (12) months, is the property of the University. Under this policy, the rights to all patentable discoveries and inventions are retained by the University unless that right is preempted by an external project sponsor. Different sponsors have different policies with respect to inventions resulting from work done under sponsored projects. In general, the University is unwilling to give up its patent rights unless the full cost of the research is supported by the sponsor. Should royalty income be generated from the application of technology, the University will share in that income according to the formula found in section 8.c.
Sponsored Research and Outside Ownership: Depending on the terms of the grant or contract,
Sponsors of research projects may be entitled to ownership of a discovery or invention made by an Employee of the University without payment of any royalty. This ownership may occur when the sponsor provides funds for the entire project and in research involving the testing of a product or products developed by the sponsor. Agreements on patent matters may be negotiated where it is necessary to do so as a prerequisite to University participation in the project or receipt of a grant or contract The principal investigator on a project should be familiar with the patent policies of both the University and the sponsor. The Provost should be consulted prior to submitting a proposal that may result in patentable discovery or technology. The Provost is authorized to ratify such agreements on patent matters where it is necessary to do so as a prerequisite to university participation in the project or receipt of a grant or contract.
Employee Ownership - A discovery or invention developed by an Employee shall be the exclusive property of the inventor(s), only if: (a) the discovery or invention is not a Work for Hire; (b) the discovery or invention does not involved Substantial Use of University Resources, and (c) the discovery or invention is not along lines related to any University research program then in progress or completed within the past twelve (12) months with which the inventor may have a connection.
B. Copyrightable Works
University Ownership - The 1976 Copyright Act (P.L. 94-553) provides that, when a copyrightable work is produced by one person who has been employed by another for that purpose, it is the employer and not the actual producer that is the copyright proprietor. At EMU, traditionally faculty members have been granted the copyrights in their works by the institution.
Sponsored Research and Outside Ownership - Funds and facilities provided by governmental,
commercial, industrial, or other private organizations, which however are administered and
controlled by the University, shall be considered to be funds and facilities provided by or through the University for the purpose of this policy statement. Agreement between the University and the sponsor pertaining to share of royalties and title to copyrightable materials shall be addressed in the contract between the University and the sponsor. University Employees who contract with third parties for the development of copyrightable materials can relinquish no greater interest in the materials than they legally possess. Therefore, if substantial University Resources are employed in the development of material subject to copyright, the University retains interests in the materials, regardless of the terms of a contract between the third party and the University Employee, unless the University specifically waives its rights.
Sponsored Research and Outside Ownership - Funds and facilities provided by governmental,
commercial, industrial, or other private organizations, which however are administered and
controlled by the University, shall be considered to be funds and facilities provided by or through the University for the purpose of this policy statement. Agreement between the University and the sponsor pertaining to share of royalties and title to copyrightable materials shall be addressed in the contract between the University and the sponsor. University Employees who contract with third parties for the development of copyrightable materials can relinquish no greater interest in the materials than they legally possess. Therefore, if substantial University Resources are employed in the development of material subject to copyright, the University retains interests in the materials, regardless of the terms of a contract between the third party and the University employee, unless the University specifically waives its rights.
Employee Ownership - Copyrightable materials developed by University Employees shall usually be the property of the Employee. The University will exercise ownership under the Work for Hire rationale only when the Employee was assigned to create the specific product whose ownership is in question. A faculty member's general obligation to produce scholarly works (for example, textbooks and related instructional materials) does not constitute an assigned duty for purposes of determining copyright ownership. If a copyrighted work, produced as an assigned duty of an Employee, is marketed, the Employee ordinarily will not share in any royalties from sales of the work. Online course components created for distance or distributed learning activities, including lecture recordings, are an exception to this provision under the section below.
Student Ownership - Ownership of copyrightable material developed by students who are also
Employees of the university will be determined by the rules that apply to all University Employees. In general, copyrightable works developed in connection with course work assignments belong to the student. However, in all cases of Work for Hire or Substantial Use of University Resources in the development of the copyrightable material, the university may exercise its right to ownership or position of equity.
C. Specific Applications
i. Audio and Video Recordings - When a faculty member has been assigned to teach a specific class , and that class is transmitted electronically to another site, on or off campus, and in the performance of those duties a recording is made simultaneously with such transmission, the resulting fixed work shall be considered University property. The retention and/or marketing of recordings for subsequent instructional use, on or off campus, will be undertaken only with the consent of the faculty member.
ii. Performance Recording – This special case of audio and video recordings covers the live performing arts as well as those arts and events that otherwise use performance (such as film and video), excluding documentation of lectures (as above in (i)). For performance recordings the following policy measure apply without administrative review:
- The University reserves the right to use the recordings made by the University of performances by its employees and students for archival, educational, and commercial purposes, as described below. Copyright in the recording itself, but not in the performance, is assigned to EMU. Recordings of musical and dramatic performances of University Employees and students made in any format can be duplicated for preservation in the same or any other appropriate analog or digital format to maintain an archival record at the University;
- The University can use such recordings, in whole or in part, for educational purposes, including activities in criticism, comment, news reporting, teaching, scholarship, research, library services and institutional promotion in any appropriate format;
- When the University uses such recordings, in whole or in part, for commercial or
profit-making purposes, it will normally obtain the permission of the performers for such endeavors before the recording is made. If no permission is obtained in advance, the University will make reasonable good faith efforts to obtain such permission from the performers when the decision to offer the recording for sale is made. If the University is unable to secure permission from the performers for such an endeavor, the University will make available to each performer
a pro rata portion of any net profits realized from the commercialization of the recording. The University will determine the amount of the share of profits for each performer; and - The University office that makes and archives the recording may provide each EMU performer involved in it with one personal copy, under a reimbursement arrangement determined by the university to provide reimbursement up to the cost for the duplication.
iii. Distance Learning Materials - Distance learning materials and courseware created by faculty without the Substantial Use of University Resources remain the property of the faculty member. If the development of distance learning materials or courseware has required Substantial Use of University Resources, the University will own the copyright, but the faculty member and the University will both retain a non-exclusive license to use these materials in educational settings, even if the faculty member leaves the University. Should there be any commercial potential for the materials or courseware developed with substantial use of University Resources, the faculty member and the University shall share in any revenues per the royalty distribution matrix described in section 8.c.
5. RESPONSIBLE PARTY
Responsibility for this policy lies with the Provost.
6. REQUIRED DISCLOSURE
All discoveries, inventions and copyrightable materials for which a University Employee is responsible and which may involve an interest by the University must be reported to the Provost as promptly as possible, but always prior to the start of any commercial exploitation, using the Intellectual Property Disclosure Notification form appended to this policy. The purpose of this disclosure is to determine whether, and to what extent, the University has a proprietary interest in the discovery, invention or material. This report shall include a full and complete disclosure of the discovery, invention or material concerned and identity of all persons participating in the development.
Each discovery, invention or copyrightable material should be disclosed regardless of whether or not the Creator plans to exploit the discovery, invention or copyrightable material for financial gain.
7. SANCTIONS
Failure to make a required disclosure may result in a forfeiture by the Creator of any proceeds or profits that the University would otherwise be obligated to pay pursuant to this policy. Failure to disclose is considered professional misconduct and a violation of University disciplinary policy and may subject the Creator to sanctions up to expulsion for students.
Sanctions will be commensurate with the severity and/or frequency of the offense and may include termination of employment.
8. PROCEDURES
A. Disclosure
The Provost will receive all disclosures forms. The Provost will promptly review and evaluate possible proprietary interest on the part of the University. Confidentiality will be maintained on all disclosures to the extent possible by all parties. However, notice of filing will be sent by the Provost to the academic unit head or department head, dean, and appropriate vice president.
B. Evaluation
The disclosure should be reviewed by the University before information about the discovery,
invention or copyrightable material is made available to any other party. The Provost shall complete and report his evaluation to the Creator within ninety (90) days from the date of receipt of the disclosure, unless it is mutually agreed by the Provost and the Creator that additional time is needed and an alternative deadline is established. The Creator shall have the right to make recommendations pertaining to such determinations.
The Provost will determine that the University has a proprietary interest in discoveries, inventions and copyrightable materials resulting from Work Made for Hire or Substantial Use of University Resources.
When the University does not claim an interest in an Intellectual Property about which it is notified the Provost will so advise the creator in writing.
If the evaluation report indicates that the University has a proprietary interest, the Provost will recommend handling that interest by either royalty or licensing arrangements with the Creator of the Intellectual Property.
The University may decide to commercialize an Intellectual Property on a case-by-case basis.
C. Royalty and Licensing Arrangements
The Provost will negotiate any license or royalty arrangements concerning property in which the University claims a proprietary interest. The contract for such license or royalty arrangement must conform to the University's contract approval process. The Finance Officer will administer all licensing and royalty arrangements associated with the Intellectual Property under such licenses or royalty arrangements.
If the University pursues commercial exploitation of an Intellectual Property created by a member of the EMU community in which it has a proprietary interest, the following royalty distribution matrix applies. The amounts listed are based on net revenues.
Of the first $25,000
60% to the Creator
40% to the University
Above $25,001
50% to the Creator
50% to the University
Joint Creators must agree at the time of their notification on the percentage that each will share in any royalties. In the absence of such agreement, the share of royalties will be divided equally between the joint Creators.
If the University decides not to pursue commercialization, it retains the right to license Intellectual Property to the Creator in return for an equitable royalty to be determined by the Provost. The University retains a non-exclusive license to use the Intellectual Property for its own educational and administrative purposes.
9. DISPUTE RESOLUTION
Should any issues develop as to the ownership of the Intellectual Property involved in an evaluation, the Provost shall document the dispute and notify the Office of the President. The parties involved shall be entitled to appear before the Provost and to present evidence with respect to the disputed ownership. The Provost’s determination shall be made in writing and shall contain a statement of the basis for his decision and recommendation. The President of the University, on his/her own motion or at the request of any interested party, may review any determination of the Provost. The President may affirm, modify, or reject any determination of the Provost. The decision of the President is final.
10. POLICY REVIEW
This policy is to be reviewed every five years.
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11. DISTRIBUTION
This policy is distributed via the Faculty/Staff Handbook.
Approved by University Forum, December 14, 2001
Approved by President’s Cabinet, December 17, 2001
Approved by Board of Trustees, March 23, 2002
Reaffirmed by President’s Cabinet, January 12, 2005 and January 10, 2007 with slight revision in 2007
Revised and approved by Faculty Assembly, April 14, 2008, Approved by President’s Cabinet, May 7, 2008
Revised and approved by Provost’s Council, April 30, 2020