University of Oklahoma
THE BOARD OF REGENTS OF THE UNIVERSITY OF OKLAHOMA
INTELLECTUAL PROPERTY POLICY
The people of the State of Oklahoma may reasonably expect that their investments in the University of Oklahoma will create new industry and enhance existing industry within the State and Nation. Such new industry creates greater employment opportunities for citizens of the State and the Nation and an improvement in their standard of living.
The creation and development of intellectual property at the University encourages new business and is key to creating strong University and industry partnerships. It is the responsibility of University employees to disclose intellectual property and to foster an entrepreneurial attitude within the work force by involving students in the creation of intellectual property. Intellectual property development shall be pursued in concert with, but subject to, the Universityís principle responsibilities of education and knowledge creation.
Therefore, it is in the best interest of the University to adopt a policy that encourages disclosure of discoveries and inventions and rewards such creative activity. To do so, the University policy must insure inventors a share in any financial success enjoyed by the University through the creation and commercialization of intellectual property. The basic objectives of the Universityís policy concerning discoveries and inventions include the following:
1.1 All discoveries and inventions, whether patentable or unpatentable, and including any and all patents (domestic and foreign) based thereon and applications for such patents, which are made or conceived by any member of the faculty, staff, or student body of The University of Oklahoma, either in the course and/or scope of employment for The University of Oklahoma or substantially through the use of facilities or funds provided by or through the University shall be owned by and be the property of the Board of Regents of the University of Oklahoma except as described below.
1.2 The University Vice President for Technology Development may in collaboration with the appropriate originating campus Officers, negotiate ownership of discoveries/inventions with research sponsors when it is in the best interest of the University to do so. Otherwise, all rights are as described below.
1.3 Faculty having rights to discoveries/inventions prior to employment at the University of Oklahoma should notify the Office of Technology Development of such intellectual property so that ownership to any further development of that same intellectual property at the University of Oklahoma may be established, by written agreement, with the University Vice President for Technology Development. The Vice President for Technology Development shall consult with the Provost of the Health Sciences Center or his designee before entering a contract with faculty at the Heath Sciences Center.
1.4 In the event faculty or staff make discoveries or inventions outside the course of and/or scope of employment and using no University facilities, equipment, or supplies, or if using such reimburses the University for this use in accordance with a prior written agreement with the University and in accordance with University policy, title to such discoveries or inventions shall remain in the inventor, provided the University Vice President for Technology Development determines that the discovery or invention was made under these conditions. The inventor shall nonetheless submit a disclosure form to the Office of Technology Development. This disclosure shall contain sufficient information to enable the University Vice President for Technology Development to make a determination. If confidential information is required, the University will sign a nondisclosure agreement for purposes of this review. Should the University Vice President for Technology Development determine that the University does have a proprietary interest, a more complete disclosure may be required before making a decision in regard to title, the University Vice President for Technology Development shall consult with the Provost of the Health Sciences Center when the faculty member is based at the Health Sciences Center. If it is determined that the University has an interest, the provisions of this policy shall then be applicable. Appeals of such determinations may be made to the Faculty Appeals Board and then to the President.
1.5 All rights in and to discoveries and inventions described in Paragraph 1.1 shall be disclosed to and assigned to the Board of Regents of the University of Oklahoma as a specific condition of employment with the University and admission to and/or attendance at the University. Faculty, staff and students shall execute any and all documents the University deems reasonably necessary to evidence such ownership, meet its legal obligations and effect patent protection, domestic and foreign, for the University or its nominee. All costs involved in obtaining and maintaining patent protection shall be borne by the University or its nominee.
1.6 The University agrees to act in good faith with respect to the determination of ownership.
2.1 The gross revenues (which shall include but not be limited to, cash and equity) received by the University from the licensing, sale, or commercialization of a University discovery or invention as described in section 1, will be distributed among the discoverer(s)/inventor(s), his/her/their primary department(s) and the University, in accordance with the following formula:
35% of gross revenues to the discoverer(s)/inventor(s) (as submitted on the Invention Disclosure Form);
The remaining 65% to be used to reimburse the University for out-of-pocket expenses that it has or shall incur in connection with, but not limited to, patent filing, prosecution, maintenance, and defense;
After expenses have been recouped, the remaining 65% will be distributed as follows:
20% to originating college(s), half of which to go to the originating department
5% to Presidentís discretionary fund
5% to the campus Vice President for Research
15% to OTD to apply to operational expenses with a pro rata share to go to the originating campus (at least 80%) Office of Technology Development
20% to the Growth Fund maintained for each originating campus
Stock certificates issued to the University shall be held by the Controllers Office of the Norman Campus.
The right to receive such royalty revenue shall be extended to the inventor(s) in the event that the inventor is no longer an employee or student of the University. Such right shall also accrue to the estate of the inventor(s). Inventor(s) and/or their successors or assigns shall have the responsibility to provide the Office of Technology Development of the respective campuses with all the necessary information to make payments to the appropriate parties, including without limitation, current addresses; provided, failure to keep the University so informed shall permit the University to hold all such revenue for such parties for a reasonable time or until the lawful beneficiaries make claim thereto.
The University Vice President for Technology Development shall establish and maintain a "Growth Fund" for each originating campus to be used to stimulate general faculty intellectual property disclosures as well as technology development and transfer. The fund will be used to further stimulate researchers on each campus to make proposals when there is a need for additional funding to provide prototypes, additional research results, and/or "gap" funding to keep a program in place during transition. Those accessing the Fund will be expected to repay the fund at a target rate of two times the amount awarded from the fund. This fund will be administered under guidelines consistent with the research and scholarly missions of the University in consultation with the University Patent Committee. The Health Sciences Center Senior Vice President and Provost will confer with the University Vice President for Technology Development prior to the Provostís allocation of funds. If the University Vice President for Technology Development does not approve of the proposed allocation, the proposed allocation will be submitted to the President for final approval or disapproval.
2.2 When there are two or more discoverers/inventors, each shall share equally in the inventorís share unless all discoverers/inventors agree in writing to a different distribution of such share. Such originally-signed agreement shall be filed with the Office of Technology Development of the respective campuses of the discoverer(s)/inventor(s). No distribution of cash revenues will be made until this issue is resolved by the discoverer(s)/inventor(s) or their successors in interest.
2.3 The discoverer(s)/inventor(s) and his or her college shall be paid their share of the cash revenues upon receipt of the University and will be furnished with a statement of revenue derived from the commercialization of the invention at the time of payment. In the event of any litigation, actual or imminent, regarding patent rights, the University may withhold distribution until resolution of the particular matter.
2.4 The University does not act as a fiduciary for any person relating to consideration received under the terms of this policy.
3.1 The President of the University, after consultation with the University Vice President for Technology Development and appropriate campus officials, shall determine the disposition of University discoveries and inventions described in paragraph 1.1 as deemed prudent and consistent with the Universityís mission to ultimately convey the benefits of its research to the public for the general welfare of the State and Nation. In determining the proper disposition of University discoveries and inventions, the University President shall consult as necessary with scientific and/or technical and/or business subject matter experts in fields appropriate to the discovery or invention under consideration. Among other choices, the University President may:
(A) License the discovery and/or invention to third parties to provide for the further development and/or commercialization of the property;
(B) Transfer the discovery and/or invention for commercialization by entering into commission agreements with third parties to identify potential licensees to further develop and commercialize the property;
(C) Transfer rights to the property to a patent service organization to further develop and commercialize the property;
(D) Allow rights (U. S. and foreign) to the discovery or invention to revert back to the Federal agency that funded the development of the discovery;
(E) Transfer rights (U. S. and foreign) to the discoverer(s)/inventor(s) if requested by the discoverer(s)/inventor(s), and the University President determines that the discovery/invention will not be pursued further by the Office of Technology Development.
(1) If Federal funds where used in the development of the discovery/invention, such transfer of rights are subject to a reversionary right in the Federal government as described in 37CFR401.
(2) Such transfer also shall be subject to an irrevocable, non-exclusive, royalty-free, and world-wide right and license in the University to make, use and/or practice the discovery or invention for University education, research and/or service purposes. The University also reserves the right to publish and or present information and data obtained in the research project resulting in the discovery or invention being transferred, assuming such rights do not jeopardize the discovererís/inventorís patent rights. Faculty, staff and students shall execute any and all documents, as the University deems reasonably necessary to confirm or enforce such reserved right and license.
(3) Such transfer shall be limited to the discovery or invention duly disclosed to the University, in writing, as of the time the transfer is requested by the discoverer/inventor;
(F) Transfer rights to the discovery and/or invention to the person(s) or entity sponsoring the research in the course of which the discovery or invention was made if such action is required under the terms of the research agreement or is required by law; or
(G) Transfer the discovery and/or invention into the public domain through publication of the invention by the discoverer/inventor.
3.2 All transfers of University discoveries or inventions shall be subject to and contingent upon any rights in third parties as may be governed and/or required by, among other things, sponsored research agreements, other third-party contracts, or law.
3.3 The University Vice President for Technology Development shall be responsible for administering the patent affairs of the University in a manner consistent with this Policy. The University Vice President for Technology Development shall cooperate with the appropriate campus officers to establish written policies to be approved by the President and distributed to the faculty, staff and students of the University, governing procedures to be followed in processing discoveries and inventions generated within the University. The Office of Technology Development shall provide information regarding disposition of specific discoveries/inventions to the inventor(s) no later than six (6) months from the date the discovery/invention is marketed by the Office. If the Office of Technology Development is not going to pursue marketing and/or protecting the invention, rights in and to the discovery/invention shall revert to the inventor(s) upon his/her request.
3.4 When it is in the best interest of the University to get its technology into the marketplace, when the longer term opportunity for returns to the University and the State exceed the short term value of not taking equity, then the University President will approve taking equity. As a matter of principle some equity is desirable in all transactions to create the best opportunity for the University and the State of Oklahoma to get a fair return on the technologies transferred from the University to the marketplace.
4.1 It is the responsibility of faculty, staff or students of the University of Oklahoma to report all inventions they may develop during their term of employment or registration as a student.
4.2 Any discovery/invention, whether or not patentable, must be reported to the University by filing an Invention Disclosure Form with the appropriate technology development office. Such Invention Disclosure shall provide sufficient information so that the Office of Technology Development, in conjunction with others, can determine its commercial potential and patentability. Although the maintenance of the laboratory notebooks that describe the discovery/invention is the responsibility of the discoverer/inventor, the Office of Technology Development may require access to such notebooks at any time throughout the prosecution and maintenance stage of patenting the discovery/invention.
The terms of this Patent Policy are a part of any contractual relationship of the University of Oklahoma with any member of the faculty, staff or student body. This Policy, as amended from time to time, shall be deemed to be part of the conditions of employment of every University employee or a part of the conditions of enrollment and attendance of every student at the University. Any licensing revenues received throughout the duration of such license shall be distributed in accordance with the distribution policy in effect at the time of the signing of such license and can only be changed through mutual agreement of the parties receiving portions of such revenue.
6. UNIVERSITY PATENT COMMITTEE
The University shall have a Patent Committee (for each Campus) that shall consider and investigate disputes among administrators, faculty, or staff and shall recommend appropriate solutions to the President. It shall be convened as needed, but not less than three times per academic year. This committee will consist of one student member appointed by the Graduate Student Senate for one year, two staff members, one appointed by the President and one appointed by the Staff Senate, and five faculty members, three appointed by Faculty Senate and one each by the President and The Vice President for Technology Development. All staff and faculty appointments are for three-year terms. This Committee will assist the University Vice President for Technology Development in setting policy and procedures that will be implemented on a daily basis by the Office of Technology Development staff. The Committee will provide a forum for faculty, staff, and students to present any issues such as, but not limited to, revenue sharing, ownership, etc. The Committee will make recommendations to the University Vice President for Technology Development for the handling of these issues. The Director of the respective campusí Office of Technology Development, the respective campusí Vice Presidents for Research, and University Counsel shall serve as ex-officio members of the Committee.
7. USE OF FACILITIES
As outlined in the Oklahoma Technology Transfer Act of 1998, use of the facilities of the University by a business enterprise or private business entity is allowed when that project involves the research or development of a University technology, whether or not the technology is protected pursuant to federal or state law governing intellectual property, the results of which have potential economic and academic value for the University. Such use of University facilities must be on a "space-available" arrangement in which normal University activities are not displaced. The use of such facilities by a business enterprise or private business will be done on a fee-for-service contract and in conjunction with projects where the University has a vested interest in the outcome of the transfer of University technology, through research and development of a discovery/invention for commercialization purposes, scholarlyrewards, or furthers the Universityís educational, research, or public service missions.
The University may take an equity stake in such business enterprises or private businesses in consideration for the use of such facilities and/or the development of University discoveries/inventions which shall be managed in accordance with the Universityís policies on stock acquisition and management. Any cash revenues received from the sale or trade of such equity stocks shall be distributed as if received as royalty income. If the equity interest is acquired through an exchange of value other than money and the exchange of value is made in connection with the development of technology by the private business enterprise through the use of the facilities or resources or both of an institution within The Oklahoma State System of Higher Education, acquisition of an equity interest shall be permissible through the use of the facilities, premises or assets of an institution within The Oklahoma State System of Higher Education through the use of faculty expertise or student expertise, including the value of time expended by faculty or students upon developing a technology in connection with a private business enterprise or private business entity. No state appropriated monies shall be used or obligated to acquire an ownership interest in a private business enterprise except as authorized by the provisions of this section.
8.1 A patent is a grant issued by the U. S. Patent and Trademark Office (PTO) that provides the assignee of the patent the right to keep others from practicing or using its patented invention. Patents are issued for inventions that are novel (not published, sold, or utilized for more than one year), useful, and non-obvious to others equally skilled in the art. (In almost all foreign countries, to be patentable, an invention requires complete novelty. In others words, it cannot have been published, used, sold, or bartered publicly prior to the filing of a patent application either in the country itself or in the United States PTO.)
8.2 U. S. Patent Law has maintained the first-to-invent rule. What this means is that the first person to conceive and reduce to practice the invention shall be entitled to the patent. Foreign countries rely on the first-to-file concept in issuing patent rights. In the case of U. S. law, the laboratory notebooks of the discoverer(s)/inventor(s) may be crucial to the overall outcome of to whom the patent is issued. Laboratory notebooks should be bound notebooks where corrections are readily identifiable. The pages of the notebooks should be signed, dated, and witnessed on a daily basis and stored in a secure location. The term of patent applications filed in recent years is twenty years from the date of application. The laboratory notebooks should be maintained at least for that period of time.
A trademark identifies an item of intellectual property or an educational or training service. The University owns all right and title to any trademarks related to any item of intellectual property owned by the University. Any cash revenues received in exchange for the commercial use or sale of such trademark shall be distributed as those cash revenues received for discoveries/inventions.
Copyrights are created by the Constitution and the laws of the United States to promote the progress of science and the useful arts by securing for limited times to authors the exclusive rights to their works and writings. The basic objectives of the Universityís policy concerning copyright include the following:
(A) To maintain the Universityís academic policy of encouraging research and scholarship as such without regard to potential gain from royalties or other income.
(B) To make copyrightable materials created pursuant to University objectives available in the public interest under conditions that will promote their effective utilization.
(C) To provide adequate incentive and recognition to faculty and staff through proceeds derived from their works.
(D) To stimulate creativity across all media.
It is the policy of the Board of Regents of the University of Oklahoma that all rights in copyright shall remain with the creator of the work unless the work is created with substantial use of University resources, is specifically assigned or commissioned by the University, is subject to non-University contractual or legal obligations, or is a "work made for hire" as that term is defined by U.S. Copyright Law.
3.1 Scholarly/Aesthetic Works.
In keeping with traditional academic practice and policy, ownership of copyrights to works of artistry or scholarship in the creatorís professional field such as textbooks, course materials, scholarly papers and articles, software and other computer materials when they are works of artistry or scholarship, novels, poems, paintings, musical compositions or other such works of artistic imagination produced by University employees who have a general obligation to produce such works where the specific choice, content, course and direction of the effort is determined by the employee without direct assignment or supervision by the University shall reside in the creators and the works shall not be deemed "works made for hire" under this policy unless they are also sponsored/contracted works or specifically assigned by the University. Copyrighted courseware and/or software that are not associated with traditional works as described above shall fall under and are subject to the Patent Policy. The general obligation of faculty to produce scholarly works does not constitute specific assignment. Upon request by the University, the creator(s) will grant University a nonexclusive, free of cost, world wide right and license to exercise all copyright rights in and to the work, except the right to commercially display, use, perform or distribute copies of the work, unless to do so would impair the ability of the creator to have the work published or distributed. If a use of the work by University is reasonably determined by the creator to impair the exercise of such rights, the University shall discontinue the impeding use but otherwise shall remain free to use the work as provided in this Paragraph 3.1. Subject to the approval of the Vice President for Technology Development, the University will assist any University employee wishing to commercially exploit a scholarly/aesthetic work falling under this paragraph, through the Office of Technology Development and its respective campus officers. In such cases, the University will normally own the work and the provisions of the Patent Policy shall apply.
3.2 Personal Works.
Ownership of copyrights to works prepared outside the course and scope of University employment and without the substantial use of University resources (equipment, facilities, services or funds (regardless of source) administered by and/or under the control of the University) shall reside with the creators; provided, the provision of office facilities, limited secretarial assistance, library facilities for which special charges are not normally made or other resources which are made available to the public without charge, shall not be considered substantial use of University resources.
3.3 Sponsored Works.
Ownership of copyrights to works produced by or through the University in the performance of a written agreement between the University and a third-party/sponsor shall be governed in accordance with the agreement. If the agreement is silent in that regard, ownership shall be governed by the other provisions of this policy.
3.4 Commissioned Works.
Ownership of copyrights to works produced for University purposes by persons not employed by the University or by University employees outside their regular University employment (commissioned works) normally shall reside with the University. In all cases, copyright ownership shall be specified in a written agreement approved by University legal counsel signed by the parties. Any commissioned work agreement which provides for ownership by other than the University shall also provide, to the fullest extent possible, that the University will have an irrevocable, free-of-cost, non-exclusive, world-wide license to exercise all copyright rights in and to the work, except the right to commercially display, use, perform or distribute copies of the work unless to do so would impair the ability of the University employee creator to commercially or professionally exploit the work. If a use of the work by University is reasonably determined by the University employee creator to impair the exercise of such rights, the University shall discontinue the impeding use but otherwise shall remain free to use the work as provided in this Paragraph 3.4.
3.5 University Works.
Except as otherwise provided in this Policy, the University shall own all copyrights to works made by University employees in the course and scope of their employment and shall own all copyrights to works made with the substantial use of University resources. Provided, University shall give due regard to the creatorís interests in the quality and integrity of the work and where appropriate grant recognition for creation of the work. To the extent consistent with University rights under the U.S. copyright law, nothing herein shall be construed to prevent the creator from using his/her knowledge, expertise, research and creative achievement in other employment.
3.6 Student Works.
Ownership of copyrights to works produced by enrolled students without the use of University funds (other than Student Financial Aid), that are produced outside any University employment and are not sponsored or commissioned works, shall reside with the student creator(s). Provided however, in all cases a studentís graduate thesis or dissertation shall be deemed a student work under this policy but as a condition of enrollment and awarding a degree, the University reserves an irrevocable, non-exclusive, free-of-cost and world-wide right to reproduce in any media and distribute to the public, on a non-commercial basis, copies of said theses and dissertations, unless to do so would impair the ability of the creator to commercially or professionally exploit the work. If a use of the work by University is reasonably determined by the creator to impair the exercise of such rights, the University shall discontinue the impeding use but otherwise shall remain free to use the work as provided in this Paragraph 3.6
3.7 Jointly Originated Works.
Ownership of copyrights to jointly originated works shall be determined by separately assessing the category of work of each creator under this Section 3. Rights between joint owners of a copyright shall be determined pursuant to copyright law or by agreement between the owners of the work.
4. REVENUE SHARING
4.1 The University may assign or license its copyrights to others. The University shall share royalty revenue derived from such assignment or license (excepting commissioned works and sponsored research funding) which it receives through copyrights with the creators, as provided for in the Patent Policy above.
4.2 Notwithstanding the above or anything else to the contrary herein, staff employees are not eligible to share revenues received from University owned copyrights where such employees create copyrightable works as a part of their normal responsibilities of University employment. Provided, a staff employee may apply to the appropriate Provost to be treated as a faculty member for purposes of revenue sharing for a work resulting from a specific project upon a showing that his/her duties and responsibilities in that project are, in practical effect, substantially the same as those of a faculty member.
5.1 Release to the Creator. An individual creator of a University owned work may seek transfer of the University owned copyright to him/herself by making written request to the appropriate Provost. If the University decides not to exploit such work, then it may transfer the copyright, by written agreement, to the individual creator to the extent consistent with any applicable third-party agreement or law. Provided, such transfer shall be subject to an irrevocable, non-exclusive, free-of-cost and world-wide license in the University to exercise all rights under the copyright in the work except the right to publicly distribute copies for commercial purposes or such other conditions as may be agreed upon in writing between the individual creator(s) and the Provost, unless to do so would impair the ability of the creator to have the work published or distributed. If a use of the work by the University is reasonably determined by the creator to impair the exercise of such rights as transferred in the agreement, the University shall discontinue the impeding use but otherwise shall remain free to use the work as provided in this Paragraph 5.1.
5.2 Disclosure and Protection. An individual creator of a University owned copyrightable work shall protect the work by placing the following statutory copyright notice on all copies thereof ("Copyright [insert year produced, e.g., 2000], the Board of Regents of the University of Oklahoma."). If the creator believes the work may have commercial value, he/she shall promptly provide written disclosure of the work to the appropriate Provost.
5.3 Legal Compliance-Any work created by a University employee or student, to the best of his/her knowledge and informed belief, shall not infringe on any existing copyright.
5.4 Creators of copyrightable works subject to this policy and the University shall cooperate as reasonably necessary to effect the terms of this policy. For example, if copyright to a work of scholarship vests in the University by law, the University will, upon request and to the extent consistent with its legal obligations to third parties, promptly execute such documents as will transfer copyright to the faculty creator(s).
5.5 The Provosts, Norman Campus and the Health Sciences Center, shall be responsible for administering the copyright affairs of the University in a manner consistent with this policy. The Provosts shall cooperate in consultation with the Copyright committee on each campus to establish written directives to be approved by the President of the University and distributed to the employees and students of the University, which shall govern the procedures to be followed in processing copyrighted works created within the University.
5.6 The University does not act as a fiduciary for any person concerning consideration received under the terms of this policy.
5.7 The University Vice President for Technology Development may negotiate ownership of copyrighted works with research sponsors when it is in the best interest of the University to do so. Otherwise, all rights are as described above.
5.8 Faculty having rights to copyrighted works prior to employment at the University of Oklahoma should notify the Office of Technology Development of such intellectual property so that ownership to any further development of that same intellectual property at the University of Oklahoma may be established, in a written agreement with the University.
6. CONTRACTUAL TERM
The terms of this copyright policy are a part of any contractual relationship of the University with any member of the faculty, staff or student body. This policy, as amended from time to time, shall be deemed to be a part of the conditions of employment of every University employee and a part of the conditions of enrollment and attendance of every student at the University.
7. RESOLUTION OF CONFLICT
Should disputes arise relative to the ownership of copyright between the creator and the University, the matter will be referred to the Copyright Committee, which will make recommendations to the President for proper resolution of the disputes. Either the University or creator may contact the Provost to arrange to have the Copyright Committee meet to consider such disputes.
8. UNIVERSITY COPYRIGHT COMMITTEE
(A) The University shall have a Copyright Committee for each Campus that shall consider and investigate disputes among administrators, faculty, or staff and shall recommend appropriate solutions to the President. The Commit-tee's responsibilities shall include, but not be limited to, disputes concerning:
1) Ownership of copyright; and
2) Terms of commissions.
(B) The Copyright Committee of each campus shall have as its members:
(1) One member appointed by the President for a four-year term;
(2) One student member appointed by the Graduate Student Senate for one year;
(3) Two staff members, one appointed by the President, one appointed by the Staff Senate, all appointments are for three years; and
(4) Three faculty members with two appointed by the Faculty Senate and one by the President. All appointments are for three-year terms. Tie votes will be settled by chair of Faculty Senate, who shall be an ex-officio member of the committee.
Each member of the Committee shall have one vote. The Committee shall keep its own records, determine its own procedures, and elect its own chair who shall report to the President. The Committee also may review this policy from time to time and may recommend changes to the President.