Intellectual Property Policy

Contents

Policy Author:
VPAA/Provost office

Responsible Office – Department:
Faculty Senate

Effective Date of Policy:
Fall 2021

Purpose:

The intent of this Intellectual Property Policy is to encourage the creation of original works of authorship and inventions by faculty, staff and students while safeguarding the reputation and financial interests of the University. It is expected that, in all cases, the University and its faculty, staff, and students will act in a manner as to best serve the public interest.

Scope and Applicability of this Policy:

All Faculty, Staff and Students

Policy Narrative:

Preamble

Daemen University (“University”) is dedicated to teaching, research, service, and the dissemination of knowledge. The University believes that the public interest is best served by creating an intellectual environment whereby creative efforts and innovation are encouraged and rewarded, while still retaining for the University reasonable access to, and use of, the intellectual property for whose creation the University has provided assistance.

The intent of this Intellectual Property Policy is to encourage the creation of original works of authorship and inventions by faculty, staff and students while safeguarding the reputation and financial interests of the University. It is expected that, in all cases, the University and its faculty, staff and students will act in a manner as to best serve the public interest.

I. Definitions

Author. Shall mean any person covered by this policy who creates a Work of Authorship.

University Personnel. Shall include all persons employed by, paid by, or under contract with the University, unless expressly exempted by contract, including, but not limited to, full and part-time faculty, staff, administration, visiting faculty members, adjunct faculty, researchers, consultants, persons paid by or through the University, students engaged in faculty-directed research, and any other students who are encompassed within any of these categories;

University Resources. Shall include the use of University funds, personnel, facilities, equipment, materials, supplies, support staff or technological information, and includes such support provided by other private or public organizations when it is arranged, administered or controlled by the University.

Substantial Use of University Resources. Shall involve extensive use of University Resources that are normally available or provided in the course of the University Personnel’s usual appointment or assignment, or the use  of resources that are not ordinarily available to the majority of other University Personnel with comparable status. However, de minimis use of office, library resources, personal computer, and/or software, is not regarded as Substantial Use of University Resources.

Incidental Use of University Resources. Shall include all persons employed by, paid by, or under contract with the University, unless expressly exempted by contract, including, but not limited to, full and part-time faculty, staff, administration, visiting faculty members, adjunct faculty, researchers, consultants, persons paid by or through the University, students engaged in faculty-directed research, and any other students who are encompassed within any of these categories;

Course Content. Course Content shall mean the intellectual content of the course, as taught at or through the University.

Courseware. shall mean the set of tools and technologies used to present Course Content, and is independent of the content itself.

Creator. Shall mean a University Personnel who creates a Work or Invention.

Intellectual Property Committee (“Committee”). Shall be an Intellectual Policy committee which shall oversee the administration of this policy and shall make determinations regarding ownership and management of Intellectual Property subject to this policy.

Intellectual Property. Shall include all Works and Inventions.

University Owned Intellectual Property. Shall mean a Work of Authorship or Invention that is the direct result of the regular duties of a faculty member, a Sponsored Research Project or Substantial Use of University Resources. 

Creator-Owned Intellectual Property. Shall mean a Work of Authorship or Invention developed by University Personnel without the Substantial Use of University Resources, not related to any Sponsored Research Project, outside the scope of employment without any expense to the University.

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Invention. Shall include subject matter as set forth in 35 U.S.C. §§ 100 and 101, which includes but is not limited to, any discovery, process, composition of matter, article of manufacture, know-how, design, model, technological development, biological material, strain, variety, culture of any organism, or portion, modification, translation, or extension of these items, or other invention or discovery that reasonably appears to qualify for protection, whether or not actually patented or patentable, at any time under United States patent law, as now existing or hereafter amended or supplemented. “Invention” shall also include Software, but only to the extent that the Software is patentable.

Inventor. Shall mean a person covered by this policy who individually or jointly with others conceives of an Invention and who meets the criteria for inventorship under United States patent laws and regulations.

Software. Shall mean computer programs in a machine readable or interpreted form.

Sponsored Research Project. Shall mean a Work or Invention first produced by University Personnel pursuant to a written agreement between the University and a sponsor, including but not limited to a Government sponsor. Sponsored Research Projects do not include journal articles, lectures, books or other copyrighted works created through independent academic effort and based on the findings of the sponsored project, unless the sponsored agreement states otherwise.

Trademark. Shall mean a distinctive word, design or graphic symbol, or combination of the same, that distinguishes and identifies the goods and/or services of one party from those of another. For purposes of this policy, the term “Trademark” shall include service marks.

Traditional Works of Scholarship. Shall mean a subset of Works of Authorship created independently and at the Creator’s initiative for academic purposes. Examples include, but are not limited to, class notes, 147 books, theses and dissertations, educational software (also known as courseware) that the Creators may design for courses they teach, articles, non-fiction, fiction, poems, musical works, dramatic works including any accompanying music, pantomimes and choreographic works, pictorial, graphic and sculptural works.

Works of Authorship (“Work” or “Works”). Shall include any copyrightable material, including but not limited to the following: literary works; musical works, including any accompanying words; dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works (photographs, prints, diagrams, models, and technical drawings); motion pictures and other audiovisual works; sound recordings; architectural works; and Software (but only to the extent such Software is not patentable) or databases.

Work Made for Hire. Pursuant to Section 101 of Title 17 of the U.S. Code, “(1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work.¹ , as a compilation, as an instructional text² , as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument that the work shall be considered a work made for hire.” Notwithstanding the foregoing, however, University Personnel’s general obligation to produce Traditional Works of Scholarship does not constitute a Work for Hire.

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¹ A “work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewards, afterwords, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes.”

² A “literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.”

II. Policy Application

A. Application. This policy is considered a part of the conditions of employment or engagement for all University Personnel and a part of the conditions of enrollment and attendance at the University by students. Failure to formally consent, in writing or otherwise, to this policy in no way diminishes or extinguishes the rights of the University hereunder or the application of this policy to any University Personnel. This policy shall apply to all forms of Intellectual Property created or developed, in whole or in part, by University Personnel: (1) pursuant to a Sponsored Research Project; (2) making Substantial Use of University Resources; (3) as a result of University employment duties or engagement by the University; and/or, (4) pursuant to the terms of an agreement to which the University is a party.

B. Exceptions or Waiver. Creators of Intellectual Property are entitled to request an exception or waiver to the provisions of this policy, including in the event that a publisher or other third-party organization proposes terms which are exceptions to this policy. Exceptions to this policy may be approved on a case-by-case basis by the Committee. Any request for a waiver or exception to the applicability of this policy must be made in writing to a designated member of the Committee, who will present it to the Committee for a vote.

III. Copyrights

General Rule of Ownership. Keeping with the view that one of the University’s benefits to society is the production of original Works by University Personnel, and in order to best encourage such activity, the default rule is that an Author of a Work owns the copyrights in and to the Work, subject to the limitations set forth below. By way of example, the Author owns the rights and shall be free to retain any revenue derived therefrom in books, films, video cassettes, works of art, musical works and other copyrightable materials of whatever nature or kind and in whatever format developed, except that course content and coursework (as defined below) shall be subject to Part V of this policy. However, the University shall have a non-exclusive, perpetual and royalty-free license to use such Creator-Owned Intellectual Property for non-commercial internal use for educational or instructional purposes.
Exceptions. The University shall own all right, title and interest in any Works described under this Section (III)(B), and the Creator(s) of such Work(s) hereby assigns, transfers or otherwise conveys to the University all such right, title and interest in any and all such Work(s). Ownership of the Work will not automatically default to the Creator(s)/Authors when:
1. Substantial Use of University Resources. The Work was developed with Substantial Use of University Resources.
2. Sponsored Research Projects. The Work was developed in connection with a Sponsored Research Project unless the written agreement between the University and the sponsor states otherwise.
3. Work Made for Hire. The Work constitutes a Work Made for Hire.
4. Commissioned Work. The Work (a “Commissioned Work”) is produced or created pursuant to a written agreement with the University and for the University’s own purposes (a) by individuals not under the employ of the University; or (b) by University Personnel acting outside the scope of their regular duties, as determined by their existing employment arrangement or contract with the University; or (c) where there is a written agreement that specifically states that the University shall own the Work.
5. Written Agreement. The Work is produced or created pursuant to a written agreement with the University which specifically states that ownership of the Work belongs to the University.

Creator’s Non-Commercial Use. Where the University owns the Intellectual Property under this policy, the Creator is permitted to continue to use the Intellectual Property for his or her own non-commercial purposes. Any distribution by the Creator to academic colleagues outside the University beyond the limits of “fair use,” as defined in Section 107 of the Copyright Act of 1976, shall only be permitted pursuant to written agreement from the University through the President or designated individual at the University.

IV. Inventions and Patents

Types of Inventions. Inventions shall be classified as one of the following:
1. Supported Invention is an Invention conceived of and/or reduced to practice by a person covered by this policy (whether alone or together with others) if conceived of and/or reduced to practice:
  1. Under or subject to a Sponsored Research Project; or
  2. With Substantial Use of University Resources.
2. Incidental Invention is an Invention (other than a Supported Invention) that is conceived of and/or reduced to practice by a person covered by this policy making Incidental Use of UniversityResources related to the conception and/or reduction to practice of such Invention.

B. General Rule of Ownership.

The University shall own all right, title and interest in a Supported Inventor(s) shall assign, transfer or otherwise convey to the University all right, title and interest in any and all Supported Invention(s). Notwithstanding the foregoing, the University shall not have right, title and interest in a Supported Invention under or subject to a Sponsored Research Project if the written agreement between the University and the sponsor states otherwise.
The Inventor shall own all right, title and interest in an Incidental Invention
Notwithstanding anything to the contrary contained herein, Course Content and Courseware shall be the subject to Part V of this policy

C. Government Sponsorship. The Bayh-Dole Act (35 U.S.C. § 202(c)(4)) and subsequent amendments and federal regulations permit educational institutions to retain rights and title to patentable inventions which results from federally funded experimental, developmental and research work and provide that the Government retains a non-exclusive, non-transferable, irrevocable, royalty-free, worldwide 150 license to an invention produced under Government sponsorship. In addition, any income or royalties received from an invention produced under Government sponsorship after payment of expenses (including payments to inventors for royalties) must be used for scientific research or education. Because of the foregoing, it is incumbent upon University Personnel who apply for and receive federal funding to support research or who use federal monies in the conduct of their research to promptly disclose patentable Inventions in accordance with this policy and to abide by the terms and conditions set forth herein.

V. Course Content and Courseware

A. The creation of Course Content and Courseware may be protectable Intellectual Property, depending on various circumstances. Courses designed to be delivered over the internet, by computer or through similar technologies may involve both copyright and patent considerations.

Creator Ownership. Consistent with its intent to recognize the Creator as the owner of Traditional Works of Scholarship, the University claims no ownership rights in either the Course Content or the Courseware except as set forth below.
1. Independent of copyright ownership, a Creator has the right to use all Course Content and Courseware he or she develops or creates in the normal course of teaching or research at the University. This right includes the right to make changes to the Works and the right to distribute such Works to students, faculty and other University Personnel for teaching, research and other noncommercial University purposes.
Limited University Ownership. The University shall have limited ownership or control rights for Course content and Courseware as specified below:
1. Self-initiated Course Content and Courseware. Except as set forth in subsection (b) below, when a Creator develops Course Content and Courseware without specific direction by the University, unless otherwise agreed, the ownership of the Course Content and Courseware shall remain with the Creator. No royalty, rent or other consideration shall be paid to the Creator when that Course Content and Courseware is used for instruction at the University and such Course Content and Courseware shall not be used or modified without the consent of the Creator(s).
2. University-directed Course Content and Courseware and other Exceptions. When the University specifically directs the creation of Course Content and Courseware by assigning one or more persons covered by this policy to develop the Course Content and Courseware, whether in online or in-class format, and said Course Content and/or Courseware is created with Substantial Use of University Resources, or when the Course Content and/or Courseware is developed in connection with a Sponsored Research Project (unless the written agreement between the University and the sponsor states otherwise) is a Work Made for Hire, is a Commissioned Work or is produced or created pursuant to a written agreement that specifically states that ownership of the Course Content or Courseware belongs to the University, the resulting Course Content and Courseware belongs to the University and the University shall have the right to revise it and decide who will utilize the Course Content and courseware in instruction. The University may, at its discretion, specifically agree to share revenues and control rights with the Creator of such Course Content and Courseware. The Creator(s) of any Course Content and Courseware owned by the University pursuant to this subsection hereby assigns all right, title and interest in such Course Content and Courseware to the University.

VI. Intellectual Property Committee

A. Appointment. The Committee will be composed of three (3) members elected or appointed by the Faculty Senate (the “Faculty Committee Members”), three (3) University administrators appointed by the President or his/her designee and the University’s Vice President of Academic Affairs, who shall serve ex officio. The Faculty Senate shall, from time to time, determine the process for elections or appointments of Faculty Committee Members and the length of the terms of such Faculty Committee Members. The Committee members shall elect a chair from among themselves each year.

B. Duties. The Committee shall:

monitor and review technological and legislative changes affecting this Intellectual Property Policy and shall report to relevant faculty and administrative bodies, when such changes affect existing policies;

serve as a forum for the receipt and discussion of proposals to change existing institutional policy and/or to provide recommendations for contract negotiations;
decide disputes over ownership, and the University’s attendant rights, of Intellectual Property
make an initial determination of whether the University or any other party has rights to the Intellectual Property, and, if so, the basis and extent of those rights. The Committee shall also make a determination on resolving competing faculty claims to ownership when the parties cannot reach an agreement on their own; and,
review the merits of Inventions, and other creations, and make recommendations for the management of the Intellectual Property, including development, patenting, and commercialization.

C. Appeals. When Creator(s) disputes a decision taken in application of this Intellectual Property Policy, he or she may file a written appeal to the Committee. Creators shall be entitled to appear before the Committee, accompanied by representatives of Creator’s choice (but at the Creator’s sole expense), and present evidence with respect to any matter specifically involving the application of this policy to them or their Intellectual Property. The Committee will review the matter and will issue a final written decision as to the application of this policy.

VII. Management of Intellectual Property

A. Disclosure Obligations. Creator(s) shall promptly disclose to the Committee any potentially University-Owned Intellectual Property that is contemplated by this Policy.

B. Ownership Determination. Upon review of a disclosure document, the Intellectual Property Committee will determine whether an Invention is a Supported Invention or an Incidental Invention.

In the case of a Supported Invention, the Committee shall further determine, with assistance from patent counsel, who are the Inventor(s), consistent with U.S. patent law. The University shall have the right to own and each Inventor, at the University’s request, shall take any further actions as may be required to assign to the University all of his/her right, title and interest in a Supported Invention. In the case of a Work of Authorship, excluding Traditional Works of Scholarship and Works created without Substantial Use of University Resources and outside the scope of employment, the Committee shall determine whether the University will assert ownership of the Work.
In the case of an Incidental Invention, Inventor(s) agree to grant to the University an irrevocable, non-exclusive, royalty free, right to use the Incidental Invention for non-profit internal educational and/or research activities.

C. Timing. The Creator(s) of any disclosed Intellectual Property shall be promptly notified of the Committee’s determination relating to ownership of the Intellectual Property. The University, by and through the Intellectual Property Committee, shall make every reasonable effort to act expeditiously under the circumstances in arriving at decisions and taking all actions required hereunder. See Subsection G below.

D. Legal Protection. The President, or designated Committee member, shall determine whether the University desires to obtain protection for or pursue licensing of University-Owned Intellectual Property.

Forms of Protection. The University, upon determination that a Work or Invention is University Owned Intellectual Property, may register the Work with the U.S. Copyright Office or file a patent application in the United States Patent and Trademark Office, or other foreign patent offices. Filing and registration determinations may be made on the basis of commercial potential, obligations to and rights of third parties, or for other reasons which the Committee, in its discretion, deems appropriate.
Costs of Protection. All costs involved in obtaining and maintaining legal protection of the University-Owned Intellectual Property shall be borne by the University, unless the University disclaims, releases or waives its ownership rights or unless a licensee accepted by the Creator agrees to bear such costs pursuant to the terms of a written license agreement.

E. Commercialization. The Intellectual Property Committee shall have the sole discretion with respect to the commercialization of University-Owned Intellectual Property, but shall take into account the public interest. Where such a Work or Supported Invention is subject to an external agreement with a third party (for example, the federal government or other external funding sponsor), the Committee shall make decisions consistent with that agreement and applicable laws/regulations. The Committee shall make decisions concerning commercialization as it deems appropriate and shall regularly inform the Creator of the progress of the University’s protection efforts and licensing of University-Owned Intellectual Property disclosed by the Creator.

F. Royalty Sharing. Where royalties are generated by the University as a consequence of commercializing a Supported Invention or Work of Authorship, royalties will be shared with the Inventor(s) as described in Section VIII (“Royalty Distribution”) of this policy.

G. Request of Release. The Creator may request assignment or release to the Creator of some or all of the University’s rights in University-Owned Intellectual Property (a “Release”’) under the following circumstances:

if the Committee notifies Creator in writing that the University elects not to protect or commercialize University-Owned Intellectual Property, or that it has decided to abandon protection or commercialization; or,

if the Committee notifies Creator in writing that the University elects to protect or commercialize University-Owned Intellectual Property within 90 calendar days of disclosure to the Intellectual Property Committee, but fails to file for a full or provisional application for a patent within 60 days of notification of election; or,
if, within 30 calendar days of disclosure to the Intellectual Property Committee, the Creator has not received notice from the Committee that the University:
1. Disclaims ownership of the Intellectual Property; or
2. Has taken steps to protect or commercialize University-Owned Intellectual

H. Release. Upon determining that releasing the Supported Invention to the Inventor(s) or Work to the Author will not violate the terms of an external funding agreement and is in the best interests of the University and the public, the Committee may agree to a release and in such case will assign or release all right, title and interest which the University holds or has the right to hold in the Intellectual Property in equal shares, unless Creators have agreed otherwise.

VIII. Royalty Distribution

A. Policy. A Creator of University-Owned Intellectual Property is entitled to share in the income, including royalties, equity interests (subject to any University conflict of interest policy), and dividends, earned from the commercialization of that Intellectual Property.

B. Income Distribution. Subject to the terms of any Sponsored Research Project agreement and unless otherwise agreed by the University and the Creator, gross income received by the University created from commercialization of University-Owned Intellectual Property shall be distributed as follows:

First, to pay for any out-of-pocket expenses incurred by the University in connection with the administration, protection and commercialization of such Intellectual Property, including, but not limited to, fees paid to outside legal, consulting, marketing and licensing organizations and any other out-of-pocket costs incurred by the University or the relevant sponsor.
Then, 10% applies to a fund at the University for payment of costs related to the patent filing, copyright registration, prosecution and maintenance fees of other Intellectual Property
The resulting “Net Income” from the Invention or registered and copyrighted computer program or Work, defined as gross royalties and any other income generated by or relating to the use the Intellectual Property which is received by the University shall be distributed as follows:
1. 50% to the Creator(s);
  - The Creator’s share shall be divided equally among joint Creators, absent a written agreement among the Creators to the contrary
2. 50% to the University for the support of research and scholarly activity

C. Status of Employment of Creator. The amount of Creator compensation shall not be affected by any termination of the Creator’s employment with the University. Creator’s right to receive distributions pursuant to this Article VIII and shall inure to the benefit of his or her executors, guardians, administrators, heirs, legatees, successors and assigns.

IX. Miscellaneous

Improper Vesting of Ownership. In the event that ownership rights do not originally vest in the proper owner as contemplated hereunder, the improper party(ies) hereby irrevocably assign, transfer and convey to the appropriate party all right, title and interest therein, and shall execute all necessary documents to assist and/or enable the owner to perfect, preserve, register and/or record its rights in all such Intellectual Property at no additional expense.
Sponsored Research Projects. Any sponsored work agreement which provides for ownership by a person other than the University generally shall provide the University with a perpetual, royalty-free, nonexclusive, world-wide license to use and reproduce the Intellectual Property for educational and research purposes.
Consulting. Consulting for organizations outside the University is encouraged and may be performed by University Personnel pursuant to applicable University policies. No Substantial Use of University Resources may be made in the course of outside consulting activities unless prior written approval is granted in advance by the University or Committee. Additionally, consulting agreements must conform to University policies on outside activities and the use of the University’s name or other identifying symbols.
Trademark/Service Marks. Intellectual Property comprised of or associated with the University’s Trademarks and Service Marks, including but not limited to, its name, logos, slogans, insignia, and other symbols of identity (collectively the “Marks”), belongs exclusively to the University. This policy is designed to protect the reputation of the University, and to prevent the unauthorized use of the University’s Marks. University Marks may not be used without prior written consent from the President or his designee, except to the extent that University Personnel may use the Marks to identify their status or professional affiliation with the University, as appropriate. However, such use must not confuse, mislead or give a false impression of affiliation with, or sponsorship or endorsement by, the University.
Effective Date. This Policy supersedes any preexisting Intellectual Property policy of the University and is effective _______________ (i.e., the date of its approval) and will remain in effect until modified or revoked. This Policy will be binding on all parties who create Intellectual Property after the Effective Date, and this Policy and other agreements that represent modifications to this Policy shall remain binding on such Creators even after their relationship with the Institution changes or terminates.
Amendments; Modifications. This policy may be amended, modified or supplemented from time to time by the Committee; provided, however, that any amendment, modification or supplementation will not affect the ownership of Intellectual Property previously developed or generated or distribution of revenues relating to Intellectual Property previously developed or generated.
Assignments. All assignments must be in writing. If requested by the University and at no additional expense, creators of Intellectual Property shall assist as reasonably possible in the execution of appropriate assignments substantially similar to the form attached hereto as Exhibit A and other documents necessary or desirable to accurately reflect the ownership of, and rights to, applicable Intellectual Property. The University may, at its sole discretion, permit the Creator to assign or license Intellectual Property. The University may not withhold consent for assignment or licensing unless the University intends to pursue protection and commercialization of the Intellectual Property.
Confidentiality. Certain contractual obligations and governmental regulations require that information be maintained in confidence. Additionally, some Works, such as certain Software, may best be protected and licensed as trade secrets, and Inventions must be maintained in confidence for limited periods to avoid the loss of patent rights. Accordingly, the timing of publications is important, and University Personnel shall use their best efforts to keep the following items confidential:
1. All information or material designated confidential in a contract, grant, or the like;
2. All information or material designated or required to be maintained as confidential under any applicable governmental statutes or regulations; and,
3. All information relating to Intellectual Property developed by University Personnel which may be protected under this policy until application has been made for protection
Indemnity. For Intellectual Property rights owned by the University and for which the University seeks protection, the University will indemnify, defend, and hold harmless employees and students from claims of infringement of the Intellectual Property right of any third party. For Intellectual Property rights owned by Creator(s), the Creator(s) will indemnify, defend, and hold harmless the University from claims of infringement of the Intellectual Property rights of any third party.

Updated on April 3, 2023