Florida Tech Policy on Patents and Copyrights

From the 2005 Faculty Handbook

2.19 Policy on Patents and Copyrights

PREAMBLE

In adopting this policy the Board of Trustees recognizes that there may be research projects sponsored by governmental authorities, industrial concerns, or others, which may entitle the sponsors to the ownership, without payment or any royalty to any person. "Ownership" as used herein refers both to ownership of a discovery or invention made by a faculty member or staff member or student employed by the University as to which there is a reasonable likelihood of obtaining a patent; and to ownership of copyright able material authored by a faculty or staff member or employed student.

2.19.1 Creation of Patent and Copyright Committee

The Board of Trustees of Florida Institute of Technology hereby authorizes the President to appoint a Patent and Copyright Committee (to be referred to as "the Committee") with the authority and responsibility provided for below, and consisting of three members of the university's faculty and three members of the university's administrative staff.

2.19.2 Discoveries and Inventions.

1. Disclosure and Discoveries and Inventions

Any faculty member or staff member or employed student of the University who has made a discovery or invention which in his or her judgment reasonably appears to be patentable (hereinafter referred to as "patentable") shall bring such discovery of invention to the attention of the President of the University, or his designated representative, who will refer it to the Committee for the purpose of determining whether and to what extent the University has an interest in the discovery or invention. Any such discovery or invention shall be so disclosed promptly but in any event within a period of not more than two months.

2. Ownership of Discoveries and Inventions

a. A discovery or invention, whether or not subject to patent, developed as a direct result of the regular duties of a faculty member, or staff member, or developed by a faculty member or staff member or employed student as a result of research done on or in connection with theses or dissertation or problems pertaining thereto; or as a result of a program of research financed wholly or in part by University funds or by funds under the control of the University, shall except otherwise owned for reasons mentioned in the Preamble, be the exclusive property of the University. The ownership of any such discovery or invention and any patent rights pertaining thereto, shall be assigned to the University or its designee and shall be administered in accordance with the determination of the Committee.

b. A discovery or invention developed by a faculty member or staff member or employed student shall be exclusive property of the inventor or inventors if all the following conditions exist:

(1) if the University has contributed nothing substantial or essential to the production and development of such discovery or invention in funds, space, facilities or a member or staff member or employed student, and

(2) if the discovery or invention is not along lines related to any University research then in progress known to him or her, or to which the University is committed, and with which in either case such faculty member or staff member or employed student is connected, and

(3) if the discovery or invention was developed by the inventor or inventors on his or her or their own time without any expense to the University.

c. If there shall be a difference of opinion as to whether a discovery or invention is within subparagraph "a" or subparagraph "b" above, or if a discovery or invention is within neither such category, the ownership of the discovery or invention, and the determination of equities with respect thereto shall be decided by the Committee decision. This decision is subject to appeal to the President of the University as provided for hereinafter, and once the decision has been rendered, it shall be binding upon the University and upon the faculty member or staff member or employed student who made the discovery or invention.

3. Authority and Responsibility of Committee with Respect to Discoveries and Inventions

The Committee, subject to appeals to the President hereinafter provided for, shall have the following authority and responsibility with respect to discoveries and inventions:

a. To receive and act upon reports of discoveries and inventions.

b. To determine the ownership of discoveries and inventions and to determine the dates of their conception, disclosure and reduction to practice.

c. To determine the equities of the University, the inventor or inventors, and other parties, in discoveries and inventions; and to provide equably for the sharing, between the University and the inventor or inventors, of royalties received for any patented or patentable discovery or invention in which the University has a property interest, in accordance, however, with the following:

(1) in situations where an agreement, letter or other document involving the University and another party or governmental agency having an interest in such discovery or invention requires that royalties on such discovery or invention be distributed in a particular manner, the sharing of such royalties between the University and the inventor or inventors shall be in accordance with the royalty distribution provisions of such agreement, letter or other document. In all other

cases, the procedure set out hereafter in subparagraphs 2,3,and 4 shall be followed, provided, however, that where an agreement, letter or other document

involving the University and another party or governmental agency having an interest in such discovery or invention, places a limitation upon the amount of

royalties to be paid to the inventor or inventors in accordance with subparagraphs 2,3, and 4, said amount of royalties paid shall not exceed such limitation.

(2) the University shall retain all such royalties until it shall have recovered in full all the expense incurred in connection with the filing and prosecution of a patent application, or applications, for the discovery or invention in question.

(3) the next $2,500 of such royalties shall be paid to the inventor or inventors of the discovery or invention.

(4) Royalties received beyond those required to meet the conditions specified in 1, 2 and 3 above shall be divided above shall be divided as follows:

i. One-third of such royalties received shall be retained by the University.

ii. One-third shall be paid to the inventor, or to the inventors in accordance with their rights thereto

iii. One-third to the primary department of the inventor, or primary departments of co-inventors according to the establishment of proportionate participation as determined in "d" below.

d. When there are co-inventors, to determine the extent of the participation of each inventor in the financial returns from the discovery or invention.

e. To determine, in the case of a discovery or invention in which the University has a property interest, whether the University should attempt to obtain a patent or should submit the discovery or invention to the university's patent agent, any such determination to be made within two months from the date the discovery or invention has been disclosed to the Committee or, if sooner, within thirty (30)days after written request that such determination be made is received from the President of the University or from the inventor or inventors.

f. It the Committee decides to submit a discovery or invention of the University to the university's patent agent and if the patent agent shall decide either not to file an application for patent or to abandon an application which has been filed, then the Committee shall determine whether the University shall file such application or proceed with an application already filed, or shall assign any right which the University may have in the discovery or invention to the inventor, or inventors, such determination to be made within thirty (30) days after the receipt by the Committee of notice from the university's patent agent or a determination not to file such application or to abandon an application already filed. At the time of this determination a letter to this effect shall be sent to the discoverer or inventor.

g. To report to the President of the University and other interested parties its findings and determinations with respect to a discovery or invention within four (4) months of the receipt by it of knowledge of the discovery or invention, except in those situations for which a different period of time for making a determination is established.

h. To report its findings to the President of the University on all matters bearing on patent able research, or on patents offered to the University by gift, devise, purchase, sale or assignment, regardless of the potential value thereof or the circumstances under which such patentable research or patents were discovered.

4. Management and Exploitation of Patents

The President of the University shall be the final authority to determine the manner in which patents which are the property of the University shall be managed and exploited.

2.19.3 Copyrightable Material

I. Rights of Authors.

In accordance with custom in institutions of higher learning and except as provided for in paragraph 2 below, the right of first publication and of statutory copy-right in any book, manuscript, television or motion picture script or film, educational material, or other copyrightable work, whose author is a faculty member or staff member or employed student, shall be the property of the author.

2. Rights of the University.

Copyrightable material resulting from a project assigned to faculty members or staff members as a part of their regular duties shall inure to the University only if so specified at the time of assignment by an instrument of specific detail and agreement signed by the said faculty or staff members, by their departmental chairperson or director, and by their school or college deans.

3. Authority and Responsibility of Committee with Respect to Copyrightable Materials.

The Committee shall have the same authority and responsibility with respect to copyrightable material authored by a faculty member or a staff member or employed student as it has in respect of discoveries or inventions made by such persons and dealt with in part III, discoveries and inventions. The specific authority and responsibility of the Committee with respect to discoveries and inventions, described in paragraph 3 of part III, shall apply with equal force to copyright-able material owned in total or in part by the University.

4. Notice to Committee.

Department I-leads, Deans, Directors shall notify the Committee in writing of any work assigned in accordance with paragraph 2, Rights of University, which might result in a manuscript or other property for which copyright may be obtainable.

2.19.4 Publication of Material Relating to Discoveries, Inventions and Scholarly Investigation

The Board of Trustees recognizes and wishes to give the fullest possible operation to traditional principles and practices of academic freedom in connection with the publication of writings which relate to discoveries and inventions. At the same time it is also recognized that governmental authorities, industrial concerns or other organizations which sponsor research projects may require temporary restriction on publication in order to protect the sponsor's interest in patentable inventions or discoveries, or because of considerations relating to the national interest or for other reasons considered sufficient by the sponsor. If the University has been authorized or required by the sponsor to determine whether or not publication would be in compliance with such restrictions and conditions, such determination shall be made by the Committee.

2.19.5 Appeals from Committee Determinations

If any interested persons should be dissatisfied with the determination or disposition by the Committee of any matter relating to any discovery, invention, patent, copyright, or copyrightable material, or the publication of any writing discussing or disclosing any of the foregoing, such person may request that the determination be reviewed by the President of the University. Any such request shall be in writing and shall be delivered to the Committee no later than fifteen (15) days after such person has received notice of the determination of disposition which he or she regards as unsatisfactory, or if sooner, within fifteen (15) days after the expiration date of the period of time within which the Committee should have reported its findings and determinations to interested parties. The Committee, on receipt of such request, unless it reconsiders its original determination and modifies the same in a manner which is satisfactory to all interested parties, shall forward within ten (10) days such request, together with its determination and recommendations, to the President. The Resident may affirm, modify or revise the Committee's determination, on the basis of such information as he wishes to consider, and his determination shall be binding on all interested parties. 'The Committee shall assist the President in reviewing any such matter in whatever manner the Resident may request.

2.19.6 Policy for Stored Course Materials

INTRODUCTION

The current Florida Tech Intellectual Property Policy as contained in the Faculty Handbook focuses on traditional Copyright and Patent issues. This policy is to create a balance between the goals of creating and disseminating knowledge while deriving revenue from commercially viable inventions. Through this policy faculty, staff, or employed students retain ownership of copyright material while they are required to disclosure to the standing committee on Intellectual Property all creations or inventions that have patent potential. The committee reviews each circumstance and recommends a course of action, be it to seek a patent, return the rights to the creator, or some other appropriate process.

The policy also contains a provision where the institution and the creator of copyright material can create a contract for the investment of resources, the control over the product, and the associated rights. As educational material is now frequently created, stored, and reused in a digital format it is necessary to establish procedures to govern this stored course material.

STORED COURSE MATERIAL:

In the digital world, the products of intellectual property create new forms of value and have an extended life that make them commercially viable. 'These products are changing the format, content and economics of educational delivery. This extension to the Intellectual Property Policy sets out some basic principles for stored course materials that will mutually benefit the creators and the institution. ?his extension to the Intellectual Property policy does not address patent or trademark rights and it is not intended to apply to traditional printed materials such as books and lecture notes.

A primary concern of this policy is to promote the broadest possible creation and dissemination of knowledge while protecting academic freedom.

With the university's encouragement and support, faculty are creating course materials that can be reused in later courses. Digitally encapsulated course segments range from simple inexpensive productions to major investments:

* If the stored course material is created by full time faculty in the context of the normal duties and does not involve the substantial use of Florida Tech resources, the ownership of the intellectual property products ~remain with the creator.

* If a substantial use of Florida Tech Facilities is involved in the creation of the product, the institution and the faculty member should plan together to enable the institution to recover its investment over time. A separate contact must be developed at the start of the project to cover the concerns and interests of the creator(s) and the institution. This will involve intellectual property rights as well as such matters as initial investments, protections, editorial control, marketing, royalties, extended use, and eventual disposition. This policy defines substantial use. Substantial use is a threshold for the investment of institutional resources that

require additional planning and preparations to insure the recovery of this investment over some period of time. If use is substantial, the university is acting with the faculty member as a partner in the development of stored materials and will have rights to those materials.

DEFINING SUBSTANTIAL USE

A faculty member makes substantial use of university facilities or funds if the use significantly exceeds the normal and customary level needed to support the teaching responsibilities. The department chair, under the supervision of the dean will determine whether the development of a stored course or stored segment made substantial use of university facilities. The input of service providers whose services were used or are planned to be used is relevant to this determination. Factors to be considered in the determination include the following, and others not listed here:

* It does not count toward substantial use, for a faculty member to use an online presentation system like the Blackboard, that is offered to all faculty for normal use in their courses.

* The fact that a course will be stored and offered later or offered remotely by the university does not affect a determination of substantial use.

* Use of any materials or services that are paid for out of an external grant to the faculty member does not count toward substantial use.

* lJse of the university's Technology Enhanced Content (TEC) facilities is not substantial use if it is intended to provide the faculty member with basic training in multimedia course development.

* Use of the university's TEC facilities is not counted toward substantial use if the faculty member reimburses the university at the university's then-current rate for use of the lab.

* Un-reimbursed use of the university's TEC facilities is presumed to be substantial if the TEC facilities staff say that, in their opinion, it will be substantial or that further effort would make a use substantial. Use of the library is not normally substantial, but extensive use of the library staff as research assistants could contribute toward a determination of substantial use.

* Use of the faculty member's regular time at school DOES NOT count toward substantial use if the faculty member is developing and teaching this course or a live equivalent as part of her normal teaching responsibilities and without a compensatory reduction in teaching load or significant additional teaching or support staff to support this course.

A determination that a use of university facilities is or is not "substantial" is not a determination that a proposed use is reasonable or within the capacity of the university's service providers. Service providers (such as the library or the TEC facilities) have limited bandwidth. Whether or not a use is deemed "substantial" under this definition, the service provider may advise a faculty member that a proposed use is significant, that it must be approved by the department chair or dean, that extra funding will be required to provide the level of service requested, or that the service cannot be provided in the time frame requested.

NOTE: The TBC facilities are those facilities provided to develop technology enhanced content. This is an expanding role in terms of services and service providers. TEC is subject to competing demands for limited resources and is required to maximize the use of institutional resources in achieving Florida Tech's educational and research goals.

If a faculty member does not make substantial use of university facilities in the development of copyrightable course materials, the copyright to those materials will belong to the faculty member, not to the university. The university may not make use of these materials in other courses without permission of the faculty member. The faculty member has the same rights to these materials in other courses or at other schools as he or she would have if they were written lecture notes.

WHEN THERE IS NO SUBSTANTIAL USE

If a faculty member does make substantial use of university facilities in the development of copyrightable course materials, the university will have rights to those materials. The faculty member and the university should enter into a contract at the start of the project, before development of any materials.

If there is no written contract between the faculty member and the university, a contract will be implied and it will include the following terms:

* The faculty member will own the copyright to the materials, but the university will have a license to use the materials.

* The university may use the materials in courses not taught by the faculty member for one year after the end of the first course that uses the materials, even if the faculty member leaves the university before this year has ended. The university may continue to use the materials indefinitely if the faculty member does not instruct the university to stop using the materials.

The faculty member will have artistic and editorial control over the materials, subject to constraints that the university may impose on the nature and level of its investment.

* The faculty member may revise the materials. Normally, the university will make reasonable efforts to work with the faculty member to revise the materials in a reasonable time. However, the university shall accelerate its efforts if the faculty member believes, in good faith, that continued use of some segment(s) would damage her or his reputation or expose the university or the faculty member to a successful lawsuit. In either of these cases, the university shall make its best efforts to work with the faculty member to promptly revise the materials in a way that is satisfactory to the instructor.

* The faculty member will deposit a copy of the materials with the university library, which will hold them as non-circulating reference materials for local use only. They may not be loaned out on interlibrary loan.

* In the event of a lawsuit, the same rules for liability allocation apply to stored course materials as to live materials. However, (a) If one of the parties (the university or the faculty member) uses the materials without revision, after being advised of a legal risk by the other, the using party assumes all risk, indemnifies and holds the other party harmless, from all legal claims arising out of the matters warned about by the other party. (b) A party sub-licenses at its own risk. For example, if the university sub-licenses materials to a third party, then as between the faculty member and the university, it is the university that lakes on the risk of any liability that arises out of or in connection with the third party's use of the materials. (c) If one of the parties uses the materials outside of their geographic scope, that party assumes all tisk, Indemnifies and holds the other party harmless, from all legal claims arising out of differences in legal rules in the out-of-scope geographic area. (The normal geographic scope is the country in which the faculty member teaches for the university. For example, if the university is based in the United States, then Canada is outside the geographic scope.)

A typical contract will include additional terms, for example.

* The university will normally be granted a longer term, at least two years after the end of the first course that uses the materials, during which it can use the materials.

* In the absence of a contract, the university will not owe the faculty member a royalty or fee for using the materials in courses not taught by the faculty member. The contract may specify such a royalty or fee.

* The university will normally be granted a right to sublicense the materials to other institutions, and the contract will specify the maximum term of the sublicense that the university may grant. In the absence of a contract, the university may not sublicense the materials.

* If the university sublicenses the course materials, the license fee will normally be divided equally between the university, the faculty member's department, and the faculty member.

* The faculty member may be granted a a right to sublicense the materials to other institutions. The contract will specify the maximum term of the sublicense that the faculty member may grant, and the royalty or fee due the university. In the absence of a contract, the faculty member may not sublicense the materials.

* The faculty member may be granted the right to market and use these course materials in courses presented independently of the university. If so, it will specify the royalty or fee due the university for such presentations. In the absence of a contract term, the faculty member many not market or use these materials outside of the university without permission of the university.

* The university may be granted the right to modify the course materials. In the absence of a contract term, modifications may not be made without the approval of the faculty member.