Intellectual Property

Source: Kansas Board of Regents Policy Manual: Chapter II, Governance - State Universities, A-8

Purpose

The purpose of the Intellectual Property policy is to foster the creation and dissemination of knowledge and to provide certainty in individual and institutional rights associated with ownership and with the distribution of benefits that may be derived from the creation of intellectual property.

Applicability

This policy applies to all full or part-time employees, including student employees, creating intellectual property related to the scope of their employment while under contract with the University. This policy also sets forth the rights of students in academic creations that are developed as a part of course requirements.

Policy

When revenues are to be shared, the creator(s) shall obtain his/her share only after the University has recouped any direct costs borne by the University for equipment and materials and costs paid to third parties. The portion of the revenues to be shared among multiple creators shall be shared equally unless otherwise agreed in writing by the creators.

1. General Copyright Policy

   The ownership of the various rights associated with copyright are dependent upon the specific type of intellectual property subject to copyright protection. The University shall assert limited ownership of some of the various rights as set forth below. Since the Kansas Board of Regents and the University have a fiduciary responsibility for the appropriate use of state funds, unless otherwise provided for under this policy, all rights associated with works produced as "work-for-hire" or other works that make "substantial use" of institutional resources belong to the institution. For purposes of this policy, the definition of "work-for-hire" is "… work prepared by an employee within the scope of his or her employment or a work specially ordered or commissioned by the institution to be prepared by the creator..." "Substantial Use" means that the creator receives more than normal support for the project or receives time and/or resources from the University specifically dedicated to the project.

   Note: the concepts of "substantial use" and "work-for-hire" are applicable to the General Copyright Policy and not to the Patent and Copyrightable Software Policy.

   1. Mediated Courseware

      The University shall have limited ownership or control rights for mediated courseware as specified below:

      1. Self-Initiated Mediated Courseware

         When employees develop mediated courseware without specific direction by the University, unless otherwise agreed, the ownership of the courseware shall remain with the employee. Normally, no royalty, rent or other consideration shall be paid to the employee when that mediated courseware is used for instruction at the University and such mediated courseware shall not be used or modified without the consent of the creator(s).

         The mediated courseware shall not be sold, leased, rented or otherwise used in a manner that competes in a substantial way with the for-credit offering of the University unless that transaction has received approval of the Provost. Should approval be granted to offer the course outside of the institution, the creator(s) shall reimburse the institution for substantial use of institutional resources from revenues derived from the transaction offering the course.

         As owner, the creator is responsible for obtaining copyright registration, if desired, and granting permission for use of copyrighted courseware materials, provided that such registration or permission is consistent with this policy.

      2. University-Directed Mediated Courseware

         When the University specifically directs the creation of mediated courseware by assigning one or more employees to develop the mediated courseware and supplies them with materials and time to develop the mediated courseware, the resulting mediated courseware belongs to the University and the University shall have the right to revise and decide who will utilize the mediated courseware in instruction.

         The University may specifically agree to share revenues and control rights with the employee. In the event that an agreement has been reached between the University and employee to share rights of the courseware prior to the development of such courseware, a written contract should be agreed to between the University and the employee(s) before the project begins. The contract should include details regarding revenue sharing, derivative works, licensing to external parties and control of the mediated courseware. The Office of General Counsel, in conjunction with the Office of Tech Transfer and Commercialization, will manage these contracts.

         The University is responsible for obtaining copyright registration and granting permission for use of the copyrighted courseware materials. The employee will cooperate with the University to secure the copyright, at the University's expense, including, without limitation, disclosing such courseware to the University, providing copies thereof, and signing any documents necessary to perfect the University's rights in the courseware materials.

   2. Scholarly and Artistic Works

      Notwithstanding any use of University resources or "work-for-hire" principle, the ownership of textbooks, scholarly monographs, trade publications, maps, charts, articles in popular magazines and newspapers, novels, nonfiction works, supporting materials, artistic works, and like works shall reside with the creator(s) and any revenue derived from their work shall belong to the creator(s). Except for textbooks, the University shall have a royalty-free use of the work within the University, unless otherwise agreed to in writing.

   3. Manuscripts for Academic Journals

      1. Notwithstanding any use of University resources or the "work-for-hire" principle, the ownership of manuscripts for publication in academic journals shall reside with the creator(s) and any revenue derived from their works shall belong to the creator(s).
      2. If the manuscript is to be published, the creator(s) shall request the right to provide the University with a royalty-free right to use the manuscript within the University in its teaching, research and service programs, but not for external distribution, and, if successful, the creator(s) shall grant such right to the University.
      3. Upon the establishment of national governmental or nonprofit entities whose purpose is to maintain in an electronically accessible manner a publicly available copy of academic manuscripts, the creator(s) may be required to provide to the appropriate entity a limited license for the use of each manuscript upon determination by the Kansas Board of Regents that the provision of a license will not jeopardize the publication of articles or infringe upon academic freedom of a faculty member.

   4. Copyrightable Software

      The rights to copyrightable software with an actual or projected market value in excess of $10,000 annually, except software included in mediated courseware, shall be determined pursuant to the Patent and Copyrightable Software Policy (Section B that follows below).

   5. Student Academic Creations

      The ownership of student works submitted in fulfillment of academic requirements shall be with the student. The student, by enrolling in the University, gives the University a nonexclusive royalty-free license to mark on, modify, and retain the work as may be required by the process of instruction, or otherwise handle the work as set out in the University's Intellectual Property Policy or in the course syllabus. The University shall not have the right to use the work in any other manner without the written consent of the creator(s).

      In those cases where the work is created from research or developmental activities that are collaborative efforts involving students, faculty or staff, or span several semesters, the student creator(s) may assign ownership of the creation, and related rights, to the University.

      If support from outside the University is provided for the student's project then the ownership of the creation will be determined by the agreement between the University and the other party.

2. Patent and Copyrightable Software Policy

   All right, title, and interest, in and to any inventions, patents obtained on inventions, or the ownership of copyrightable software with an actual or projected market value in excess of $10,000 annually resulting from University sponsored research shall be retained by the University or may be assigned to an organization (hereinafter called the "Organization") independent of the University and created for the purpose of obtaining patents on inventions, receiving gifts, administering or disposing of such patents and promoting research and the development of intellectual property at the University by every proper means.

   The following requirements shall be followed with respect to inventions or software:

   1. Disclosure

      Anyone who conceives an invention or who develops copyrightable software (that is not included in mediated courseware) resulting from a research project sponsored by the University shall report the matter to the Executive Director of the Office of Tech Transfer and Commercialization, or designee, who will recommend whether or not to pursue patent and/or copyright protections. Disclosure must be made by submission of an Intellectual Property Disclosure Form. Disclosure Forms are available online.

   2. Disposition/Ownership

      If the University or Organization decides that the intellectual property associated with an Intellectual Property Disclosure Form does not warrant protection, the named contributor is free to pursue commercialization. In such case, however, the University does not relinquish its right to publish any of the data obtained in the research project, or use the data for teaching, research, or other educational and academic purposes.

      If the University or the Organization decides not to further the use of the copyrightable software, it shall assign the rights therein to the creator(s), subject to the University's publication rights or reserved rights to use the software for educational purposes.

   3. Revenue Sharing

      1. When any revenue is obtained by or on behalf of the University from the development or assignment of any patent or from royalties, license fees, or other charges based on any patent or copyrightable software, the net revenue, if any, will be distributed as follows:

         1. 50% to the Contributor(s) (Contributor Share);

         2. 25% to the Center or College or Lab in which the work was performed (WSU Share); and

         3. 25% to the University or Organization for the purpose of supporting operations of the Office of Tech Transfer and Commercialization (University/Organization Share).

      2. Revenue sharing shall begin only after the University recoups costs as set forth in this policy. On a case-by-case basis determined by the Office of Tech Transfer and Commercialization and the appropriate College or Department, the WSU Share and the University/Organization Share may be modified from the above distribution percentages so long as the Contributor Share remains at or above 50%.
      3. All revenue shall be paid to the University or Organization. Non-cash consideration shall be calculated based upon the fair market value at the time of distribution. In the event that there is net revenue to distribute, net revenue will be distributed not more often than quarterly and no less often than annually and will be subject to the Terms and Conditions of the license agreement or like arrangement. Distribution, if any, will be based on the State of Kansas fiscal year. There is no guarantee of net revenue to distribute.

   4. Sponsored Research

      1. In case of cooperative research sponsored in part by an outside corporation or individual, a written contract shall be made between the University and the cooperating agency. This contract should include a statement of policy substantially equivalent to that outlined below:

         It is agreed by the parties to this contract that all results of experimental work, including inventions, carried on under the direction of the scientific staff of the University, belong to the University and to the public and shall be used and controlled so as to produce the greatest benefit to the public. It is understood and agreed that if patentable inventions or copyrightable software grow out of the investigation and such inventions or software have commercial value, the cooperating agency shall receive preferential consideration as a prospective licensee, with a view to compensating said cooperating agency in part for the assistance rendered in the investigation.It is further agreed that the name of the University shall not be used by the cooperating agency in any advertisement, whether with regard to the cooperative agreement or any other related matter without the advance and written authorization of the University.

      2. In case of a research project where it is proposed that all costs including overhead, salary of investigator, reasonable rent on the use of equipment, etc., are to be paid by an outside party, the University shall negotiate with the outside party the appropriate disposition of any resulting patent or copyrightable software rights prior to the provision of any funding by the outside party. "Appropriate disposition" shall include an option to negotiate a license to any resulting intellectual property. The University shall reserve a royalty-free right to publish all data of fundamental value to science and technology and to use the patent or copyrightable software rights for teaching, research or other educational and academic purposes.

   5. Changes

      Changes in the above policies shall be made to conform to the requirements of the United States Government when contracting with the United States Government or a Federal Government Agency.

3. Trademark

   The University reserves the right to control and protect the trademarks and service marks of the University.

Institutional Procedures

The University shall establish procedures that require employment contracts and course catalogs or syllabi to state that the employee or student is subject to the Intellectual Property Policy of the University and to resolve questions concerning intellectual property and any disputes that develop under this policy. Final decisions on disputed matters will be made by the University President, or designee, and shall constitute final agency action.

Implementation

This policy shall be included in the WSU Policies and Procedures Manual and shared with appropriate constituencies in the University.

The Provost shall have primary responsibility for publication and distribution of this University policy.