Academic Senate Policy XX-XXX

SAN FRANCISCO STATE UNIVERSITY

INTELLECTUAL PROPERTY POLICY AND PROCEDURES

 

Scope

            There are many forms of intellectual property associated with the creative and scholarly activities of faculty, students, administrators, and staff and this policy covers their entirety.  This document sets forth a statement of policy regarding the ownership of, and procedures for, the exploitation of this intellectual property. Intellectual property created before the effective date of this policy is subject to the policies/understandings in place at the time of the projectÕs undertaking.

 

Governing Principles

            The following principles should guide the application and interpretation of this Policy and Procedures:

1.  Encouragement of Intellectual Property Development.  The faculty, staff, students and administrators of San Francisco State University recognize the value of intellectual property created as a result of the educational mission of the University.  All members of the University community benefit from the development of intellectual property and the creation of such materials and products is encouraged and supported. Moreover, the institution as a public agency shall ensure that any inventions are reduced to practice so as to serve the public interest. By making every effort to ensure faculty, students and the University retain appropriate intellectual property rights, credits, and associated benefits in the distribution of materials and products, the University seeks to encourage intellectual property development for the enrichment of the broader community of scholars.   

2.  Academic Freedom and Preeminence of Scholarly Activities.  The UniversityÕs commitment to its education mission is primary, and this policy does not diminish the right and obligation of faculty members to disseminate the result of research and creative activity for scholarly purposes.  The missions of teaching and scholarship have preeminence over that of the transfer and commercialization of research results. 

3.  Reasonableness and Fairness.  This policy sets forth general principles and procedures and is not designed to address every conceivable circumstance.  Under the principle of fairness, the Creator(s) and the University mutually operate so that no one will be allowed either to deliberately create or exploit inadvertent exceptions to this policy to her/his own advantage.  If the need for corrections or exceptions to this policy is identified, appropriate recommendations shall be made by the Academic Senate to the President.  A fundamental principle of this process shall be, when in doubt about ownership, negotiate in advance.

4.  Disclosure and Transparency.  San Francisco State University desires to assure that all ideas, discoveries, and other intellectual property are properly disclosed and utilized for the greatest possible public benefit.  The principle of transparency promotes both the disclosure and avoidance of actual and apparent conflicts of interest associated with external commercial activities, by requiring that such activities be disclosed in advance.  If the activities are consistent with this policy and its principles, the Creator(s) should have no reason to avoid disclosure. 

 

Definitions

1.     Intellectual Property. This includes inventions, discoveries, processes, unique materials, copyrightable works, original data, electronic media, and other creative or artistic works which have value.  It is protectable by statute or legislation, such as patents, copyrights, and trademarks. It also includes the physical embodiments of intellectual effort as well as the virtual embodiments as is the case with software.

a)     Copyright is a form of protection provided by the laws of the United States (Title 17, U. S. Code) to the authors of Òoriginal works of authorship,Ó including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works. Copyright is owned by the creator and is secured automatically when the work is created (copied or fixed in final form).

b)    A patent for an invention is a grant of property rights by the U.S. Government through the U.S. Patent and Trademark Office. The patent grant excludes others from making, using, or selling the invention in the United States.  A patent is granted to the inventor of a new and useful machine, design, or plant after submitting an application and paying appropriate fees. International patents exclude others from making, using or selling the invention in other countries.

c)     A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms ÒtrademarkÓ and ÒmarkÓ are commonly used to refer to both trademarks and servicemarks. Trademark rights are secured automatically by the first party to legitimately use the mark in commerce and may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.

2.     Support. This includes the financial, technological and human resources used in the creation of intellectual property.

a)     Creator(s) are individuals or a group of individuals, singly or as a group, who make a substantive contribution to the creation of intellectual property.  These individuals may include faculty and students.

b)    Inventors are individuals or a group of individuals, singly or as a group, who conceive of or reduce to practice an invention.

c)     Customary University Support is the resources usually and customarily provided and includes such support as office space, library facilities, ordinary access to laboratories, studios, computers and networks, salary, or sabbatical leave as customarily provided by a college, relative to the practices of the profession.  In general, it does not include use of students or employees as support staff to develop the work, or substantial use of specialized or unique facilities and equipment, or other special resources provided by the University unless approved as an exception.  Individual exceptions may be approved on a case by case basis.

d)    Extraordinary University Support shall mean extra resources, including but not limited to: major internal grants, large development stipends and/or start-up costs, significant release time, specialized technical support, significant lab space, specialized hardware/software (purchased for university for specific project), student employees/graduate assistants funded for a particular project, staff or other support personnel, or University facilities dedicated to that project provided beyond "normal and customary" and used directly for the development of the intellectual property. The definition of extraordinary support differs from college to college; each college is encouraged to define standards of extraordinary support for their own college.

e)     Sponsors are individual or public/private agencies who provide funding or have a contractual relationship with the Creator(s) or Inventor(s).

f)     Full Commission or Assignment.  Intellectual property shall be commissioned or assigned when there exists between the University, acting through any of its agents or auxiliaries, and the Creator or Inventor, a contractual agreement to develop that specific intellectual property. For a commission or assignment, the contractual agreement shall specify the terms applying to ownership of the intellectual property and the distribution of royalties between the Creator(s) or Inventor(s) and the University.

 

Ownership of Intellectual Property

 The University President or his/ her designee is responsible for overseeing policy matters relating to intellectual property and affecting the UniversityÕs relations with Inventor(s) and Creator(s), public agencies, private research sponsors, industry and the public.  Nothing in this policy changes the rights and obligations a faculty member has with respect to the substantive content contained or conveyed by a faculty member in a specific academic course, nor does it change the rights and obligations of the University to respect academic freedom and intellectual property rights.

1.     Copyright. Creators own their traditional academic copyrightable works (books, articles, dissertations, papers, study guides, syllabi, lecture materials, tests or similar items, novels, poems, musical compositions, or other creative works). The University recognizes that faculty and students should benefit from the results of their work. 

a)     Intellectual property is considered to be the exclusive property of the Creator(s) if the UniversityÕs contribution to the development of the intellectual property has not exceeded those resources usually and customarily provided (see definition above). In all cases of course material development, the University retains exclusive right to course number and description as listed in University catalogs.  The Creator(s) retains the intellectual property rights to distribute the work and is not obligated to share any part of the revenue from the sale or licensing of the content with the University or, except as provided otherwise in this policy or state or federal law, with any office or organization within the University. The Creator(s) has sole responsibility for the registration of intellectual property material for which the University has no proprietary interest.

b)    The University has a shared proprietary interest in intellectual property created using resources beyond those of Customary University Support. In these cases, the Creator(s) must share with the University any royalties or other benefits from commercialization of the work.  While the Creator(s) of the intellectual property shall retain the rights to intellectual property contained there-in, distribution or commercialization of the work will require mutual consent and agreement between the Creator(s) and the University. The University has responsibility for the registration of intellectual property for which it has a proprietary interest.

c)     Intellectual property developed by faculty as a Òwork for hireÓ and Fully Commissioned by the University or developed by a non-faculty employee within the scope of his or her employment and/or specifically ordered or commissioned for use by the University shall be owned solely by the University both in copyright and distribution. The University has responsibility for the registration of intellectual property works for which it has exclusive ownership.

d)    The University maintains the right to make backup copies of electronic instructional content in order to protect against accidental or other deletion /corruption.

2.     Patents. In general, ownership of an invention resides with the Inventor(s).

a)     Where the University provides extraordinary support for the development of an invention, the University will have a joint interest with the Inventor(s) in that invention.

b)    In some disciplines and colleges, the costs of developing an invention will be higher than in others. In these colleges, it is presumed that extraordinary resources were provided to the inventor for the development of the invention.

c)     The University shall have a joint interest with the Inventor(s) in all patents applied for by the University.  

3.     Trademarks. Because trademarks are generally created during the commercial exploitation of intellectual property, ownership of the trademark shall be held by the entity responsible for commercial development of the intellectual property.

a)     The trademark owner is responsible for maintaining and defending the trademark.

4.     Sponsored Research.   If an outside agency provides support for a scientific research project, which may result in the conception, reduction to practice, or development of intellectual property, it may be necessary for the University to enter into an agreement with that agency governing the ownership of intellectual property rights and the distribution of royalties. In such cases, the University may have to have a written agreement with the Creator on file in order to legally execute contractual documents, which agree to dispose of inventions of the faculty.

a)     Individuals engaged in research on sponsored projects that stipulate assignment of intellectual property rights to the University or the sponsor shall (a) execute a written agreement with the Office of Research and Sponsored Programs at the time the grant or contract is accepted by the University, (b) execute an Assignment of Rights either to University or to the sponsor as the circumstances may require, and (c) promptly disclose any inventions to ORSP by means of a Patent Disclosure form.

b)    The Office of Research and Sponsored Programs shall notify the sponsor of any intellectual property and shall take the necessary further action.

 

Exploitation of Intellectual Property

            It is in the interest of the University and of the Creators that intellectual property created as a result of the educational mission of the University be widely distributed for the benefit of the broader community of scholars. When dealing with the commercial exploitation of intellectual property, the intent of this policy is to ensure the costs of commercial exploitation and the financial benefits of commercial exploitation are distributed equitably. The University is expected to actively pursue development of intellectual property in which it has an interest. Should the University decide not to exploit property in which it has a shared interest, the creator shall be given the right to exploit the property.

1.     Disclosure and assignment of ownership rights for copyrighted material.

a)     Any Creator(s) with an intent to market or distribute copyrighted material created as part of their faculty role in part or in whole for commercial or non-commercial reasons shall disclose the nature and detail of their intellectual property to their Chair and Dean, or his/her designee at the earliest possible date.  The Dean will then pass on the disclosure to the Vice President for Academic Affairs, also at the earliest possible date. 

b)    Within 120 days after such disclosure, the Vice President for Academic Affairs or his/her designee shall notify the Creator(s) in writing whether it is the UniversityÕs intention to claim any interest and to negotiate assignment of all jointly owned proprietary interests of the intellectual property. If such notification cannot be made during that time period, the Creator(s) shall be notified as to the reason for the delay and the additional time necessary to make such determination.  If the University decides not to request assignment or ownership rights, and there are no restrictions by the sponsor of the intellectual property, the University will release its proprietary interest to the Creator(s).

c)     Identification of Extraordinary Support.  The unit(s) that has provided extraordinary support to the Creator(s) will be responsible for documenting the extent of that support and reporting it to the college dean with copies to the Creator(s), Developer, or Sponsor, as applicable.  All such reports must be in writing and completed within 30 days of the disclosure of the intent to market or distribute. 

d)    Dean's recommendation. The college dean, in consultation with the Chair and Creator(s), will then make a recommendation to the Vice President for Academic Affairs as to the ownership interests to be retained by the University for specific creative works or inventions. 

e)     Written Agreement. The Vice President for Academic Affairs shall then convene all parties involved to make a determination of the level of University support and subsequent ownership rights.  The written agreement will be signed by both the Creator(s) and the University President or his/her designee before the commencement of the agreed upon enterprise. 

f)     Dispute Resolution of Ownership Rights.  In cases where there is a disagreement between the Creator(s) and the University as to ownership rights or the retention of such rights by the University, the University Research Council shall recommend to the President what further action the University should take.  The Creator(s) of any intellectual property may petition the University to waive the UniversityÕs non-exclusive marketing rights. The determining official for this action is the President of the University. Such a petition should include a description of the content sufficient to enable the president to make a tentative judgment as to whether commercial potential exists.

2.     Disclosure and ownership rights for patented material.

a)     To protect the inventor's interests and to establish the inventorÕs ownership rights to inventions conceived before employment at San Francisco State University, each inventor shall disclose to the Office of Research and Sponsored Programs at the time of employment, inventions conceived, reduced to practice, developed, or being developed by the inventor.

b)    In order to determine the rights of the inventor and the University, inventors shall promptly report to the Office of Research and Sponsored Programs potentially patentable inventions conceived, reduced to practice, or developed while employed or enrolled at the University.  Such disclosures shall be made in writing as soon as possible but no later than 30 days before the date of first publication of the invention.

3.     Development, Promotion and Licensing of Media, Products and Other Intellectual Property. Upon assignment of ownership and with consent of the intellectual property owner, the Associate Vice President for Research and Sponsored Programs or his or her designee shall act to bring to the public all intellectual property in which the University has distribution rights. In doing this, he or she shall use whatever means appropriate for development, promotion and licensing of each creation, consistent with the expressed goals of the Intellectual Property Policy.

a)     In promoting the distribution of any intellectual property, the University is free to enter into agreements with any outside agent which it deems will successfully aid the University in promoting the product. If a particular creation is to become subject to such an agreement, this shall be made known to the Creator(s), who will also be consulted about any rules governing the relationship among the outside agent, the University and the Creator(s) due to such agreement. The Creator(s) or his/her representative shall be a member of the committee selecting the licensing agent and shall participate in the development of the licensing agreement if the Creator(s) so chooses.

b)    The University is free to enter into any licensing agreements that it deems beneficial to the University, the Creator(s) and the public in general, provided such agreements are not prohibited by a sponsoring agency's rules or regulations. Any terms governing the relationship among the licensee, the University or the Creator(s) due to such licensing agreements shall be disclosed to the Creator(s), the dean of the college, the Vice President for Academic Affairs, the Vice President for Administration and Finance and the President.

c)     Any commercial license or assignment for any intellectual property shall include the reserved right for the University to use the intellectual property for research or educational purposes free of royalty.

d)    Creators of intellectual property owned wholly by the creator may at their option, refer their property to the University for commercial exploitation.  If the Vice President for Academic Affairs recommends such a disposition, and upon execution of an assignment of rights with the University, costs and royalties resulting from this exploitation would be shared as described in this policy.

4.     Allocation of Costs and Revenues. All income received by the University for the commercialization of University-owned intellectual property will be appropriately used for the research and educational functions of the University. In the absence of any contract to the contrary, and where there is a shared proprietary interest,  income from intellectual property will be shared as follows:

a)     The University will be reimbursed for expenses incurred developing and exploiting the property.

b)    In the absence of a negotiated agreement, the default guideline for dividing net royalty income derived from commercialization of intellectual property shall be 50% to the creator(s) and 50% to San Francisco State University.  The share distributed to the creator shall be the personal income of the inventor and is not to be considered wages or salary compensation to the employee from the University.  The share distributed to the University shall be divided with 15% to the home Department of the creator, 15% to the home College of the creator, and 20% to be determined by the Vice President for Academic Affairs.

c)     If the intellectual property creation is the result of sponsored research, and the sponsoring agency regulates the distribution of royalty income, such regulations shall apply rather than those in the above paragraph. Also, if such regulations apply because of development, promotion or licensing agreements with an outside agent, they shall take precedence over those cited here.

d)    If a third party is used to assist with the commercialization of intellectual property, the provisions of this section shall govern only that part of the royalties in excess of the portion retained by the third-party.