205 Application of Policies and Procedures
The policies for licensing, patents, educational and professional materials development, and registration of copyrights apply to all University of Oregon employees whose work-related assignments, regardless of location, might enable them to develop new knowledge which was conceived purposely or fortuitously. The policies also apply to other persons using institutional facilities, personnel, or other resources.
Inventions or technological improvements to which these policies apply include any new and useful process, machine, device, manufacture, or composition of matter, and any new and useful improvements.
Educational and professional materials to which these policies and procedures apply are those used or distributed primarily for the formal or informal instruction or education of professional or general students. Such materials may result from the instructional, research, or public service activities of employee.
Materials to which these policies and procedures apply are exemplified by:
- writings, lectures, study guides, books, textbooks, journal articles, glossaries, laboratory manuals, proposals, musical or dramatic compositions, listings, tables, charts, graphs, figures, manuals, codes, software, unpublished scripts, and programmed instructional materials;
- video and audio recordings, live video and audio broadcasts, cassettes, tapes, films, filmstrips, slides, transparencies, and other reproductions and visual aids; and
- computer programs and computer-assisted courseware.
Inventor(s) means the individual(s) who first conceived the idea, invention, or technological improvement.
Author(s) means the individual(s) responsible for primary subject-matter guidance and development of educational and professional materials.
Material is said to be in the public domain if it is not protected by common law or statutory copyright and, therefore, is available for copying without infringement.
Publication occurs when by consent of the copyright owner, the original or tangible copies or phonorecords of a work are sold, leased, loaned, given away, or otherwise made available to the general public, or when an authorized offer is made to dispose of the work in any such manner, even if a sale or other disposition does not in fact occur.
The term "owner" refers to the party who owns or controls the copyright and who has the right to sell, assign, distribute, or license the use of such material.
Institution-assisted effort is individual effort which involves institution support in the form of significant personnel time, facilities, or other resources.
Sponsored effort is institution-assigned effort, and assignment, among others, to conduct research and to develop materials, with substantial or all of the personnel time, facilities, or other resources for the assignment being provided by the institution, or an outside sponsor such as a federal agency or private corporation.
The University of Oregon reserves the ownership rights to all institutional work-related inventions, and to educational and professional materials developed with institutional resources, including the right to a free and irrevocable license for usage, and if desired, the licensing for use by others. The foregoing does not preclude an institution employee from granting copyright privileges to the publisher of a scholarly or professional journal when no compensation or royalty is involved.
Educational and professional materials shall be considered as having been developed in the course of employment in those cases when the individual was employed for the specific purpose of preparing or producing the material, or was specifically directed to develop the material as part of general employment duties and responsibilities.
Lecture notes and other materials prepared by academic staff in connection with a teaching assignment and with only incidental use of institutional facilities, funds, staff, and other resources normally shall be viewed as flowing from individual effort and initiative and shall not be construed as having been produced in the course of discharging the obligations of employment.
Funds and facilities provided by governmental, commercial, industrial, or other public or private organizations, but administered and controlled by the institution, shall be considered to be funds and facilities provided by or through the institution.
If it is determined that inventions or materials developed are not related to work or to an assigned project and that development involved no or minimal use of institutional funds or facilities, or that the material developed is incidental to the individual's work assignment, or that the institution has no right, vested interest, or claim in an invention, and the institution decides to forego the licensing or patenting of an invention or the publishing and copyrighting of the material, the applicable Dean or designee may recommend to the Office of the Vice President for Research and Innovation that the institution's interest and rights be waived, and that a statement be issued which waives any institution claim. Such a waiver may be granted only if preexisting commitments to sponsoring agencies have been cleared. Upon receipt of such waiver, the inventor or author shall be free to take such further steps as desired. In the case of an invention, or technological improvements, interventions, and assessments, however, the institution has usually provided substantial laboratory, information technology, supply and equipment support. Therefore, the Office of the Vice President for Research and Innovation will normally recommend the execution of a limited release only after the institution has exhausted efforts to license or patent the invention or work. This release enables the inventor or author to exploit the invention or work and recover reasonable exploitation, licensing, and statutory intellectual property acquisition costs related thereto and a sum up to $10,000 out of the royalty income receipts, with the inventor or author sharing equally in the balance of the net royalty income.
Except as provided above, the ownership rights to all forms of educational and professional material in the form of books, musical or dramatic composition, architectural designs, paintings, sculptures, or other works of comparable type developed by institution employees, either in conjunction with or aside from their employment, shall accrue to the author, unless the material is prepared in compliance with contractual provisions or as a specific work assignment, or significant institutional resources were utilized. An academic staff person's general obligation to produce scholarly works does not constitute such a specific institution assignment.
In accepting grant and research funds from governmental, nonprofit and commercial agencies, the institution and researcher shall agree to the conditions in the agreement with the sponsoring agency pertaining to licensing, patent policies, and ownership of all copyrightable material conceived and developed in the course of work required by the agreement. Such agreements shall normally include provisions enabling the institution to publish the findings of research and rights to take title to patentable inventions, discoveries, and educational and professional materials arising from the work performed. In the absence of such agreement or terms, the products shall be the property of the institution.
At the time any sponsored assignment is made and when inventions, new technology, or materials subject to copyright may be expected to be produced, affected institutional staff are to be advised of copyright limitations and rights to inventions imposed by extramural sponsors as well as institutional policies and procedures regarding the same.
In cases where it appears in the interest of the institution, inventor, and sponsor, and upon the recommendation of the applicable Dean or designee, the Vice President for Research and Innovation or designee may grant rights to the sponsor, including the right to acquire a proprietary interest in and to any invention or patent developed during the sponsored research project.
When an invention or copyrighted work is developed in the course of sponsored research, the sponsor may be granted a nonexclusive license for its own use and, only if appropriate, an option to acquire a limited term, royalty-bearing, exclusive license to such invention or copyrighted work.
Employees and any other persons who conceive or develop inventions or technological improvements while engaged in activities utilizing institutional resources shall report the findings on an Office of the Vice President for Research and Innovation standard disclosure form to, and confer with the person designated by the Vice President for Research and Innovation to administer licensing, patent, educational and professional materials development and copyright policies and procedures. The purpose of the disclosure of an invention or materials developed is to enable the institution to determine potential for licensing, patenting, publishing, and registering of copyright, and the equities of the inventor, author, and institution. Disclosure of details of an invention which might jeopardize the licensing or patent potential may be delayed until the Office of the Vice President for Research and Innovation has acted.
If it is determined that the institution has vested interest and claim in an invention or copyrighted work, the inventor or author shall enter into a the Office of the Vice President for Research and Innovation’s Licensing and IP Assignment Agreement. The agreement shall be prepared initially at the institution.
As part of the acceptance of the Notice of Appointment, each employee is obligated to comply with conditions of employment including agreement to assign rights to inventions conceived and materials developed while employed by the institution.
The Vice President for Finance and Business Affairs delegates to the Vice President for Research and Innovation and other designees in the Office of the Vice President for Research and Innovation, authority to obtain licensing, production, and publishing agreements and patents, develop and approve forms used in administering licensing and patent policies, and execute all types of agreements, waivers, releases, and net royalty distribution agreements.
The institution reserves the sole right to make agreements with sponsoring agencies and to include therein provisions regarding ownership and disposition of rights in inventions and materials deemed to be in the interest of the institution and public.
The Office of the Vice President for Research and Innovation President is responsible for informing employees regarding institution licensing, patent, educational, and professional materials development, and copyright policies and procedures. The Vice President for Research and Innovation may delegate this responsibility.
The duties of the designated administrator shall be:
- to protect confidentiality of the inventor's or author's disclosure as needed to acquire statutory intellectual property rights,
- to counsel with the inventor or author, examine the invention or materials disclosure, and appraise the equities of all concerned parties. If it is determined that the institution has no rights, vested interest, or claim, the designated administrator shall recommend that the Vice President for Research and Innovation approve a release or waiver for the inventor or author,
- to counsel with the inventor or author concerning institution policies and procedures applicable to the invention or material and with policies of sponsoring agencies, if any, and to assist with compliance,
- to recommend to the Vice President for Research and Innovation options for maximizing public, institution, and inventor or author benefits when seeking licenses, patents, and publishing agreements. Such action shall be preceded by the execution by an inventor or author of a Licensing and IP Assignment Agreement initiated at the institution, and
- to recommend to the Vice President for Research and Innovation appropriate action pertaining to the invention or material within 60 days after its disclosure.
When institutional facilities are utilized on a reimbursable basis to develop educational or professional materials or to conduct research on an invention, an agreement shall be prepared and recommended by the Office of the Vice President for Research. Such agreement shall be executed in advance of use of the facilities and shall set forth the understanding regarding the use of facilities, ownership rights, and financial arrangements.
In determining equities relating to ownership rights in an invention or material, institutional personnel and the Vice President for Research and Innovation or designee shall follow these guidelines:
- Consideration shall be given to the equity of all parties in light of circumstances surrounding the development of the new knowledge.
- If an invention or material is deemed to be the result of joint efforts, an agreement shall be reached among the inventors or authors, and institution for distribution of any royalties. The total of net royalty income paid to all inventors or authors shall not exceed the maximum percentage of net royalty income which institution policy allows to be distributed to a single inventor or author.
- In the event an agreement cannot be reached regarding the amount of equity of each party and subsequent distribution of net royalty income, the Vice President for Research and Innovation shall recommend resolution to the Provost after having taken affirmative steps to assure thorough consideration of the equities of all parties.
The institution encourages the Vice President for Research and Innovation to assist the invention commercialization process to the extent that the invention contributes toward fulfillment of the institution's mission. Resource allocation for licensing, patenting, and technology transfer is the responsibility of the Vice President for Research and Innovation.
The Vice President for Research and Innovation or designee shall counsel with inventors to determine how to make the invention available to industry and the public in an effective and non-discriminatory manner, to obtain reasonable royalties for use in furthering institutional education and research objectives, and to reward the inventor through participation in net royalty income received.
When feasible, the Office of the Vice President for Research and Innovation shall grant non-exclusive, royalty-bearing licenses to all qualified organizations. Exclusive licenses may be recommended if it is determined that such a license is required in the best interest of the public, institution, and inventor in order to encourage marketing and eventual public use of the invention.
Before granting an exclusive license, a bona fide effort shall be made by the institution to apprise qualified organizations known to be interested in the subject matter of the invention and in developing the invention through a non-exclusive license.
When it is deemed appropriate to grant an exclusive license, the length of exclusivity shall be limited to that time deemed necessary to provide the licensee with the necessary incentive and opportunity to market the product and recover developmental costs. Exclusive licenses may include the right of the licensee to sublicense others.
Licensing and sponsored research agreements shall include provisions:
- prohibiting the use of the name of the researcher, institution, either directly or implied, in any advertising relating to the commercialization of the product or process or in supporting evidence provided in prospectus literature, without prior written approval of the institution;
- in general, except in cases where contracting with other governmental authorities or barred under applicable law, indemnifying the institution against any and all claims, demands, damages, costs, and other related items arising from the manufacture, use, or sale of the licensed invention or process, and, whenever possible, from any liability for damages resulting from a final judicial determination that such commercial utilization of the invention constitutes an infringement of any third party patent;
- allowing the institution to produce and use the invention or process for its own educational or research purposes;
- allowing the institution and inventor to publish the findings of research and to continue with research related to the process or invention including publication of future findings;
- for receiving or examining accounting records maintained by the licensee and any sub-licensees; and
- for removing licensing rights and terminating the agreement should the licensee fail to develop and market the product within a reasonable time.
250 Distribution of Royalties
The Office of the Vice President for Research and Innovation shall act on behalf of the institution to conclude agreements to share net royalty income accruing to the institution from licensing and patent agreements, and from the sale, lease, or licensing of materials outside the institution.
Agreements involving the sharing of net royalty income shall be initiated in writing at the institution by the Office of the Vice President for Research and Innovation. In determining disposition of income, due consideration shall be given to the equity of all parties in the light of all circumstances surrounding the development of the invention or material.
Prior to distribution of any royalty income, the Office of the Vice President for Research and Innovation shall require deduction from gross royalty income, of all institutional expenses and reasonable costs incurred in developing the invention or material, expenses incurred in enforcing or defending any patent, copyright litigation, licensing, interference, and marketing costs attributable to the invention or material, as well as any other expenses deemed necessary to recoup. Gross royalty income minus all such costs and expenses constitutes net royalty income.
The maximum net royalty income which may be distributed to the inventor shall be 40 percent of the first $50,000 of net royalty income received by the institution, 35 percent of the next $50,000, and 30 percent of all additional net royalty income.
The maximum net royalty income which may be distributed to the author shall be 50 percent of the net royalty income received by the institution.
If the originator and developer of an invention or author of material cannot be determined, or if the inventor or author waives any claim to net royalty income, the percent share of royalties intended for such person may be distributed, upon recommendation of the Office of the Vice President for Research and Innovation, to the originating department, laboratory, or center at the institution.
In establishing copyright registration procedures, institutional personnel and Office of the Vice President for Research and Innovation shall follow these guidelines:
All educational and professional materials developed with significant institution-assisted effort shall be registered for copyright, at the option of the institution, in the name of the institution. The institution shall provide for disclosure of appropriate credits and shall counsel with participating employee regarding presentation of materials.
Educational and professional materials developed with minimal institution-assisted effort should be registered for copyright, if at all, in the name of the author. The cost of institutional support for such effort will be agreed upon by the author and Office of the Vice President for Research and Innovation, and the author will reimburse the institution for such costs out of royalties received from the registered materials.
Materials developed under sponsored assignments should be registered for copyright, if at all, in the name of the institution, with appropriate acknowledgement to the author. The institution and author are obligated to adhere to any publication rights included in agreements made with grant or contract sponsors.
Educational and professional materials developed solely by individual effort shall be registered for copyright, if at all, in the name of the author. All rights, including those to royalties, reside with the author.