Technological change has made intellectual property issues increasingly complex. As a consequence both faculty and the University must together develop, respect and enforce clear intellectual property policies to best achieve the University's mission of instruction, research, and providing service to the community, professions, and disciplines, while remaining consistent with academic freedom, copyright law and tradition. Goals of the policy herein include protecting the interests of the faculty, adjunct faculty, students, and the University while encouraging implementation of technology in their courses and the development of innovative courseware and educational methods. This policy is applicable to anyone engaged in academic pursuit at the University. In the United States, these seven rights are recognized: [17 U.S.C. 106, 106A. http://www.copyright.gov/title17/92chap1.html]
- The reproductive right: the right to reproduce the work in copies.
- The adaptive right: the right to produce derivative works based on the copyrighted work.
- The distribution right: the right to distribute copies of the work.
- The performance right: the right to perform the copyrighted work publicly.
- The display right: the right to display the copyrighted work publicly.
- The attribution right (sometimes called the paternity right): the right of the author to claim authorship of the work and to prevent the use of his or her name as the author of a work he or she did not create.
- The integrity right: the right of an author to prevent the use of his or her name as the author of a distorted version of the work, to prevent intentional distortion of the work, and to prevent destruction of the work.
A. Works Involving the Use of Ordinary University Resources
(1) Each faculty member is the exclusive copyright owner of works created at the initiative of the faculty member with ordinary University resources, including ordinary resources used during a research leave, and which are intended to disseminate knowledge for traditional academic purposes. The faculty member has the right to license such material, and such license agreement must be done in writing (with the exception being subsection A8 below). Faculty are encouraged to mark all their copyrighted work with the typical copyright symbol, but copyright protection is in place with or without such markings.
(2) Examples of "ordinary University resources" are those commonly made available to similarly situated faculty include but are not limited to the ordinary use of libraries, online learning management systems (such as the University's current Blackboard system), office supplies, faculty office space and equipment, University laboratory space and equipment, administrative and technical support staff, telephones, computers and University computer facilities, and other informational resources. Works developed as part of a research leave are considered to have used ordinary resources.
(3) Examples of such works created by faculty with ordinary University resources include but are not limited to books, articles, theses, papers, lectures, syllabi, novels, poems, musical composition, visual works of art, transparencies, CD-ROMs, video tapes, DVDs and computer software.
(4) Except as noted in section B below, the faculty member's exclusive copyright ownership extends to material created for the content of any instructional technology intended to disseminate knowledge for traditional academic purposes, regardless of the specific medium through which this material is produced or disseminated, and regardless of whether or not this material is archived in any format by the University.
(5) Where the authorship of a work created with ordinary University resources cannot be attributed to one or a discrete number of authors but instead result from simultaneous/sequential contributions over time by multiple authors, the copyright shall be jointly owned by all participating authors.
(6) If the University assists in commercializing a work created with ordinary University resources, the author shall, through written agreement, assign or exclusively license the work to the University and establish a mechanism for the sharing of commercial proceeds with the author.
(7) The University may, with the written agreement of the faculty member, initiate copyright protection of the faculty member's work.
(8) In the event a faculty member becomes unable, due to factors beyond his or her control, to complete the teaching of a course after the course has begun, permission to use any course materials owned by the faculty member which are essential to the University's ability to arrange for completion of the course shall be deemed granted by the faculty member for the duration of and exclusive use for the course.
B. Works Involving the Use of Extraordinary University Resources
(1) The University and the faculty members involved generally have a shared interest in the property rights of works involving the use of extraordinary University resources.
(2) Examples of "extraordinary University resources" may include institutional funding or grants in support of the work's creation including but not limited to payments to a faculty-author in excess of such faculty-author's ordinary salary, and a reduction in faculty workload specifically to facilitate creation of the work.
(3) The copyright to works involving the use of extraordinary University resources and all derivative works created by a faculty-author shall be owned by the University. Whether a particular work is created through use of extraordinary University resources shall be determined initially by the relevant dean, his/her designee, or the director of the unit of the University that is providing the extraordinary University resources prior to the commitment by the University of those resources. Final determination will be by mutual written agreement of the faculty author and the University. At the University's discretion, it may grant to the relevant faculty-author a non-exclusive non-transferable license to use the work involving use of extraordinary University resources for external purposes; provided that if use of the work by the faculty-author generates income the license may provide that:
a) The author shall reimburse the University for the substantial resources provided the author, or
b) The author shall share income from such commercialization with the University.
(4) A Sponsored or Externally Contracted Work (Work) shall be any work developed using funds supplied under an Sponsored Research Agreement (SRA), contract, grant, or other arrangement between the University and a third party.
i. Unless the relevant sponsorship agreement requires copyright ownership by the University or conveyance of rights to a third party, the author of a work shall own the copyright to such work.
ii. The University will own a work where the relevant agreement requires copyright ownership by the University or conveyance of rights to a third party, in which case the University will convey rights to the third party as required. In such cases the author of the work shall be required to report the work to the vice president for Academic Affairs and provost, using such forms and procedures as that office develops.
C. Fair Practice
The University covenants that during the term of employment of any given faculty author, the University will not authorize non-author faculty to use instructional works created by the faculty-author, without the prior, written approval of the faculty-author, unless ownership of such works has been assigned to or is vested in the University as stated in the foregoing paragraph.
D. UDMPU Oversight and Approval of Agreements Involving UDMPU Members
All agreements between a UDMPU member and the University that involve separate compensation and copyright or patent ownership must be in writing, and the UDMPU must sign off on all such agreements in a timely manner.
The University of Detroit Mercy (hereafter referred to as "the University") patent policy is intended to encourage a healthy atmosphere conducive to research and development through a system of rewards and incentives for the creation of intellectual property while at the same time giving proper consideration to the relative roles any individual employee's efforts or the University or its resources may have played in the development of that intellectual property.
The strength of the University lies in its employees. The University's policies can provide invaluable assistance in bringing employee ideas to development and fruition within a framework of mutual trust and collegiality.
This policy is intended to spell out the responsibilities of the University and its employees and establish a framework for ethical conduct when issues covered by this policy arise. While employees are encouraged to consider the potential market value of their inventions, they shall not be held liable for failing to recognize a potentially patentable invention.
Employees of the University may create patentable discoveries during the course of their employment with the University. It is desirable in some cases to seek patent protection for these works and discoveries. Licensing the use of the property provides an opportunity for both income to the inventor and financial returns for the University. This patent policy applies to all University employees. For the purpose of this policy, "employee" shall be defined as any person who uses University resources and any intellectual property that involves use of those resources with the exception of student activities associated with coursework. For the purpose of this policy, the term of "employment" shall be defined by the time period when University resources are used for the development of any potentially patentable intellectual property. Upon termination of employment (as defined herein), the employee shall have a duty to disclose to the University all potentially patentable projects in which the University may have a property interest. This disclosure can be achieved through an employee exit interview, or by the employee's self-disclosure. This paragraph is applicable to patent applications made within the first year after employment ends at Detroit Mercy. The University's claims on patentable projects end 366 days after disclosure or the end of employment as defined herein, whichever is later.
A. Patent Committee
(1) On an as needed basis (given that Detroit Mercy is principally focused on teaching, this will most likely be on a case by case basis, though the University may form a standing committee if it so chooses), the University administration shall form a Patent Committee (hereafter referred to as "the Committee") which shall serve as an advisory committee to the president on all University patent related matters.
(2) This Committee shall evaluate each intellectual property for potential commercial value and decide that the University either seek protection and commercialize that intellectual property or relinquish University rights to that property. The Committee reserves the right to employ outside consultants who possess the necessary expertise to evaluate the potential commercial value of a particular intellectual property submitted for review.
(3) All matters regarding specific intellectual property coming before the Committee shall be held confidential by all members of the Committee.
(4) The president and his/her designee shall determine the composition, tenure, and decision-making authority of the Committee.
(i) The creator(s) or inventor(s) may designate two Detroit Mercy faculty members to serve on the Committee.
(ii) It is also recommended that the chair(s) and dean(s) of the creator(s) or inventor(s) be members of the Committee. Additional consideration should also be given to including individuals who have been involved in obtaining intellectual property protection on creative works and therefore familiar with the process.
(1) Scope of Policy.
(i) This policy applies to potentially patentable discoveries and trade secrets which are developed using University equipment, supplies, facilities, employee time, or trade secret information, or which relate directly to the University's business, research, or development.
(ii) The University will hold first right of refusal ownership in patents and other non-patentable intellectual products, except those covered by copyright policy, developed by its employees as a direct result of their research or employment.
(iii) The University does not claim rights in an invention for which no equipment, supplies, facilities or trade secret information were used and which was developed entirely on the employee's own time, unless the invention grows directly out of the business of the University or of the University's actual or demonstrably anticipated research or development or unless the invention directly results from work performed by the employee for the University.
(2) Sponsored Research
(i) Where research has been sponsored by private industry or foundations, licensing of patents shall be negotiated between the sponsor and the University or its agent where appropriate.
(ii) The University will strive to protect the financial interests of all and, when necessary, act to ensure that the traditions of self-governance and academic freedom are respected.
(iii) The University, on behalf of its constituent colleges, schools, or departments, will not accept grants or enter into agreements for the support of instruction or research that confer upon an external party the power to censor, unduly delay, or exercise effective veto power over either the content of instruction or the publication of research.
(iv) Parties entering into such agreements shall be hereby advised that publication of research findings may be temporarily delayed in order to protect patent rights or permit the research sponsor to review the proposed publication for the sole purpose of identifying proprietary information furnished by or belonging to the sponsor.
(v) Unless otherwise noted in writing, the University normally retains ownership of property developed under sponsorship agreements and will negotiate rights to license the property.
(vi) The proprietary rights of the University and the University's employees shall be subject to the agreement between the sponsor and the University.
(3) Determination of Ownership
(i) The Committee will determine whether the potentially patentable property is owned by the University, by the employee(s), by an outside sponsor, or jointly by some combination of these.
(ii) Under the federal patent and trademark legislation of 1980 (35 U.S.C. 200 et seq.), the University has the right of first refusal to title in inventions made in the performance of federal grants and contracts. The University will assert title to and attempt to license inventions made with federal government funds so that the Congressional purpose of fostering the development of industry in the United States will be furthered.
(iii) Patentable inventions not subject to a sponsorship agreement, or University ownership under the preceding paragraph, or the University provides a written waiver of ownership, will be the employee's property. Unless contested by the University, the University will, on demand from the employee, issue a waiver of the University's rights. If contested, the Committee will determine ownership.
(iv) In cases where it would be unfair to determine that the property is wholly owned by either the University or the employee, the Committee may make a determination of equal ownership.
(a) If the University, through the Committee, chooses to release its rights, no additional conditions shall be placed on the release other than consideration to compensate for the continued use of facilities and materials beyond the release date.
(b) For patentable property only partially developed during the employee's term of employment, the Patent Committee shall also have the authority to assign proportionality of property interest between the University and the "employee."
(v) The procedure for determination of ownership shall be as follows:
(a) The Committee shall make its determination of ownership within 45 days of full disclosure of the invention by the inventor(s) to the Vice President for Academic Affairs and Provost. Full disclosure simply means that the disclosure must include all pertinent information which the inventor(s) have that is related to the subject invention.
(b) The employee will be notified of the decision of the Committee within five days of the Committee's determination.
(c) If the Committee fails to notify the employee in writing of determination of ownership within 65 days of full disclosure, then any potential University's rights shall automatically revert to the employee.
(d) It is acknowledged that the 65 day deadline includes 15 days beyond the timeline set for this process and thereby fully extinguishes the University's right to any ownership.
(e) The employee shall have 30 days from the date of the mailing of the notice to appeal the Committee's decision. The appeal shall be heard by the Vice President for Academic Affairs and Provost or his/her designee within 20 days of the notice of appeal. The decision on appeal shall be issued within 30 days of the deadline for submitting materials. The decision of the Vice President for Academic Affairs and Provost shall be final.
(f) Following this internal appeal process, the employee has recourse to settlement in the civil courts.
(4) Duty to Assign and Cooperate
(i) After the determination by the Committee and exhaustion of the employee's right of internal and external appeal, the employee shall execute documents of assignment to convey to the University, or its assignee, all of the employee's interest in the invention determined to be owned by the University and assist in obtaining, protecting, and maintaining patent rights.
(ii) When discoveries are determined to be owned in part by the University and in part by the employee, the University and the employee shall enter into a written agreement apportioning 50 percent of the after-costs revenues from the invention to the inventor(s), and the remaining 50 percent to the University.
(a) Cost shall be defined as direct expenditures resulting solely from pursuit, prosecution and maintenance of intellectual property rights and commercialization of the invention plus, where appropriate, any extraordinary University resources such as outside legal, consulting, marketing and licensing organizations.
(b) Half of the University's 50 percent of net revenues shall be apportioned to the creator(s)' or inventor(s)' Department to support further research and scholarly activity.
(c) In the event of multiple inventors, those involved must agree upon an appropriate apportioning of the 50 percent of revenues provided to the inventor; in the absence of any written agreement stating otherwise, the revenues shall be equally divided amongst the inventors.
(d) In the case of multiple inventors, the departmental share of revenues shall be apportioned in accordance with the same apportioning made to the inventors.
(5) Publication and Disclosure to Third Parties
(i) Premature publication, public use, or disclosure of an invention can sometimes jeopardize the rights of the employee, or the University or its assignee to secure patent protection. Therefore, unless the Committee has issued a waiver of University's rights, the employee agrees that there shall be no publicity or disclosure concerning the invention until patent applications have been filed.
(ii) Once an invention is identified as potentially patentable, all publicity, public reports, interviews, news releases, speeches, public disclosures or public demonstrations of the invention subsequent to the filing of the application shall have prior clearance in writing from the University or its assignee.
(iii) This section shall not be applicable to sponsorship agreements that impose different obligations on disclosure.
(6) Costs and Royalties
(i) Following a decision by the Committee to pursue a patent for an invention deemed to be jointly owned by the inventor(s) and the University, the University shall, in a reasonably prompt manner, develop and file a patent application on the subject invention.
(ii) All fees, legal and otherwise, associated with development of the invention and patent application shall be assumed by the University, but all such costs must be fully recovered by income generated by the invention before any net revenue accrues.
(iii) Once costs defined elsewhere have been recovered, all additional income generated through licensing of the patent, sale of the patent or other commercialization of the invention shall be apportioned at the aforementioned percentages after a 5% administrative fee is deducted.
(iv) Royalties allocated to inventor(s) continue throughout the revenue generation phase of the invention, regardless as to whether or not the inventor(s) remains employed at the University.
(v) If the University, at any time, no longer wishes to pursue further development of the intellectual property, the University will notify the inventor(s) and will execute the necessary documents assigning all rights to the inventor(s) unless precluded by prior written agreement.