COLLEGE POLICY. Employment Related POLICY TITLE: POLICY TYPE: Intellectual Property POLICY NO.: EMPL-306 RESPONSIBILITY:

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1 COLLEGE POLICY POLICY TYPE: Employment Related POLICY TITLE: Intellectual Property POLICY NO.: EMPL-306 RESPONSIBILITY: Vice- presidents, Administration and Academic POLICY APPROVED BY: Durham College Leadership Team EFFECTIVE DATE: June 2013 REVISED: REVIEW DATE: June 2016 Introduction Durham College encourages, promotes and fosters creativity, innovation and discovery among faculty, staff, and students in all fields of endeavour in which the college is engaged. By encouraging the creation of intellectual property (IP), the college will advance a vibrant educational and research culture that promotes academic and intellectual growth. In situations where the college is the owner of IP that is worthy of commercial exploitation, the college s intention is to promote a revenue-sharing relationship with the creator or creators of the IP. Purpose The purpose of this policy is to outline the college s position on ownership of IP and to identify the rights and responsibilities of faculty, staff, students and third-parties as appropriate, with respect to IP. Further, the policy describes the college s position on commercialization of IP that is created through applied research by faculty, staff and students independently or with third-parties. Definitions Creator is a general term referring to an individual, or group of individuals, who makes, conceives, reduces to practices, authors, or otherwise makes a substantive intellectual contribution to the creation of IP. Under the Canadian Patent Act, a creator is known as an inventor and under the Canadian Copyright Act, a creator is known as an author. Copyright means the right to copy. The Canadian Copyright Act defines copyright, in relation to a work, as the sole right to produce, reproduce, perform, or if the work is unpublished, to publish the work or any substantial part of the work in any material form, and to authorize any such acts. Copyrightable works refers to original scholarly, scientific, literary, dramatic, musical, artistic, and recorded works in any form. Commercialization is the process of introducing a product or process into the market. Commercialization may include IP protection, such as patent protection or copyright registration, assignment, licensing, manufacturing, or otherwise producing something to achieve a financial return. 1

2 Intellectual property (IP) includes all of the interests and rights to all Canadian and foreign registered, pending and common law, trade names and trademarks; all Canadian and foreign issued patents and pending applications therefore; all Canadian and foreign copyrights, whether or not registered; rights of publicity; franchises and all technology rights and licences, including computer software and all proprietary know-how, trade secrets, inventions, discoveries, developments, research and formulae, and artistic works, whether or not patentable; and all other proprietary information or property relating to works created at or in conjunction or in partnership with the college, and any improvements, updates, enhancements or modifications related to any of the foregoing. Licensing agreement is a written agreement between the college and a third-party, in which the college grants the third party the right to use materials proprietary to the college (or proprietary to others, and in which the college has licensing rights) upon terms and conditions set out in the written agreement. Moral rights The author or creator of a work, whether or not the owner of the copyright in the work, has the right to the integrity of the work and the right, where reasonable in the circumstances, to be associated with the work as its author or creator by name or by pseudonym, or to remain anonymous. This applies to all work commissioned by the college or produced pursuant to the employee s normal administrative or professional duties with the college even though the college owns copyright to such work. Product license is a licensing agreement between a supplier of a proprietary product and/or material and the college, in which the college is granted the right to use those proprietary product and/or material upon the terms and conditions set out in the product license. Policy statements 1. College ownership of IP Except as may be otherwise agreed to between the college and an employee, a work agreed upon or commissioned by the college or produced pursuant to the employee s normal administrative or professional duties with the college, in accordance with a written agreement or for which release time has been permitted, shall be the property of the college. Unless otherwise agreed, IP resulting from government-funded research shall be the property of the college. Unless otherwise agreed, IP created by an employee utilizing college resources or property outside of normal administrative or professional duties shall be the property of the college. Where the college owns the IP rights in a work, the creator shall have a non-exclusive right to use the work, provided the creator exploits the work only in the course of employment with the college, where the creator is an employee, and only in the course of the contractual relationship with the college, where the creator is an associate of the college and not an employee. 2

3 2. Employee work Where an employee creates a work outside of the course of employment and not as part of his or her duties for the college, without the use of college resources or property, and without remuneration or compensation for the work from the college, the employee shall be the owner of the IP. Where an employee creates a scholarly work, such as a textbook intended for students or a peer-reviewed journal article, the employee shall be the owner of the IP. Where an employee creates a work during the leave year of the Prepaid Leave Plan, without using the college s resources in doing so, the work shall belong to the employee unless otherwise agreed to by the parties. Where an employee wishes to use college resources to create a work outside the course of employment, the employee shall first be required to inform the college of the creation of the work, so that a mutually satisfactory written agreement covering, among other things, ownership, use and revenue sharing, can be negotiated before the work is developed. In the absence of such notification and written agreement, the IP rights in the work created shall be owned by the college. Every application by an employee for a professional development leave shall contain a full description of the proposed professional development activity. It is the college s intention to encourage employees to create works of innovation and discovery. Accordingly, the application for professional development leave shall also contain a statement, signed by the employee and his or her supervisor, which sets out how any net profit from revenue generated by the commercial exploitation of such professional development activity, shall be shared between the college and the employee. Where a paid professional development leave is approved, the same principles related to IP rights for any work created and for which work the leave was granted will apply as is the case for a full-time employee not on paid leave. The adoption and inclusion of employee-owned works in college course materials will be made only with the prior approval of the appropriate college administrator in accordance with the college s Conflict of Interest policy. 3. Student work Students shall be the owners of IP in works they create, except in the following situations: a) Where the college pays students for their work; b) Where the students are participating in an experiential learning opportunity, including field placements, co-operative work placements, applied research projects; c) Where the students who created the work transfer the ownership of the copyright to the college for valuable consideration; d) Where the students use college resources and facilities to create the works, outside of their course requirements, in which case the students shall be required to obtain the college s consent to the use of its resources and facilities. It shall be a condition to the giving of such consent that the college and the students enter into an agreement for the creation of the works, which agreement shall provide for, among other things, the ownership of any IP rights in the works to be created, the exploitation of the works by the students and the college and the sharing of any revenue by the students and the college from such exploitation. 3

4 4. Joint initiatives with third-parties Where the college enters into an agreement with a person, persons, another postsecondary institution or other organization that provides for or contemplates the development of a work in which IP subsists, the parties will ensure that a written agreement sets out their respective rights in the IP in the work, and any terms relating to the sharing of risk and revenue from the exploitation of the work. In externally-sponsored or contract research activities, ownership of IP rights may be determined in whole or in part by the funding agency or external sponsor, or by the terms of the contract. All college staff participating in such research activities must be made aware of any IP ownership stipulations of the contract by the principal investigator, or by any other designated leader of the research project 5. Licensing arrangements Where the college acquires a product licence to use a supplier s product, ownership of the IP in the product being licensed shall be determined according to the provisions of the product licence. Where the product licence does not contain any provisions relating to IP ownership, it shall be presumed that the supplier is the owner thereof. Any variations to the licence shall be made in writing. Where the college enters into a licensing agreement with a third-party to permit that thirdparty to use materials or property developed or acquired by, or collaboratively with the college, the licensing agreement shall be in a form approved by the vice-president, Academic or designate and the manager, Insurance and Risk Management. 6. Classroom recordings Where the college determines that picture-taking or the audio or video recording of academic-related activities is necessary for educational purposes or where required to accommodate persons pursuant to the Ontario Human Rights Code, the relevant professor(s) and students will be notified of the recording in advance. If the college wishes to use such recording for other purposes, it shall obtain the written consent of all persons seen or heard in the recording. The college shall own the content of the IP recorded on audio or video tapes/discs developed or created in classroom activities by college employees, except material obtained for approved research projects being undertaken by the employee. The college acknowledges and respects the performing rights of all performers of literary, dramatic or musical works and agrees to obtain their consent to the recording of their performances. The college will use audio and video recordings solely for educational purposes. If the college wishes to use such recordings for any other purpose, it will obtain written consent from all persons who are seen or heard in the recording. 7. Copyright notice and use of name Where the college is the copyright owner in any works created pursuant to this policy, or otherwise, it shall place the following copyright notice in a conspicuous place in the works: [year of publication] The Durham College of Applied Arts and Technology. Use of the college s name shall only be made in accordance with the requirements as set out by the college in each case. 4

5 The college has the right to be recognized or acknowledged in, or in association with, any work created in the course of employment/studies, by an employee, student, or person with whom the college is otherwise dealing, or to be dissociated from the work, and for work not created in the course of employment/studies as mutually agreed upon. 8. Moral rights The college shall take steps to respect the creator s moral rights. The creator has the right to request, where reasonable in the circumstances, to be given recognition for the work by name or by pseudonym, to remain anonymous, or to choose not to be associated with any modification of the work that is perceived to be damaging to their honour or reputation. The college will respect the moral intention of the creator of the work through consultation with the creator, but may extend or modify the work if not in conflict with the moral intention of the creator. 9. Disclosure College staff who have created IP for commercialization purposes utilizing college time, resources, facilities, or name must disclose, in writing, their intentions to commercialize to the vice-president, Academic or designate and the vice-president, Administration as soon as possible. Such disclosure must include the nature of the IP, the names of all cocreators, the source of funding for the research project out of which the IP emerged, and any other relevant information. Creators and others with knowledge of the IP and bound by confidentiality requirements shall maintain confidentiality regarding the disclosure until the college advises them that the information may be released. College staff who have created IP for commercialization purposes shall take all reasonable steps to prevent public disclosure of the IP, including presentation of the IP at conferences or public meetings, discussion of the IP with family, friends, and colleagues, and documentation of the IP in grant applications. Any potential disclosure should first be discussed with the director of Research Services. 10. Commercialization Where the college owns IP rights in a work, the college may choose to commercialize it, and may consult with the creator(s) on the best means for commercialization. The creator of a work in which the college owns the IP rights may, with the college s prior approval, pursue opportunities to exploit the work, and negotiate with third-parties on behalf of the college. The college shall always be a party to any resulting agreement. The agreement will provide that the creator of the IP is entitled to share in the revenues contemplated under the terms of the agreement. In the event that IP is commercialized, the college shall first be reimbursed for all costs, including IP development costs, protection costs, marketing costs and other commercialization costs. Net proceeds resulting from the commercialization will be shared as follows: a) Where there is an agreement between the college and the creator, the college and the creator shall share the proceeds in accordance the terms of the agreement; or 5

6 b) If an agreement was not signed prior to the commercialization of the IP, the college shall be entitled to 90 per cent of the proceeds and the creator shall be entitled to 10 per cent of the proceeds. The creator may choose to enter into an agreement with the college to assign all rights to the IP to the college. In this case, the college shall be responsible for all costs relating to the commercialization of the IP, including legal, protection, and marketing costs. Any sharing of the proceeds will be agreed upon in writing. The college may choose to enter into an agreement with the creator to assign all rights to the IP to the creator. In this case, the creator shall be responsible for all costs relating to the commercialization of the IP, including legal, protection, and marketing costs. Any sharing of the proceeds will be agreed upon in writing. Accessibility for Ontarians with Disabilities Act (AODA) considerations The Accessibility for Ontarians with Disabilities Act standards have been considered in the review of this policy. Roles and responsibilities The vice-president, Administration and Academic are responsible for interpreting this policy, providing advice to managers and employees and resolving disagreements. Non-compliance implications Failure to comply with this policy may result in damage to internal and external relationships, financial loss, property damage, reputational harm, legal action and/or a diminished ability to achieve the mission of Durham College. Related policies, procedures and directives Copyright Act (Canada) Durham College Conflict of Interest Policy EMPL-303 Durham College Responsible Conduct of Research Policy ACAD-116 and Procedure ACAD Patent Act (Canada) 6

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