University Policy No.: GV0215 Classification: Governance. Effective Date: November/00 Supersedes: Last Editorial Change: Mandated Review:

Transcription

1 POLICY ON INTELLECTUAL PROPERTY University Plicy N.: GV0215 Classificatin: Gvernance Apprving Authrity: Bard f Gvernrs Effective Date: Nvember/00 Supersedes: Last Editrial Change: Mandated Review: This plicy nw frms part f the Faculty Framewrk Agreement as Appendix D APPLICATION This plicy applies t intellectual prperty (IP) created by members f the University in their University-related wrk and/r using University resurces. Members f the University are defined as all: faculty members hlding ne f the fllwing academic appintments at the University: a tenured appintment r an appintment with eligibility fr tenure as Assistant Prfessr; Assciate Prfessr; r Prfessr Senir Instructr Limited Term appintment with a term f mre than ne year Artist-in-Residence Lecturer adjunct prfessrs and hnrary prfessrs librarians hlding a Regular Librarian appintment (regular r cnfirmed) r Limited Term appintment as a Librarian and includes an Archivist graduate and undergraduate students, and pst-dctral fellws and research assciate appintees. This plicy als applies t IP created by: external research cntractrs, unless there are written cntract clauses that stipulate therwise and that have been apprved by the Vice President Research r delegate and an authrized individual representing the cntractr, and persns prviding services t the University under a cntract fr services r a written agreement.

2 This plicy applies t the creatr and her/his heirs, successrs, and assigns and the University s successrs and assigns. CONTEXT This plicy is written within the cntext f a vital academic cmmunity and its values, which include penness, sharing f ideas, cllegiality, curisity-driven research and academic freedm. The University recgnizes its rle in generating benefits fr sciety thrugh disseminating its research findings and creative activities, and where apprpriate, encuraging the applicatin f its research and creativity in tangible ways. This plicy is a vehicle by which the applicatin f research and creative results are encuraged and facilitated. Accrdingly, the plicy is designed t prmte a supprtive climate fr the develpment f IP and the prvisin f services based n mutually beneficial partnerships that respect the interests f researchers and creatrs, the University, and the wider cmmunity. In establishing this plicy, cnsideratin has been given t: the current thinking n IP within universities and at the federal level; the histrical practices f this University; and the standards and traditins in diverse academic disciplines. See Appendix A fr definitins f terms used in this plicy. OBJECTIVES The primary bjective f this plicy is t facilitate the develpment, prtectin, disseminatin and cmmercializatin f IP thrugh a supprtive framewrk that is respectful f the culture and balances the interests f the University and f its research and creative cmmunity. The plicy shall: express and fulfill the University s bligatin f encuraging knwledge transfer fr the scial and ecnmic benefit f sciety; recgnize and uphld the principles f schlarly integrity and academic freedm in the cmmercializatin f IP fr the prtectin f the University and its cmmunity; prvide a framewrk fr the develpment f mutually beneficial partnerships, and a supprtive climate and incentives fr innvatin, entrepreneurship and revenue generatin in research and creative develpment; increase pprtunities fr funding and leverage that culd be used t prvide additinal independent research and emplyment pprtunities fr the University cmmunity, especially yung faculty and students; prvide fr the availability f prfessinal advice frm an early stage t the University research and creative cmmunity with respect t the develpment and

3 prtectin f IP, cntractual issues, and the assciated rights, bligatins, and liabilities; prvide a basis fr setting ut the sharing f csts and benefits between the University, external partners, and the University s research and creative cmmunity, and when such sharing is in dispute, prvide an effective dispute reslutin mechanism; ensure that issues f liability relating t the University and its researchers and creatrs are made clear. STATEMENT OF PRINCIPLES 1.0 Cmmunicatin and Disseminatin This article reinfrces the University s cmmitment t academic freedm, particularly with respect t freedm f cmmunicatin, and deals specifically with the right f University members t publish, cmmunicate and disseminate the results f their creative and research activities. The University will seek t preserve the rights f the creatr t determine the extent and the timing f the cmmunicatin and publicatin f the results f creative and research activities when dealing with third party arrangements respecting IP. The University will nt enter int arrangements that restrict University members frm cmmunicating the results f such activities withut the permissin f the creatr. Further, the University will nt cmpel any creatr t engage in cmmercializatin f IP. 2.0 Cntributins IP is frequently the result f cllabrative r cperative activities between r amng University members. This article deals with the relatins between r amng several creatrs f a single wrk r prperty. The University is cmmitted t the Tri-Cuncil psitin that authrship f published wrk includes all thse wh have materially cntributed t, and share respnsibility fr, the cntents f the publicatin, and nly thse peple, and expects cmpliance with this plicy statement by members f this University. Standards fr the discipline, where they exist, shuld be applied when determining prprtinate cntributins t a schlarly r creative wrk. In the event f cmmercializatin, all intellectual cntributrs t the wrk shuld be entitled t share in the prceeds in prprtin t their cntributins, unless the entitlement t share within the framewrk f this plicy has been willingly waived thrugh infrmed cnsent r previusly agreed t thrugh a written arrangement. University members shuld cnsult with the Office f the Vice President Research t ensure that rights t IP arising frm the cllabratin are clearly understd.

4 In cases where the University and the researchers r creatrs frm a partnership fr purpses f cmmercializatin, the IP rights will be cvered by cntractual arrangement. Any assignment, waiver, r mdificatin f rights in favur f the University r the Innvatin and Develpment Crpratin (IDC) requires infrmed cnsent. Student theses, prjects, graduating papers and artistic prductins are special cases f schlarly wrk. Students are the primary authrs f their creatins, but the wrk is carried ut under the supervisin f faculty members. Publicatins r wrks cming frm student research r creative activity must acknwledge apprpriately all cntributrs t the wrk. The apprpriate Dean and the departmental Chair, in cnsultatin with the Dean f Graduate Studies r the Office f the Vice President Research (OVPR), is respnsible fr ensuring that there is a prcess t address the students interest with respect t: the prtectin f their IP; the freedm t publish results in pen literature; and the discussin f the research r creatin in internal venues. Students shuld nt be invlved in research r creative activities that cnflict with, r jepardize, their prgress tward meeting their degree requirements. 3.0 Ownership It is recgnized that University research and creative activity may prduce artistic creatins suitable fr cpyright, research fr the public gd, and inventins that may have cmmercial applicatins and be patentable. Accrdingly, the University is cmmitted t balancing any wnership rights it may btain under the University Act with the desirability f prviding incentives t creatrs fr the cmmercializatin f their innvatins, creative wrks, and inventins. The creatr wns the IP, unless: 3.1 The regulatins f the spnsr f grant r cntract research require different IP wnership prvisins. 3.2 The University and University member have entered int a written agreement t share wnership f the IP. 3.3 The IP cmprises curse materials that are being cmmercialized; in which case, the University and the creatr will have 50:50 wnership. 3.4 The IP is the result f a written agreement with a University member r a cntract fr services; in which case, the University shall retain wnership rights and cntrl f the IP. This clause shall nt apply t any undergraduate r graduate student where the wrk is part f their prgress tward meeting their degree requirements. In the event f the death f the creatr, the IP wned by the creatr is treated in the same way as any ther persnal prperty wned by the creatr.

5 4.0 Disclsure In its prmtin and supprt f research and schlarship, the University seeks t prvide a stimulating envirnment fr its research and creative cmmunity and t share with sciety at large the benefits f new knwledge r wrks. An effective methd f IP disclsure makes it pssible fr the University t prvide expert advice and supprt services at an early stage, t lbby fr funding and shw accuntability, t respnd t inquiries frm third parties interested in cllabrative research, and t reprt t gvernment as required. All persns cvered by this plicy are required t disclse their IP. Fr schlarly publicatins and much f the creative activity by faculty, disclsure shall be thrugh the annual updated curriculum vitae. Where IP is anticipated t be cmmercially viable, it shall be disclsed by the University member n a cnfidential basis at as early a stage f develpment as pssible t the University. In this manner, the University shall ensure that it has the first pprtunity t ffer its services thrugh the OVPR and the IDC as the vehicle fr cmmercializatin. In rder t prtect eligibility fr patent, the cnfidential disclsure f patentable IP shuld be made within three mnths after the creatin f the IP; cnfidentiality must be maintained until such prtectin is secured. In additin, University members shall disclse at the earliest pprtunity any requests frm third parties fr cmmercial develpment f curse materials. The terms and cnditins fr the develpment f such cmmercializatin shall be determined by the Vice President Academic in accrdance with this plicy and in cnsultatin with the apprpriate fficers f the University. 5.0 Cmmercializatin The University seeks t prtect the interests f the University and its members when undertaking the cmmercializatin f IP by applying the fllwing cnditins. 5.1 Prtectin f IP and the Name and Reputatin f the University and its Members The University seeks t prtect its name and reputatin and that f its members by entering int cmmercializatin agreements that: adhere t ethical principles; prvide mechanisms fr prtectin f the IP in the event f misuse; cntrl the use f the names and trademarks invlved by the frprfit partner; stipulate means f quality cntrl fr the cntent f the IP;

6 prvide flexibility in jint ventures t ensure that the University and its members can enter int multiple relatinships fr its IP withut vilating prir agreements; require legal review t avid vilatin f the University s tax exempt status; retain the right t prduce and publish research that is derived frm the ideas and material cntained in any jint venture. When the University is nt invlved in the cmmercializatin, the University expects the University member t adhere t these principles. 5.2 Revenue Sharing In meeting its rle as a research and educatinal institutin, the University strives t prvide incentives fr the pursuit f research and creative activities. Revenue sharing is ne such incentive. This article sets ut the principles gverning the sharing f revenues accruing frm IP. The University supprts the principle that the revenue accruing frm IP shuld be shared fairly and prprtinately between the creatr(s) and the University in relatin t the cntributins f the University and the creatrs. The cntributins f the University may include but are nt limited t the fllwing: prvisin f paid release time (ver and abve any academic leave r prfessinal develpment leave) fr the develpment f IP; prvisin f remuneratin ver and abve regular salary fr the develpment f IP; prvisin f space, facilities, and equipment fr the develpment f IP ver and abve nrmal infrastructure requirements; the expansin f the cmmercial ptential f a piece f IP by University r IDC actin; the rati f liability assumed by the University, IDC, and the creatr; the negtiatin f any cntractual agreements with external research r develpment partners. The University s share f net revenues accruing frm the cmmercializatin f IP is as fllws: when the University s technlgy transfer services (IDC and OVPR) have been utilized fr cmmercializatin f the IP, the terms f revenue sharing (fr IP ther than curse materials) shall be negtiated by the Vice President Research r delegate, in cnsultatin with ther parties as apprpriate, in accrdance with the guiding principle f net benefits fllwing the cntributins f all parties; when the University indicates an interest in cmmercializing the IP,

7 but the University member chses t cmmercialize elsewhere, the University shall nrmally claim 20% f net revenues that result frm the cmmercializatin t reflect the University s infrastructure investment and t ensure a return n investment t supprt further research and creative activity. This clause shall nt apply if the University has indicated in writing that it has n interest in cmmercializing the IP r the net revenues cncerned are less than $5,000 in a calendar year; the University and University member shall receive equal shares f the net revenue resulting frm cmmercializatin f curse materials (see 3.3). 5.3 Use f Revenues Accruing t the University All net revenues accruing t the University frm the cmmercializatin f IP shall be depsited in a special fund t prmte and supprt the University and its research, creative activity, and future IP develpment. The Vice Presidents shall make recmmendatins t the President cncerning the use f the fund. 5.4 Accunting Fr the purpses f determining net revenue, either the University r the creatr may require the ther t prvide an accunting f all revenues received and expenses incurred with regard t IP cvered by this plicy. 5.5 Dcumentatin DISPUTE RESOLUTION Where necessary, the University and the University member shall sign and execute any dcumentatin and cmplete any prcedures that are necessary t give effect t the cmmercializatin f IP. All disputes under this plicy are subject t review by a three-persn panel, cmpsed f ne member t be appinted by the appellant(s), ne member t be appinted by the Vice President Research, and a third member (wh shall be Chair) t be chsen by the tw appinted members. The panel shall fllw prcedures cnsnant with natural justice and administrative fairness. It shall cnduct a hearing and may require ral and/r written submissins. An advisr may accmpany any party t the appeal. Its decisin shall be final. EFFECTIVE DATE With regard t members f the Faculty Assciatin, the Plicy cmes int effect n the date when it is apprved by bth the Faculty Assciatin and the University Bard f Gvernrs (the date f whichever apprval is later). With regard t ther persns, this

8 Plicy cmes int effect n the date when it is apprved by the Bard f Gvernrs. It des nt supersede any arrangements r agreements made prir t this plicy by members f the University. APPENDIX A - DEFINITIONS Net Revenue The revenue accruing frm the IP less the expenses incurred in its cmmercializatin. The determinatin f net revenue varies in different situatins and shall be decided n a case by case basis in relatin t the type f revenue (e.g. equity r ryalty) and accepted accunting prcedures in the relevant field. Creatr A persn wh creates the intellectual prperty. Intellectual Prperty The result f intellectual r artistic activity, created by a member f the University in a schlarly, prfessinal r student capacity, that can be wned by a persn. Specifically, this includes inventins, publicatins (with the exceptin f schlarly publicatins, regardless f the media used fr their cmmunicatin), educatinal materials, cmputer sftware, wrks f art, industrial and artistic designs, as well as ther intellectual prperty rights (creatins) that can be prtected under legislatin including patent, cpyright r trademark laws, r thrugh a trade secret agreement. Infrmed Cnsent Cnsent given by an individual wh has received the infrmatin necessary t allw a cnsidered judgment, wh has adequately understd the infrmatin, and wh has arrived at a decisin f cnsent withut having been subjected t cercin, undue influence, inducement, r intimidatin. Cntract fr Services A cntract fr services includes a cntract between the University and a University member which cvers assignments that are extra-t-lad. University University f Victria. Infrastructure

9 Specialized research facilities and services f the University, including the University s research labratries, majr capital equipment, and technical facilities and services. Specialized facilities and services d nt include the use f ffices and ffice equipment, limited ffice services, persnal cmputers, the library, r ther services cmmnly available t all University cmmunity members.