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Intellectual Property - Preamble

In this Section

1.1. It is the policy of Clarkson University (the "University") to encourage creativity and inventiveness in its faculty, staff, and students. By providing facilities, equipment, information, resources, and personnel, and by obtaining external support from public and private sources, the University strives to create an environment fostering the interests of the academic community. The University wishes to offer its faculty, staff, and students incentives to develop scholarly and creative works and other intellectual property which can be used for the good of the University and the public at large.

1.2. The objectives of this Policy are to:

  • promote the publication of scholarly works and the discovery of new inventions;
  • encourage the full and free exchange and expression of creative and scholarly ideas and further scholarly comment within the context of the teaching, research, and public service missions of the University and applicable law and regulation;
  • maintain and enhance the reputation of the University as a teaching and research institution; promote the public good by producing, disseminating, and, when appropriate, commercializing works of artistic, scientific, and practical value;
  • enhance opportunities for cooperation and productive interaction with external sponsors funding University research and creative endeavors; and
  • establish the basis on which income resulting from the commercialization of intellectual property developed by members of the University, whether faculty, staff, or students, is shared by the University with those responsible for its creation.

Definitions

Whenever used in this Policy, the following capitalized terms shall have the meanings given to them below.

2.1. CREATOR - each Member of the University who develops or creates Intellectual Property. An individual's status and royalty or other rights as Creator shall continue even if the individual leaves the University.

2.2. CREATIVE WORKS - articles, papers, books, novels, compilations, theses, poems, texts, and other literary works; graphic designs, paintings, drawings, sculptures, musical compositions, films, photographs, choreographic works, and other visual and performing art works; architectural and engineering drawings; and all other works subject to protection under copyright law; provided, however, that the term "Creative Works" shall not include computer software or maskworks.

2.3. INTELLECTUAL PROPERTY - inventions (patentable and non-patentable), creations, innovations, discoveries, Creative Works, trade secrets, computer software, maskworks, trademarks, service marks, and tangible research property. "Tangible research property" is any physical item, not otherwise listed in the preceding sentence, used or generated in connection with any research, scholarly, or administrative activity conducted by any Member as part of the Member's normal and customary duties or responsibilities to the
University which relate to research, including notes, charts, graphs, compilations of data in any form, draft grant applications, draft or unpublished articles, computer printouts, cell lines, prototypes, constructions, video tapes, films, biological materials, integrated circuit chips, engineering and architectural drawings, etc.

2.4. MEMBERS - faculty, staff, and students of the University, whether or not compensated for their services; persons performing research or engaging in work or study utilizing University resources or facilities; and other persons engaged by the University to perform research whether or not using University resources and facilities.

2.5. SPONSORED PROGRAM - any grant, contract, or similar arrangement between the University and a private or governmental sponsor furnishing funds, equipment, or other resources to support research, the creation of a Creative Work, or any other educational or scientific activity to be performed by one or more Members of the University which may result in the creation of Intellectual Property.

2.6. UNIVERSITY RESOURCES - facilities, library resources, equipment, funds, salary, personnel, and other resources belonging to or supplied by University.

Ownership of Intellectual Property

3.1. General Ownership Rules

3.1.1. Intellectual Property created or developed within the context of a Sponsored Program shall belong to either or both the sponsor and University in accordance with the terms of the Sponsored Program, or as otherwise specifically provided by those terms.

3.1.2. Intellectual Property created or developed with the use of University Resources shall belong to the University, except that a Member's use of the following in connection with the creation of Intellectual Property shall not be deemed to be the use of University Resources vesting ownership in the University: (a) his or her office, (b) library resources, or (c) other University Resources to an insignificant degree.

3.1.3. Intellectual Property developed wholly or in part with University funds granted specifically for the creation of the Intellectual Property shall belong to the University. When the University provides financial support for the creation of Intellectual Property, the University will endeavor to set forth the terms of that support in a written agreement with the Creator.

3.1.4. Intellectual Property developed or created by a Member within the scope of the Member's regular or customary duties as an employee shall belong to the University. The University will endeavor to clarify those Member positions within the University calling for the creation of Intellectual Property.

3.1.5. An exception to University ownership of Intellectual Property shall be made, and such Creative Works owned by the Creator, except as follows:

(a) Creative Works developed pursuant to a Sponsored Program will be governed by 3.1.1.;

(b) Creative Works developed with support of University funds provided specifically for creation of the Works shall belong to the University unless otherwise expressly stated in writing;

(c) Creative Works developed by a Member pursuant to a specific work assignment from his or her project leader/chairperson shall belong to the University.

3.1.6. Except as mandated by the terms of certain "Requirements" relating to governmental funding of various research centers at the University as outlined at 5.2.3. below, all other Intellectual Property shall belong to the Creator free of any claims of, or obligations to, the University.

3.2. Transfer of Ownership

3.2.1. In its discretion, the University may elect not to retain ownership of Intellectual Property which it owns under the terms of this Policy. This election may be made at the time of creation of the Intellectual Property or at any time thereafter if the University does not desire to protect or commercialize the Intellectual Property. If the University elects not to exercise or to relinquish ownership of Intellectual Property, it shall assign ownership rights to the Creator, subject to any rights in favor of others which might exist under the terms of a Sponsored Program or other arrangement pursuant to which the Intellectual Property was created.

3.2.2. If two or more Members contributed to the creation of Intellectual Property owned by the University, and the University elects not to retain ownership thereof, the Intellectual Property shall be assigned to the Members, as joint owners, in such percentages as the Members shall agree in writing. If the Members are unable to agree, their respective ownership interests shall be deemed equal or assigned to all as their interests may be determined among them.

3.2.3. Whenever the University elects not to exercise or to relinquish ownership of Intellectual Property under this Section, the University hereby reserves for itself, without further act or deed, the royalty-free right to use the Intellectual Property for its own educational and research purposes.

3.2.4. In order to evidence ownership of patents or other Intellectual Property as established by this Policy, the University and any Member involved shall sign any and all documents reasonably necessary or desirable for filing with the Patent and Trademark Office, the Copyright Office, or elsewhere.

Disclosure and Protection of Intellectual Property

4.1. Inappropriate or premature disclosure of Intellectual Property to persons, firms, or corporations outside the University may jeopardize the ability to protect it. Prompt disclosure to the University of Intellectual Property is essential to the proper administration of this Policy. In addition, Sponsored Programs frequently give the sponsor the right to review or inspect a discovery or invention. Each Member shall promptly disclose to the Division of Research any creation, invention, discovery, improvement, or other Intellectual
Property developed or created by the Member or under his or her supervision if the University has or may have an ownership interest under this Policy. Disclosure shall be made in the manner and with the degree of specificity as the Division of Research may prescribe. No other disclosure shall be made without the prior approval of the Director, Division of Research.

4.2. After consulting with the Creator and other appropriate parties, the University, at its discretion, shall determine whether and to what extent to seek legal protection for Intellectual Property owned by the University. If the University elects not to seek legal protection, ownership may revert to the Creator as specified in Section 3.2.

4.3. The University may make suitable arrangements not inconsistent with the provisions of this Policy with agencies or firms for the purpose of obtaining services and advice with respect to the patentability of inventions, obtaining patent or copyright protection, and management and commercialization of Intellectual Property.

4.4. The Creator shall cooperate and assist the University in all phases of the process of seeking protection for the University's Intellectual Property, including execution of documents of assignment or otherwise pursuant to 3.2.4. above. The costs of obtaining legal protection for the University's Intellectual Property shall be paid by the University, or by sponsors where appropriate.

4.5. In cases where the University has not obtained legal protection for its Intellectual Property and has elected to transfer ownership to the Creator, the Creator may place the Intellectual Property in the public domain without obligation to the University. The University will maintain a file of its Intellectual Property dedicated to the public domain and will arrange for copies to be available to the public through the Educational Resources Center.

Distribution of Income from Commercialization of Intellectual Property

5.1. It is the general policy of the University to encourage the commercialization of Intellectual Property resulting from the scientific or educational endeavors of its Members.

5.2. In recognition of the efforts and contributions of Creators who develop Intellectual Property owned by the University, the University will share income derived from its commercialization with the Creators in accordance with the following guidelines.

5.2.1. From gross income derived from the commercialization of its Intellectual Property (whether from sale, licensing, royalties, or otherwise), the University will retain enterprise expenses in an amount equal to the costs and expenses incurred in connection with the legal protection, development promotion, marketing, and licensing of the Intellectual Property, and any other direct costs associated with its commercialization.

5.2.2. The balance (the "Net Income") shall be distributed as follows:

25% to the University To help defray costs of managing the Intellectual Property program generally.

50% to the Creator(s) Joint Creators shall determine in writing what percentage of the Creators' share of Income shall be allocated to the respective Creators. See 3.2.2.

25 % to the Creator(s)' For the benefit of the Creator(s) School or appropriate comparable unit from sub-unit, typically the department, with half of this amount which the Intellectual for the direct benefit of the Creator(s)' research program for Property emanated as long as he/she is an active researcher within the University.

In the case of Intellectual Property supported by two or more organizational units of the University, this portion of the Net Income shall be allocated and made available to the appropriate school, department, or comparable unit on an equitable basis as determined by the Director, Division of Research.

Further sub-allocation of this portion of the Net Income for the Creator(s)' school or comparable unit may be made by the Director, Division of Research for specific purposes or programs of the school or comparable unit.

5.2.3. The above guidelines are subject to certain pre-existing and ongoing requirements ("Requirements") affecting income from and license or other rights in various categories of Intellectual Property, including Requirements relating to Intellectual Property

(a) "created or developed at, or through the use of, the facilities of" the Center for Advanced Materials Processing in accordance with Section 23 of New York State Laws of 1987, Chapter 839, and any agreement between the University and the New York State Urban Development Corporation ("UDC") pursuant to that legislation; and

(b) resulting from research partially or totally supported by funds from The NASA Center for Commercial Crystal Growth in Space or from others, as set forth in NASA Policy statements including a document entitled "Intellectual Property Rights - CCDS Program."

Unless the terms of the Requirement provide otherwise, Net Income for purposes of this Policy shall exclude all amounts payable to UDC, to NASA, or to others as required by any such Requirement.

5.3. The provisions of this Policy dealing with the distribution of income shall apply only to income received from Intellectual Property disclosed to the University subsequent to the effective date of this Policy.

Administration of Intellectual Property Policy

6.1. Responsibility for all Intellectual Property matters, including the interpretation and administration of this Policy, shall rest with the Division of Research in consultation with an Intellectual Property Committee.

6.1.1. The Division of Research will provide the following support for implementation of this Policy:

* assure that Members are aware of and adhere to provisions in research contracts or other agreements with outside parties restricting publication rights or otherwise relating to the creation, use, or disposition of Intellectual Property;

* facilitate the early identification of potentially patentable inventions and discoveries, the preparation of disclosures, and the review thereof;

* advise on available methods for the protection of copyrightable works, and, if appropriate, assist in negotiations for publication or commercialization;

* review the terms and conditions governing others' Intellectual Property acquired for use in University-sponsored programs and activities and advise on compliance with those terms and conditions;

* issue guidelines or other information and materials applicable to this Policy;

* evaluate, in concert with Creators, disclosures in order to confirm ownership or applicable grant or contract terms;

* determine whether legal protection (e.g., patent filing, formal copyright registration, or other mechanism) should be procured and, if so, the territory to be covered; and determine, as expeditiously as possible, the commercial market potential for an invention, discovery, or other work.

6.2. Intellectual Property Committee

6.2.1. The Intellectual Property Committee shall provide advice and make recommendations to the Director, Division of Research, with respect to interpretation and implementation of this Policy, amendments to this Policy, and such other matters as the Director may deem appropriate.

6.2.2. The Intellectual Property Committee shall be comprised of nine persons as follows: a chair of the committee; five members of the faculty (provided that no department shall have more than one member); a member of the professional non-teaching staff; and, ex officio, the Vice President for Business and Finance and the Director, Division of Research. The Faculty Senate shall nominate for the President's approval the faculty members of the Committee (other than ex officio members), as well as the chair of the Committee who shall be a senior, tenured member of the faculty. Administrative Council shall nominate the professional non-teaching staff member. All nominees must be approved by the President.

6.2.3. Faculty and staff members (other than ex officio members) of the Committee shall be appointed for three year terms, renewable for a maximum of two additional terms. Terms shall be staggered so that no more than three new members will be appointed each year.

6.2.4. Should any member of the Committee be unable to complete his or her term of service, the Faculty Senate (or Administrative Council) will nominate, for the approval of the President, another member of the faculty (or the professional staff), as appropriate, to serve for the duration of the unexpired term.

6.2.5. No member of the Intellectual Property Committee may participate in the deliberations of the Committee if that member has a personal interest or direct involvement in matters to be discussed.

6.3. The Director, Division of Research, and the chair of the Intellectual Property Committee shall jointly report annually to the President of the University upon matters of significance relating to the administration of this Intellectual Property Policy.

Consulting Relationships

The University favors participation by faculty and other Members in professionally-related consulting relationships with outside entities. In order to maintain systematic awareness of such relationships, and to develop and implement any University policies that may be deemed appropriate relating to proper balance between such relationships and the Member's teaching, research, and service responsibilities, as well as to protect both the Member and the University from potential liabilities, the Member shall notify his or her
department head or supervisor in writing, with copy to the Director, Division of Research, in advance of accepting any consulting relationship. This notification shall conform to relevant provisions of the Operations Manual. The notification may, but need not, specify the financial consideration (if any) anticipated by the Member, but shall specify the subject matter, anticipated time commitment, and
entity involved. It also shall contain such other information and assurances relating to protection of the University and Member as the Director, Division of Research, shall reasonably request through guidelines to be issued in consultation with the Intellectual Property Committee. Where such relationships pre-exist promulgation of this Intellectual Property Policy, written notification as specified above shall be given reasonably promptly after such promulgation.

Miscellaneous

8.1. It shall be the responsibility of the Department Chair and/or supervisor in any department in which a visitor is performing University research or scholarly activities which may result in the creation of Intellectual Property to ensure that this Policy is described to the visitor and that the visitor consents, on forms provided by the Division of Research, to abide by it.

8.2. The University reserves the right to amend this Policy from time to time, including the method by which income will be shared with Creators. Any Member of the University may propose changes or additions to this Policy. The Intellectual Property Committee shall consider such proposed changes and, upon open deliberation, recommend adoption of such changes and modifications as may be deemed by it to be reasonable, appropriate for the furtherance of the University's Policy for the Management of Intellectual Property and consonant with current judicial and future interpretation of the law. The Director, Division of Research, may accept or reject rule changes recommended by the Intellectual Property Committee.

This Policy and any Amendment of it Shall be Effective Upon Approval of the Board of Trustees of the University Faculty Senate Action, October 21, 1992

Administrative Council Action, November 9, 1992

Board of Trustees Action, January 20, 1993