Cleveland State University

Faculty Senate

Article 28
Patents and Copyright Policies

PREAMBLE
28.1 The policies that follow pertain to Intellectual Property, meaning any copyrightable or patentable matter, including but not limited to: books, texts, articles, monographs, glossaries, bibliographies, study guides, laboratory manuals, syllabi, tests and work papers, lectures and lecture notes, musical and/or dramatic compositions, unpublished scripts, films, filmstrips, charts, transparencies, other visual aids, video and audiotapes and cassettes, computer programs and software, live video and audio broadcasts, programmed instruction materials, drawings, paintings, sculptures, photographs and other works of art.

PATENTS POLICY
28.20 Research is recognized as an integral part of the educational process to generate new knowledge; to encourage the spirit of inquiry; and to develop scientists, engineers, and other scholars. As a result of such research, new discoveries and inventions may be made by faculty members of the University. Discoveries and inventions may have material commercial value or potential as revenue producers; may contribute significantly to scientific, technological, social, and cultural progress; and may qualify for patent protection. Patents are created by the Constitution and laws of the United States to recognize the ownership of inventions by individuals in return for the publication of the inventions by issued patents and ultimate dedication to the public after the limited period for which the law grants patent protection.

28.21 The faculty members of the University are encouraged to evaluate the results of their research activities in terms of potential commercial value and the public interest, as well as for scholarly significance.

28.22 I. Definitions
"Patent/patentable" means

(A) Utility inventions or discoveries that constitute any new and/or useful process, machine, manufacture, or composition of matter, or any new and/or useful improvement thereof, as such is further defined in 35 U.S.C. §§ 100 & 101;

(B) Ornamental designs, being new, original and ornamental designs for an article made, such as is further defined in 35 U.S.C. § 171, et seq; and

(C) Plant patents, being for the asexual reproduction of a distinct and new variety of plant, including cultivated sprouts, mutants, hybrids and newly found seedlings, other than a tuber propagated plant or plant found in an uncultivated state, as such is further defined in 35 U.S.C. § 161, et seq.

"Invention" includes discoveries, products, processes, compositions of matter and improvements that are or may be patentable.

"Sponsored research agreement" includes any sponsored research grant, contract, fellowship, or other special arrangement to fund faculty research by third parties.

"UORED" means the University Office of Research and Economic Development.

28.23 II. Disclosure

(A) Faculty members, other employees, and students shall disclose in a timely manner to UORED all inventions that are developed from research or investigations supported by the University or by any University facilities, equipment, or resources. Such support includes any facilities, equipment, or resources provided pursuant to sponsored research agreements.

(B) Disclosure shall be in writing and shall include at least the following: a general description of the field of the invention or discovery, any prior art of which the inventor(s) is aware, a general statement (if possible) of the economics of the invention or discovery, a listing of the notebooks or other records containing the first description of the invention or discovery, the name of the person to whom the invention or discovery was first disclosed, and the date of such disclosure. UORED will determine the particular form, detail, and supporting information required for disclosures.

(C) Faculty members, other employees, and students who believe they have inventions that were not developed from research or investigations supported by the University or by any University facilities, equipment, or resources shall not file, or permit others to file in their name, patent applications, without providing at least thirty (30) days notice and a statement of the circumstances of the invention to UORED. At UORED's request, additional information as to the nature and circumstances under which the invention was developed and a copy of the invention disclosure of proposed patent application, whichever UORED may deem appropriate under the circumstances, shall be provided.

28.24 III. Disclosure and Review Process

(A) Within thirty (30) days of a disclosure of an invention, UORED shall notify the inventor whether his/her disclosure is incomplete, with notations of the additional information required, or shall refer the disclosure to the Patent Review Committee.

(B) Within thirty (30) days of the receipt of the complete disclosure from UORED, the Patents Review Committee shall make a recommendation about the invention to the President or the President's designee.

(C) Within thirty (30) days of the receipt of the recommendation from the Patents Review Committee, the President or the President's designee shall notify the inventor of the disposition of the invention.

28.25 IV. Patent Review Committee

(A) Composition and Appointment

(1) The Patent Review Committee shall be composed of six members. The Committee members shall elect a Chair from among themselves. At the time of the initial appointment or election, each member shall be designated as serving either a one-year, two-year, or three-year term, so that the term of one faculty committee member and one administration member will expire each year and a replacement appointment or election will be made each year. After the first appointment, subsequent members shall serve a three-year term, commencing on July 1 and terminating on June 30. Committee members may serve additional three-year terms.

(2) Three members shall be faculty members elected by the Faculty Senate. One faculty member shall be from the College of Engineering and one shall be from Mathematics or the Natural Sciences.

(3) Three members shall be appointed by the President.

(B) Duties

(1) The Committee will review the merits of the invention and make recommendations to the President for the management of the invention, including its development, patenting, and exploitation.

(a) The Committee shall make an initial determination of whether the University or any other party has rights to the invention, and, if so, the basis and extent of those rights.

(b) If the Committee determines that the University has rights to the invention, the Committee will make one of the following recommendations to the President:

(i) The University should pursue legal protection of the invention, through patent or otherwise, and seek commercial development of the invention;

(ii) The University should dedicate its rights to the public, adhering to the wishes of the inventor or creator where feasible; or

(iii) The University should transfer or waive its rights in favor of permitting the inventor or creator to protect and develop the invention at his or her own expense, and whether and what conditions should be attached to a transfer or waiver. At a minimum, such a transfer shall be subject to the retention of a non-transferable, royalty-free license in favor of the University to be used in connection with the University's mission of teaching, research, and service.

(2) The Committee, on at least an annual basis, or more frequently, shall review the Patent Policy as a whole and recommend changes to the Contract Implementation Committee.

(3) If there are two or more claimants to an invention within the University and they cannot reach an agreement as to how to share the benefits of the Policy, the Committee shall recommend to the President which of the competing claimants shall be considered inventors or creators for the purpose of this Policy and in what fraction they shall share in the benefits of the Policy.

28.26 V. Duties of the Office of Research and Economic Development

UORED will have the following duties related to the Patents Policy:

(1) Upon request, provide advice and assistance to Researchers with respect to consulting agreements with industrial and other organizations that may involve rights to inventions within the scope of this Policy and provide advice and assistance to University officials who have responsibilities with respect to the approval of consulting arrangements;

(2) Maintain a file for each invention disclosure and each notice and statement with respect to inventions that the faculty member is claiming were not supported by the University. Each file will contain a complete record of all actions;

(3) Determine the form, detail, and supporting information required for disclosure of inventions and provide notice of these requirements to the University community and to individual inventors;

(4) Where there are two or more persons associated with the University claiming to be inventors or creators of an invention in which the University has rights, encourage and facilitate an early agreement (in a form acceptable to the University) among those persons concerning which of the claimants shall be considered inventors or creators for the purposes of this Policy and in what fraction each shall share in the benefits of the Policy;

(5) Assist the Office of University Legal Counsel in obtaining legal protection and arranging for licensing or other commercial development in those cases in which the University elects to pursue its rights, including preparing and prosecuting applications for patent, plant variety protection, and other legal protection; negotiating or assisting in negotiation of licenses and related agreements; and monitoring the collection of royalties or other related income; and

(6) Prepare or assist in the preparation of all required reports on inventions.

28.27 VI. Sponsored Research

(A) All rights to inventions resulting from sponsored agreements shall be controlled by the terms of those agreements. Before accepting funding and conducting research activities under any sponsored research agreement, faculty members, other employees, and students shall be fully informed by the UORED of the terms of such agreements. Faculty members and other employees accepting support through sponsored research agreements shall be required to execute such agreements as will enable the University to conform with the requirements of the sponsoring agencies and shall abide by the terms of such agreements.

(B) When the University and an external sponsor enter into an agreement for research to be conducted with funds or facilities provided in whole or in part by external sponsors, any person who elects to conduct such research may be required by the University to enter into an agreement assigning all rights to inventions arising from such research to the University or to the external sponsor.

(C) No person may enter into any agreement respecting the assignment, licensing, or exploitation of any patent or other rights to any invention developed in the course of research supported by funds or utilizing facilities administered by the University pursuant to an agreement with an external sponsor without the written consent of UORED. Such consent shall be given or withheld in accordance with the objectives set forth in this policy.

28.28 VII. Rights to Inventions and Patents; Distribution of Income

(A) Rights to Inventions

(1) All rights with respect to inventions from research activities of faculty members, other employees, and students of the University that are supported by the University or by University facilities, equipment, or resources shall be assigned to and controlled by the University.

(2) All rights with respect to inventions resulting from personal and independent research activities that are not supported by the University or by University facilities, equipment, or resources shall be the sole property of the inventor.

(3) Upon request of the Patent Review Committee or UORED, the appropriate University department chair or dean shall investigate and report to the requesting party the extent to which University facilities and resources were used to support research activities resulting in an invention disclosed in accordance with this policy.

(4) All rights to inventions resulting from sponsored research grants, contracts, fellowships, or special arrangements shall be controlled by the terms of those agreements. Faculty members, other employees, and students accepting sponsored research grants shall execute such agreements in a manner that will enable the University to conform with the requirements of the sponsoring agencies and shall abide by the provisions of such agreements and the Sponsored Research section of this policy.

(B) Distribution of Income

(1) At the time that the Invention Disclosure Form is filed with UORED, the inventor shall assign all rights to the invention or discovery to the University and shall elect a patent expense payment and income distribution option as provided in Schedule A or Schedule B.

(2) Schedule A: All patenting costs are paid by the inventor(s) prior to distribution of income. No University funds may be used to pay patenting costs.

Cumulative Net Income Range Income Distribution

Inventor University

Up to $50,000 90% 10%

Amount greater than $50,000 75% 25%

Amount greater than $100,000 50% 50%

(3) Schedule B: All costs of patenting are paid by the University prior to distribution of income.

Cumulative Net Income Range Income Distribution

Inventor University

Up to $50,000 50% 50%

Amount greater than $50,000 40% 60%

Amount greater than $100,000 25% 75%

(4) Net income to the University resulting from Intellectual Property, including patents developed by members of the University faculty, will be reinvested in faculty development and administered by the University Research Council (URC).

(5) Determination of net financial returns as used in this policy shall be made by UORED for the University in accordance with generally accepted accounting principles.

(6) Where rights to an invention are transferred or waived to the inventor, the allocation of these rights and any resulting future income shall be specified in writing by UORED and approved by the President. A copy of the transfer or waiver shall be promptly supplied to the inventor.

COPYRIGHT POLICY

28.30 Purpose

As an institution of higher learning, the University promotes creative activity in which new materials relating to teaching and scholarship are produced. The University supports such activity to improve teaching and research at the University and to benefit the community at large. Some of the materials produced may be copyrightable. This copyright policy has the purpose of encouraging creative activities while ensuring the benefit of creativity, resources, and energy expended is shared equitably by all parties concerned -- creators, sponsors, and users.

The basic objective of this policy on copyrightable materials includes the following:

a) To promote the development and utilization of materials created by members of the University community in the course of their University activities;

b) To provide adequate recognition and incentives to the creators of such materials through a share in any proceeds from the materials;

c) To provide a means whereby authors can claim title to and protect their intellectual products, including protection from publication by others; and

d) To meet requirements imposed by government agencies or private foundations that contribute funds to support the creation and publication of scholarly works, consistent with the University's basic objectives as outlined above.

28.31 Materials Subject to Copyright

"Copyrightable materials" means those materials subject to copyright under the federal Copyright Act, 17 U.S.C. § 101 et seq. This Act applies to original works of authorship, fixed in any tangible medium of expression, now or later developed, from which such works can be perceived, reproduced, or otherwise communicated, either directly, or with the aid of a machine or device. Works of authorship include the following categories:

1. Literary works;

2. Musical works, including any accompanying words;

3. Dramatic works, including any accompanying music;

4. Pantomimes and choreographic works;

5. Pictorial, graphic, and sculptural works;

6. Motion picture and other audiovisual works;

7. Architectural and other technical drawings and designs;

8. Computer software.

28.32 Rights to, and Equities in, Copyrightable Materials

The ownership of materials initiated and produced by authors who are University faculty members, other employees, or students shall remain with the authors, except for the following classes of works: (a) works for hire; (b) works for which the University has provided assistance beyond that usually accorded; and (c) works done under a sponsorship agreement between the University and an external agency. It is not intended that this policy change the traditional relationship between the University and faculty authors of textbooks and other scholarly and artistic works. Except for the three categories listed above, the University disclaims ownership of copyrights in textbooks, monographs, papers, articles, musical compositions, works of art and artistic imagination, unpublished manuscripts, dissertations, theses, popular nonfiction, novels, poems, electronic books and articles, examination materials and teaching materials, computer programs, and the like, except for a royalty-free license under and for the term of the copyrights in the materials for the University's internal use.

(a) Works for Hire

Copyrightable materials produced by University faculty as the result of direct work assignments to meet specific objectives or as an assigned University duty other than general academic research and normal teaching assignments are "works for hire" for which copyrights belong to the University. A faculty member's general obligation to produce scholarly works does not constitute a specific University assignment for purposes of the "work for hire" doctrine, nor do research grants for specific scholarly projects provided by the University to faculty members fall under the "work for hire" doctrine. Copyrightable materials produced by other University employees as the result of direct work assignments to meet specific objectives or as an assigned University duty are "works for hire" for which copyrights belong to the University. Such materials are usually not initiated by the author, although they may result from performance of a general assigned duty. Such materials also include works commissioned by the University that fit within any of the categories of "specially ordered or commissioned" works described in Section 101(2) of the Copyright Act, 17 U.S.C. § 101(2).

(b) Externally Sponsored Works

Whenever the University and a third party undertake a sponsored research project, their grant agreement or contract shall determine the ownership of all copyrightable materials that are developed. If no provision is made for copyright, the University will own any work created, unless another agreement is reached between the University and the creator.

(c) University Supported Work

If the University provides assistance (hereinafter labeled "extra-ordinary assistance") beyond that usually accorded to faculty, other employees, or students in their work, then the University may claim ownership of the copyright to works produced, unless the creator obtains written authorization from the University before using those resources. A faculty member's general obligation to produce scholarly works does not constitute a specific University assignment for purposes of the "work for hire" doctrine, nor do the payment of a regular salary, summer research grants, professional leave, release time resulting from reduced instructional assignments as provided for by contract or University policy,the personal use of office and library facilities, the use of personal computers, or reasonable data and word processing services constitute extra-ordinary assistance. Extra-ordinary assistance includes, but is not limited to, financial assistance, extra technical help such as assistance from University computer programmers or technicians, or greater than normal use of such University facilities that an outside user would be charged for use.

In all cases, agreements shall be negotiated prior to the commitment of extra-ordinary University assistance for the work. UORED shall maintain a file of all previously negotiated agreements and shall make those documents available to any party applying for extra-ordinary University assistance. If, within ten (10) University working days of the submission of a completed application for extra-ordinary assistance, the author and UORED cannot mutually agree on rights in the work, the author and UORED may each submit, within ten (10) University working days, independent recommendations regarding ownership and equity to the Copyright Committee for determination. Within forty-five (45) days of the submissions, the Committee shall recommend to the President how rights in the work shall be allocated. The President shall make a determination regarding rights in the work within forty-five (45) days after receiving the Committee's recommendations.

For works that are created with extra-ordinary University assistance, the rights and equities of ownership shall be negotiated and agreed upon in writing by the author(s) or creator(s) of the work and the Office of Research and Economic Development (UORED). UORED, on behalf of the University, may agree to:

(i) assign all rights of ownership to the author or creator;

(ii) assign joint ownership rights, sharing in all income derived from the work;

(iii) negotiate a value of the University's assistance and receive payment of no more than fifty percent of royalties accruing to the author up to the value of the University assistance, in return for sole ownership by the author or creator; or

(iv) any combination of the above that adequately reflects the University's level of support.

Whatever arrangement is negotiated, the author shall grant to the University a royalty-free license under and for the term of the copyrights in the materials for the University's internal use. Net income to the University resulting from Intellectual Property, including copyrights developed by members of the University faculty, will be reinvested in faculty development and administered by the URC.

28.33 Copyright Review Committee

The Copyright Review Committee shall be composed of six members. Three members shall be faculty members elected by the Faculty Senate. Three members shall be appointed by the President. The Committee members shall elect a Chair from among themselves. At the time of the initial appointment or election, each member shall be designated as serving either a one-year, two-year, or three-year term, so that the term of one faculty committee member and one administration member will expire each year and a replacement appointment or election will be made each year. After the first appointment, subsequent members shall serve a three-year term, commencing on July 1 and terminating on June 30. Committee members may serve additional three-year terms.