Recommended by the Commission on Research
Approved by University Council: December 2, 1991
Approved by the President: December 2, 1991
The University Council, on recommendation of the Commission on Research, unanimously approved the Policy on Intellectual Properties.
Following is the text of the resolution as approved by Council.
WHEREAS, the need for revision of the Intellectual Properties Policy of 1986 has been recognized, and
WHEREAS, the Intellectual Properties Committee having realized the magnitude of the necessary revisions have drafted and recommended a new Intellectual Properties Policy, and
WHEREAS, the Commission on Research has reviewed and approved the new policy on January 23, 1991,
THEREFORE, LET IT BE RESOLVED that the Policy on Intellectual Properties be approved as university policy by University Council.
POLICY ON INTELLECTUAL PROPERTY
Publicly (state) supported universities have the multiple missions of teaching, research, support of the public interest and fostering of economic development of the area/state in which they are located.
Scholarly activities in a university setting create Intellectual Properties (IPs). IPs include research papers, books, software programs, new inventions, journal articles, etc.
The university's mission includes dissemination of IPs in the most efficient and effective manner possible. The identification and optimization of opportunities for the industrial/commercial utilization of some IPs is also part of this mission, as is the protection of the ownership rights of both the individuals and the university.
While many IPs are best disseminated by publication and placing in the public domain, there are a significant number which are most effectively handled by protection under the IP laws (i.e. patenting and copyright) and licensing (or other transfer) to private sector entities, with attendant financial considerations.
This Policy is designed to establish the rationale and the mechanisms to:
The Intellectual Properties Committee shall be chaired by the Associate Provost for Research and have the following membership:
(IPC Chair and ex-officio members may choose ad-hoc or permanent designees.)
At-large IPC members shall have professional background and expertise spanning the university's fields of endeavor, experience in patent and copyright matters, experience and interest in the economic/marketing aspects of technology transfer and personal contacts which they can draw on to assess technico-economic merit of individual IPs.
Individually each IPC member should have the following characteristics:
The Commission on Research in consultation with the Faculty Senate shall solicit nominations of qualified individuals from multiple sources (i.e. individual Faculty members, Department Heads, Deans, University Administration, Commissions, Faculty Senate, etc.), endorsed by pertinent Department Head(s) and approved by pertinent Dean, and shall prepare a slate of nominees (at least equal to twice the vacancies and representing all colleges of the university).
Each organization shall nominate at least two individuals for each position.
The President shall make all appointments. All at-large terms are for three years. Staggered terms to assure continuity are desirable. Staff Senate, GSA, and SGA representatives are appointed for one year terms. All members may be reappointed. Interim appointments to serve incompleted terms shall be upon recommendation of IPC Chair in consultation with IPC membership.
II. AUTHORITY AND RESPONSIBILITY OF THE COMMITTEE
The IPC shall have the following authority and responsibility with respect to Intellectual Property:
III. IPC WORKING GROUPS
In order to effectively discharge its responsibilities, the IPC will establish the following working groups:
It will be the responsibility of the IRG to gather all available facts from all concerned with the IP and, after appropriate analysis, attempt to mediate a resolution of the conflict satisfactory to all concerned. Failing that, the IRG shall provide the IPC with a compendium of the background, a summary of the conclusions and a preliminary set of recommended solutions, for their deliberation and formulation of recommendations to the Provost.
IV. POLICY GUIDELINES
This section outlines the criteria to be used by the IPC and its working groups in their deliberations, findings and recommendations. To the extent that individual questions are not specifically addressed, these guidelines will, at the least, give a general indication of intent and philosophy and allow proper interpretation.
For purposes of this policy creations are divided into two groups:
Intellectual properties in the first (traditional) group are considered to make their full contribution to the university's benefit by their creation and by continued use by the university in teaching, further development, and enhancement of the university's academic stature; the presumption of ownership is to the author(s). Thus unless there is explicit evidence that the work was specifically commissioned by the university the IP rights remain with the author(s) and the university rights are limited to free (no cost) use in teaching, research, extension, etc. in perpetuity.
In the second group, the strong presumption of ownership is to the university (with the originator having a right to share in the benefits derived therefrom). Thus unless there is convincing and explicit evidence that the IP was developed without the use of university resources and/or facilities (which may include but is not limited to any of the following: use of equipment, lab or office space, university time of originator and/or personnel under his/her control, funds supplied by the university and/or funds originating from sponsored research projects and/or donations to university/affiliated companies, etc.) ownership of the IP rests with the university and the originator(s) are obliged to sign the appropriate legal assignment documents upon request.
Within the above general guidelines, the following situations are more specifically defined:
IPs generated by students not employed by the university and not using university resources of at least $10,000 in their generation will be owned by the student but subject to any applicable prior rights of private sector or government sponsors and to the right of the university to use the IP internally at no cost.
While it is recognized that faculty mission and expertise is concentrated and directed in areas other than commercial utilization, originators of new technology are strongly encouraged to err on the side of submitting a disclosure when doubt as to its commercial potential exists in their mind. Timely (i.e. before publication or other enabling non- confidential disclosure) submission of a disclosure to the university may also be critical to the value of the IP and is strongly encouraged.
To the extent (and as soon as) the researcher/inventor/creator obtains research results which may be considered an IP and recognizes that they may have potential for commercial utilization there exists an obligation to bring these results to the attention of the university in the form of a disclosure.
If, in the absence of a timely disclosure, commercial utilization of a technology takes place with the direct or indirect involvement of the originator(s) but without involvement by the university it will be deemed that the originator(s) have not fulfilled their obligation to disclose and the university may:
Revenues generated by the successful commercialization of IPs owned by the university (whether or not protected by patent and/or copyright) shall be shared equally between the university and the originator(s) of the IP, subject to the conditions and exceptions outlined below.
Such revenues, flowing through the university assignee organization, will accrue to the originating administrative unit of the university net of development costs.
Specifically excluded are costs incurred in the generation of the IP (i.e. research costs). Development costs shall include (but not be limited to) payments made to (or retained by) nonaffiliated organizations (e.g. Research Corp. Technologies, CIT, etc.) involved in the process of commercializing the IPs owned by the university.
Virginia Tech Intellectual Properties, Inc. (VTIP), a non- profit corporation affiliated with the university has been established and charged with the mission of protecting and utilizing IPs for the benefit of the university.
All IPs assigned to the university shall flow to VTIP by assignment for operational management. The IPC (through its Evaluation Coordination Board) should make appropriate inputs and recommendations as to disposition and priority of individual IPs. Originator(s)' inputs/suggestions to VTIP are also appreciated.
The originator(s) of an IP covered by this Policy shall have the right to appeal application of the policy to the IPC.
The IPC will formulate recommendations relative to each such appeal, and will forward both the appeal and its recommendations to the Office of the Senior Vice President and Provost in a timely manner. The Provost will determine the university's response to each appeal, and will so notify the originator(s) and the IPC.
If the originator(s) disagree with the IPC recommendation regarding ownership, a written appeal to the Provost must be filed within (30) thirty days of receipt of notification of the IPC recommendation. This appeal should contain an exposition of the facts as seen by the originator(s), any information they deem pertinent to the case, as well as any applicable citations of policy guidelines. A copy of the appeal document should be sent to the IPC via its Chair.
Upon receipt of the appeal, the Provost may elect to consult with any and all concerned prior to reaching a decision in the case.
In the event that any member of the university (faculty, staff or student) perceives and/or becomes aware of any irregularity in the inventorship/authorship of an IP disclosed (or about to be disclosed) to the IPC he/she should bring it to the attention of the other inventors/authors involved and/or the Department Chair(s) concerned in an attempt to resolve the conflict equitably and amicably. Failing such resolution, the facts of the cases should be submitted in writing within (30) thirty days to the Vice Provost for Research and Dean of the Graduate School (with copy to the Chair of the IPC) with a request for review by the Inventorship Review Group of the IPC.
Upon receipt of such a request, the IRG shall review the facts of the case, convene a hearing for all concerned parties, reach a conclusion and present a synopsis of the case and a recommendation to the full IPC who will, in turn, make a recommendation to the Provost.
President's Policy Memorandum