UNIVERSITY INTELLECTUAL PROPERTY POLICY GUIDELINES

(Approved by the IEEE-USA Board of Directors, 20 June 2002)

IEEE-USA recommends that universities and colleges follow these guidelines in developing policies and procedures on intellectual property developed by their faculty, staff and students.

1. Dissemination of Written Policy

University policies and procedures should be in writing and clearly state the intellectual property that the university considers its own and any laws applicable to its intellectual property policies. IEEE-USA suggests that such written policy be disseminated to all faculty, staff and students to whom it applies, and a summary of the policy is included in the university catalog or other material sent to applicants. The summary should indicate the procedures required to receive a complete copy of the policy.

IEEE-USA suggests that the university also obtain signed intellectual property agreements from all applicable faculty, staff and students, indicating that they have been informed of the university’s intellectual property policies, and agree to abide by them. The university should also inform faculty, staff and students who will be working on a grant or contract whenever that grant or contract contains terms that affect the ownership of intellectual property. [Note: Government policy concerning use of federal funds for research already requires written agreements with researchers that they will promptly disclose all subject inventions in writing, and will assist in securing patents.]

IEEE-USA urges universities to establish programs to educate their faculty, staff and students in intellectual property rights. These programs should provide the necessary steps for securing intellectual property protection, information on events that can cause the loss of intellectual property rights, and information concerning the university’s specific intellectual property policies and procedures.

IEEE-USA suggests that universities clearly indicate what intellectual property produced by faculty, staff or students is considered to be the property of the university, and what intellectual property is owned by its creator. Such policy should treat intellectual property consistently. The treatment of computer software is of particular concern.

Computer software should be treated in the same manner as other creative works covered by copyright law. If the intellectual property policy gives ownership in textbooks, journal articles, musical compositions, and the like to its creator - regardless of whether university resources were used in its creation, then the same ownership by should hold for computer software.

Computer software can be protected by copyright and, in some instances, patents. Ownership in intellectual property expression rights to computer software should not depend on whether the software might be patentable.

Several states have laws that limit claims of intellectual property ownership by employers to the business activities of the employers, rather than all intellectual property developed by their employees. IEEE-USA supports laws granting employees ownership of intellectual property developed outside of their employment without the use of employer resources. Students’ rights should be no less than those of employees.

Determining what intellectual property a university should own is more complicated. Unlike companies doing business in specific areas, university research activities are simply the sum of the research interests of its faculty. A test other than “related to employer business” should be used in this special case of university faculty.

IEEE-USA recommends that the test for ownership of intellectual property should be whether it was produced as part of a specific job assignment of faculty, staff or students. Intellectual property produced as part of the general activities expected of faculty or students, such as teaching, artistic creation, or unfunded research, should be owned by its creator. Intellectual property developed under a specifically funded research project or a specific university assignment should be owned by the university or as specified in the research agreement.

If there are intellectual property ownership requirements associated with a proposed contract or grant, all faculty, staff, or students who will be working on that grant or contract should be made aware of those requirements as soon as they are known to the university.

IEEE-USA strongly recommends that intellectual property produced by students as part of their course work, theses or dissertation research, other than funded research for which the university has obligations to others, should be owned by the students, not the university. This follows because students are not acting as university employees when they are taking a class or writing a thesis or dissertation.

Intellectual property created by students in the course of their employment by the university on a specific project, except for a thesis or dissertation written by them, as well as intellectual property developed with university resources to the extent that use exceeds what is normally provided students, should be the property of the university.

IEEE-USA recommends that a portion of the net proceeds from the sale or licensing of intellectual property by a university be returned to its creators to foster a culture of practical innovation. This should be based not only on cash royalties received, but also on stock or other assets received by the university. While IEEE-USA does not recommend a specific percentage share for the creators, 40 to 50 percent of net proceeds is common. A portion of the university’s share should go directly to the creators’ academic unit (college or department), to encourage future intellectual property development.

In computing net proceeds from the sale or licensing of intellectual property, IEEE-USA thinks that only the external expenses of securing any necessary protection for the intellectual property should be deducted from the income for that property. This would include patent application and attorney fees, patent maintenance fees, copyright registration fees, and the like. It should not include operation costs of the university’s technology transfer program (whether internal or external), which should be supported through the university’s share of the proceeds of intellectual property sales or licensing, or general university funds or other overhead.

IEEE-USA also encourages universities to make its technology transfer program expertise available on a low-cost basis to faculty, staff and students who wish to have the university assist in the licensing of intellectual property owned by those faculty, staff or students.

IEEE-USA recommends that successful creation of intellectual property be considered during any review of a faculty member for retention, promotion or tenure.

IEEE-USA also recommends that when a faculty member moves to a new university, his or her prior university should license any intellectual property created by the faculty member, for research and development purposes only, to the new university at no cost to permit the faculty member to continue research without concern for infringing upon intellectual property rights he or she originally created. The prior university will retain all rights to commercialize or otherwise license the intellectual property, but the new university or the faculty member (as appropriate under the new university’s intellectual property policy) will have the rights to any improvements based on the prior university’s intellectual property.