WASHINGTON AND LEE UNIVERSITY

POLICY ON INTELLECTUAL PROPERTY*

 

            Washington and Lee University encourages the production of creative and scholarly research, works and inventions, known broadly as intellectual property, among faculty, students and staff.   The products of this scholarship may create rights and interests on behalf of the creator, author, inventor, public, sponsor and W&L.  The purpose of this policy is to support and reward scientific research and scholarship, and help faculty, students and staff identify, protect, and administer intellectual property matters and define the rights and responsibilities of all involved.   W&L faculty and employees are encouraged to retain a non-exclusive, royalty-free license to allow them and W&L to use work they author or create and intend to publish in furtherance of W&L’s academic mission (e.g., in the classroom, at lectures, etc.).

 

1.                  Application of Policy

           

            The policy applies to works created by all classifications of faculty, staff and students of the University and to non-employees such as consultants and independent contractors, who create works on behalf of the University, unless a written agreement exists to the contrary.

 

2.         Identification of Intellectual Property  (“Intellectual Property”)

                       

            Intellectual property shall consist of the following:

(1)               Copyrightable material produced from creative and scholarly activity, such as text (manuscripts, manuals, books, and articles); videos and motion pictures; music (sound recordings, lyrics, and scores); images (print, photographs, electronic, and art); and computer software (programs, databases, web pages, and courseware); and

(2)               Patentable works such as patents (processes, machines, manufactures, or compositions of matter); devices; and software excluded from copyrighted materials; and

(3)               Trademarked materials, such as words, names, symbols or logos, domain names, trade dress, and slogans or any combination of words which has been adopted by the University to identify itself and to distinguish itself and its sponsorship from others.

(4)               Trade Secrets.

 

3.         Ownership and Use

 

(1)       General Rule.  Keeping with the view that one of the University's primary benefits to society is the production of original works by its employees and students, and in order to best encourage such activity, it is the general policy of Washington & Lee that Intellectual Property shall be the property of the author or creator.  The University may assert ownership rights to Intellectual Property developed under circumstances set forth further below.

 

            (2)       Patentable Intellectual Property

 

                        Responsibility for Disclosure of Patentable Intellectual Property: University personnel who alone or in association with other entities create or intend to create patentable subject matter with any use of University resources must disclose the matter and obtain prior authorization from the Office of the Provost (or designee).  Such disclosure shall be made when it can be reasonably concluded that a patentable subject matter has or will be created, and sufficiently in advance of any publications, presentation, or other public disclosure to allow time for possible action that protects rights to the intellectual property for the creator and the University. Creators are encouraged to seek the advice of the Provost (or designee) in determining whether the subject matter is patentable or whether the University desires to pursue patenting the matter. 

 

                        Determination of Rights to Patentable Subject Matter: Except as set forth below, the creator of patentable intellectual property shall retain his/her rights, and the University shall not assert ownership rights. The University will assert ownership rights to patentable intellectual property developed under any of the following circumstances:

·                     Development was funded by an externally sponsored research program or by any agreement which allocates rights to the University.

·                     Development required significant use of University resources (e.g. facilities, equipment, funding) or more than minimal use of University personnel.  Participation of students directly in the development, or indirectly through use and feedback that substantively influences development, constitutes significant use of University resources.

·                     The creator was assigned, directed, or specifically funded by the University to develop the material.

·                     Material was developed by administrators or staff in the course of employment duties and constitutes work for hire under US law.

            (3)       Other Intellectual Property

                        Responsibility for Disclosure of Intellectual Property: In contrast to historical business practice, the tradition of academic institutions is to give faculty members the right to retain ownership of their Intellectual Property. This policy protects that traditional right, and faculty are not obligated to disclose the creation of these materials, even when the product might have commercial value, unless the material was developed under one of the qualifying conditions listed in the next section in which case the creator is responsible for timely disclosure. However, faculty are encouraged to disclose any protectable material that has commercial value to the extent that they may wish assistance in copyright protection and marketing in exchange for profit sharing with the University. All disclosures should be made to the Office of the Provost.

                        Determination of Rights to Intellectual Property: Except as set forth below, the creator of Intellectual Property shall retain his/her rights, and the University shall not assert ownership rights. However, creators will be expected to grant non-exclusive, royalty-free, perpetual licenses to the University for Intellectual Property that is developed for University courses or curriculum, so that the University's continued use of such material for educational purposes at W&L would not be jeopardized. The University may assert ownership rights to Intellectual Property developed under the following circumstances:

 

·                     Development was funded as part of an externally sponsored research program under an agreement which allocates rights to the University.

·                     A faculty member was assigned, directed, or specifically funded by the University to develop the material, and the University has negotiated an understanding or formal contract with the creator.

·                     Material was developed by administrators or other non-faculty employees in the course of employment duties and constitutes work for hire under US law.

·                     Development required significant use of University resources (e.g. facilities, equipment, funding) or more than minimal use of University personnel.  Participation of students directly in the development, or indirectly through use and feedback that substantively influences development, constitutes significant use of University resources.

(4)       Intellectual Property Developed Under Sponsored Research Agreements

 

                        Ownership of Intellectual Property developed pursuant to an agreement with any sponsor will be governed by the provisions of that agreement.  Sponsored research programs funded by private sponsors will generally provide for the University to retain title to all intellectual property that arises in the course of the research program with the sponsor retaining an option to acquire commercialization rights through a separate license agreement. Government and nonprofit sponsors generally allow rights to intellectual property that arises from the research program to vest with the University, subject to certain retained rights held by the federal government.

 

            (5)       Special Agreement

           

            The overriding principle underlying this Intellectual Property Policy is to encourage creativity and inventiveness, so W&L reserves the right to allow some flexibility in applying this policy on a case-by-case basis.  In such cases, ownership and use of materials developed pursuant to a special agreement between the University and the creator/author will be governed by the principles of that agreement.  

 

4.                  Administration

 

            Office of the Provost:  The Policy on Intellectual Property shall be administered by the Office of the University Provost and the stated terms and provisions of the policy shall be determined and interpreted by the Provost.

 

            Intellectual Property Review Committee:  In implementing this policy, the Provost shall appoint a standing Intellectual Property Review Committee whose functions shall include (1) reviewing policy provisions from time to time, as needed, with recommendations for change or amendments to the Provost; (2) serving as a non-binding decision-making body in the case of any dispute relating to this policy; (3) reviewing other issues as requested by the Office of the Provost or other interested parties.

 

            Dispute Resolution:  In the event a party does not accept the non-binding decision of the Intellectual Property Review Committee with regard to a dispute, that party can request a binding arbitration by a panel of three arbitrators pursuant to, and administered by, the America Arbitration Association.  This decision will be final.

 

         Changes to Policy:  The University reserves the right to change this policy from time to time.  Proposed changes will normally be discussed among the vice presidents and deans and the Provost.  The Provost and President have the sole authority to change this policy.

 

5.                  Royalties

 

      All revenues derived from University-owned Intellectual Property including electronic media will be received and administered by the Office of the Provost.  For each specific piece of Intellectual Property owned by the University, costs incurred in the process of perfecting, transferring, and protecting University rights to the property paid by the University will first be deducted from the gross income available before distribution. An accurate accounting of all such costs shall be made available to the author/creator upon request. The distribution of net proceeds (income less all costs including that of an agency engaged to provide patent administration services) that is received from University-owned Intellectual Properties shall be shared equally between the creator and the University absent agreement otherwise. The University and/or creator may, in appropriate circumstances, take equity positions in companies licensed to market or use Intellectual Property.

 

6.                  Use of W&L names/logos

 

Faculty, staff, and students may use the W&L name and logos to identify themselves (John Doe, Professor of Physics, Washington and Lee University).  W&L name(s) and logos shall not be used by individuals or entities in a manner that implies university endorsement or responsibility for particular activities, products, or publications involved, for commercial purposes, or by any individual or group promoting itself, without the express written permission of the Provost consistent with W&L’s Trademark Licensing Policy.             

 

 

*Many portions of this policy are taken from the same or similar provisions in the policies of Tufts University and Lehigh University.   

 

 

 

EFFECTIVE: MARCH 2004

 

 

 

 

 

 

 

 

 

 

 

 

 

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