Draft Intellectual Property Policy

Over the past several years, the Offices of Research & Engagement and General Counsel have received many questions regarding how the University addresses intellectual property issues.  In working through these questions, we have realized that the complexity of the research and engagement efforts of our faculty needed a more robust Intellectual Property Policy.  In response to those conversations, we reviewed USG and other compliance requirements, surveyed our policy of peer and aspirational institutions, and identified opportunities to improve our management of the University’s Intellectual Property.

We hired an outside attorney, Ajit Dang, who recently opened his own IP firm after being a Principal at Fish & Richardson, one of the largest and most successful intellectual property firms in the United States, and asked him to develop a policy that addressed several important considerations.  He surveyed the IP Policies from peer and aspirational institutions and crafted something unique to the strengths of UNG.  Specifically, we asked him to develop a policy that:

• Recognizes the importance of academic freedom and the unique environment of higher education, as compared to the for-profit innovation environment.
• Is consistent with the framework for intellectual property laid out in USG Policy 6.3 (on Intellectual Property).

• Addresses and responds to the questions we had received from members of the University community interested in developing intellectual property.
• Provides clarity regarding ownership and control of intellectual property.

The result is unique to the strengths and operations of UNG.

The draft documents will be shared with Provost Council, Faculty Senate, Staff Council, and made available on the Office of Research and Engagement’s website for review and comment from the University community.  Those comments will be reviewed and considered by the Offices of Research and Engagement, Academic Affairs and the General Counsel and incorporated into a revised draft, where appropriate.

Certain aspects of an idea can be protected.  The two most common types of protection for ideas are copyrights and patents.  A copyright protects the expression of an idea, whereas a patent protects the implementation of an idea.  So, when you record or express your idea, a copyright will protect your specific expression of that idea.  Similarly, when you implement your idea as an invention, a patent can be obtained to protect it (assuming someone else has not already come up with it).  Thus, the intellectual property protection covers your specific expression of the idea (copyright) or application of the idea (patent), but not the idea itself.  For example, one may have an idea about a projector that can create a hologram that is visible from all angles and in all light conditions.  The core idea, in and of itself, is not protectable.  But, if one were to create a prototype, design or process that results in such a hologram, then that implementation of the idea could be patentable. 

The United States recognizes a number of different types of intellectual property but the most common and relevant types of IP for our purposes are patents and copyrights.  Generally, ownership of patentable inventions resides with the inventors themselves.  But the results vary widely depending on the context in which the invention was created.  The same generally applies to copyrights, where the author who created the original work is considered the owner of any copyrights in the works.  But again, the rules and results vary depending on the context in which the original work was created.  A good example is works made for hire.  This is an idea that if an employee creates an original work in the normal scope of his or her employment, the employer may be recognized as the owner of the copyright.  This concept of ownership is part of the copyright statute.

In these situations, the company or employer generally obtains ownership of the IP that its employees create within the scope of their employment.  This is accomplished when companies enter into contractual arrangements with their employees that address IP ownership.  An example is a patent assignment, where the employee agrees to assign his or her patentable inventions to the employer.  Depending on the type and size of the company, you may find very intricate IP policies put in place, and even profit sharing policies or sometimes, rewards, based on the filing of a patent.

The Board of Regents sets the core policy for how IP is developed, administered, and shared.  Each USG institution then builds its own specific IP policies based on the USG framework.  So, while institutions have some freedom in defining how IP is administered and who owns what, all USG institutions must generally follow the fundamentals of the USG policy.

Like many other American institutions, figuring out who owns, controls, and shares in the profits of IP depends on the level of support or direction by the institution.  The USG IP policy identifies four general buckets or contexts in which IP may be developed.  Figuring out who owns what or what community members get to share in the proceeds depends on which of the four buckets the IP falls in. 

Starting on one end of the spectrum, are “sponsor-supported efforts.”  A typical example would be a grant or partnership with another company or sponsor to develop some particular technology.  In these scenarios, the question of who owns any resulting IP as between the sponsor, the University, and the faculty involved, is often determined by the specific contract governing the grant. 

On the other end of the spectrum, are “individual efforts.”  An example might be a faculty member develops a technology largely on his or her own, or maybe with incidental use of University resources.  In these situations, the USG policy dictates that the faculty member should retain ownership of any resulting IP. 

In the area in the middle, the policy looks to how much the University was involved in creating the IP, or whether the University specifically commissioned or assigned the efforts to develop the particular IP in question. 

USG’s IP policy lays out four buckets or scenarios in which different rules on ownership and profit-sharing may apply.  We’ve briefly discussed the scenario where a sponsor or third-party grant is involved, and the scenario, on the other side of the spectrum, where a faculty member or other employee develops IP on his or her own and outside the direction of the University. 

Faculty and staff are likely going to be most interested in how ownership and profit-sharing works when they create something in the normal course of business or scholarly research.  The sections of the draft IP Policy that are most relevant to that question are the section on Assigned Efforts and the section on Assisted Efforts.  Both of these sections lay out basic guidelines for how and when the University will assert ownership over faculty or staff inventions and original works. 

Generally speaking, these sections establish that the University will own intellectual property created by faculty or staff where the IP was created at the specific direction of the University, or if the University provided substantial assistance in the development of the IP. 

The draft IP Policy contains several sections specific to patent-only issues or copyright-only issues.  This question raises concerns regarding what is commonly referred to as the Traditional Works of Scholarship Exception.  The draft IP Policy recognizes that faculty have a general obligation to produce scholarly and creative works and ownership of those works should remain with the individual faculty member.

When instructional materials are developed for a course offered by the University, and the instructional materials are owned by the Creator unless:

• The instructional materials were an institution assigned effort by the University for use by the University;
• The instructional materials were created by employee (not faculty member) in the course of their employment;

• The instructional materials were created as part of a sponsored project or resulting from grants (but not if the production of the copyrighted work is ancillary to the purpose of the grant)
• The instructional materials were created with the use of University Assistance (as defined in the IP Policy)

In order to carry out its mission, the university retains a non-exclusive, no-cost license to use, reuse, reproduce, display, distribute, and make derivative works (such as compilations, archives, or composite works) of instructional materials for the education of University students.

When University Assistance is provided for course development, the University can claim ownership of the copyright.  By planning ahead and developing a written agreement in advance of commencing work, a Creator may negotiate the terms of copyright ownership.

If a faculty member is paid a stipend by the University for developing a course then the University owns the copyright.

Yes.  For example, if University staff create marketing materials, those works would be considered more in the context of works made for hire as part of staff’s administrative responsibilities.  These kinds of works generally belong to the University under the draft IP Policy.

The draft IP Policy applies to all types of Intellectual Property, including patents, copyrights, trademarks, trade secrets, and other types of tangible research property.  The more common issues we’ll be dealing with are copyrights and patents, but non-patentable materials (prototypes, circuits, biological materials, etc.) are becoming more and more valuable so it’s important that we address those as well.

The draft IP Policy covers all the different types of Intellectual Property.  But often it doesn’t make sense to treat them all the same way.  That’s why you’ll find sections in the proposed policy that specifically deal with patent issues or copyright issues, where appropriate.  So, often the policy will lay out a general policy on a particular issue, followed by supplemental patent-specific or copyright-specific policies. 

The draft IP Policy is broader than that.  It generally applies to all employees of the University.  So, that would include faculty, staff, and research assistants.  That said, the draft IP Policy largely excludes student created works.  Institutions vary in their approach to ownership of IP created by students as part of their coursework or graduate research.  We’ve taken a largely hands-off approach with student IP, except in the particular occasion where the student is developing a technology or work as part of his or her employment with the University.

Perhaps not surprisingly, the AAUP Statement advocates for greater control and ownership of IP by faculty members themselves.  However, as a USG institution, we’re confined by the USG framework, which generally shifts ownership and therefore control, to the University the more it is involved in the development of the IP. 

The draft IP Policy pushes the envelope where we can—it recognizes faculty ownership of their traditional scholarly works (section III.A.3.b.ii) and allows for the broad use of institutional resources without ceding faculty ownership (section III.A.3.c.ii.(B)).

The draft IP Policy was based on research of other institutions, including USG research universities, comprehensive universities, state universities and state colleges.  Generally, research universities provided the lowest shares to the creators and state colleges provided the most, with the overall range between 30% and 55%.  The majority of institutions also provided an initial lump sum of royalties to the creators generally ranging from $2,000 to over $12,000.  The draft IP Policy strikes a balance to incentivize creators and also rewards their respective departments and colleges. 

As part of the faculty contract process this summer, each faculty member will be asked to sign a one page Assignment.  The Assignment transfers title to all inventions that the faculty member invents, discovers or develops in connection with their work at the University.  The document is a one-time assignment that covers the faculty member during their employment at the University.  All new employees will have to sign the same agreement. 

The assignment of patent interests is a very common practice among educational institutions.  The practical effect of assigning a patent interest is to streamline the procedure of prosecuting a patent should the University choose to do so.  The key take-away:  only patent interests are being assigned as a condition of employment, and only those in connection with work at UNG.  The IP policy will determine where ownership will ultimately vest.  If there is a determination under the policy that an invention created belongs to you and only you, the University will assign back any such interests.

The first step is for all members of the University community to review the draft IP Policy and educate themselves on the basic framework.  The policy was drafted with an eye towards a non-legal audience, but at the end of the day it can still be confusing, even for lawyers.  We also have to recognize that no policy can clearly and specifically address every scenario that may arise.  So while the draft IP Policy sets guidelines, there may be gray areas that remain and require further discussion.  USG Policy also requires the University establish an Intellectual Property Committee, which will include faculty members from the various colleges or divisions amongst other community members.  The Intellectual Property committee has been charged to (i) make recommendations regarding the rights and equities in intellectual property created by faculty, staff or students, (ii) identify an appeal procedure to resolve disagreements, and (iii) make a recommendation about the course of action the institution should utilize to develop and manage its licensing program for intellectual property. 

The University would be bound by the draft IP Policy, just like the members of the University community.  If ownership of a patentable invention or copyrighted work is determined to belong to the Creator(s) exclusively, the University will assign back any interests it may have obtained.  As noted above, only patentable interests in inventions created in connection with work at the University are automatically assigned, and the draft IP Procedures will include mechanisms for reverting ownership of such interests if it is determined under the policy that ownership should vest with the Creator(s) exclusively.  The draft IP Policy also contemplates the existence of a University-wide IP Committee and a framework for addressing questions or disputes regarding ownership of intellectual property so that Creators have a fair and reasonable opportunity to be heard.