PROPOSED INTELLECTUAL PROPERTY POLICY

FOR WASHBURN UNIVERSITY

SUBMITTED

TO

RUSSELL E. SMITH

SCHOOL OF BUSINESS

CHAIR, UNIVERSITY COUNCIL

BY

INTELLECTUAL PROPERTY COMMITTEE

JAMES B. WADLEY, CHAIR

JOANNE ALTMAN

TOM AVERILL

ROBERT BONCELLA

DAVID FREEMAN

CYNTHIA HORNBERGER

VIC LANDRUM

RICHARD OLSON

CLIFF ROBERSON

GLENDA TAYLOR

JOLYNN BROWN (STUDENT)

I. GENERAL.

Washburn University recognizes that it has an obligation to develop its capacity to serve the public as a center of learning. This is largely done through the auspices of a faculty and staff that is dedicated to ever pushing outward the frontiers of knowledge. Through the research, writing and teaching of those members of the University community, important advances in understanding are regularly achieved. Faculty members and others within the University community are encouraged to engage in meaningful research in order to educate students; broaden their understanding of the universe; stimulate them to creative inquiry and inspire others to solve problems through the discovery of new knowledge; to write about their discoveries to share the wealth of their understanding with their colleagues, students and the public at large; and to teach in ways that will create an atmosphere that will inspire their students to explore, discover and find meaning in their world. Washburn University also recognizes that it has an obligation to develop its capacity to serve anyone who looks to the University for its expertise by providing the highest quality services and products it can offer from the richness of its resources, opportunities and discoveries. These functions of the University are considered to be part of the University's obligation to serve its students as well as to serve the public interest.

It may be that as the above functions are discharged, valuable intellectual property will be created. It is believed that the University has an interest in such property and that the development and transfer of such may be done for the benefit of the public. It is also believed that a primary mission of the University is to encourage those who work within the University community to engage in the kind of creative enterprise that is likely to generate the maximum amount of new ideas and discoveries by recognizing and protecting the interests of those creators in and to such intellectual property. In order to successfully balance this University's interest, the public interest and the interest of the individual creators within the University community, this Intellectual Property Policy, as set forth herein, is therefore adopted.

Intellectual Property, as herein used, means the particular expressions of creative endeavor that may be expressed as patentable or copyrightable works. It also includes the means by which the University designates itself as the source of its various goods and services through the use of trademarks and service marks.

The principles of this Intellectual Property Policy should be sufficient to resolve questions regarding the development, distribution, ownership, licensing and income distribution of web tools and Internet course materials and other electronic media. The criteria for making ownership determinations for such electronic media are the same as for other types of copyrighted or patented works. It is possible that in particular situations, the level of institutional subvention and support will be greater than with respect to other areas, in terms of providing grants, release time, hardware, software, and the use of professional staff and other employees to work on these projects. This suggests the need for additional principles to address unique electronic media development situations. It is for this reason that these principles are set forth in a separate section below.

This policy shall be implemented by the office within the structure of Washburn University that is charged with managing the University's Intellectual Property.

II. COPYRIGHT.

A. DEFINITIONS.

1. "Copyrightable Work" shall include any material that is copyrightable under the laws of the United States (17 U.S.C.A. 101 et seq.) and shall include, but not be limited to printed material, art, music, computer software or databases, audio and visual materials, circuit diagrams, engineering and architectural drawings, dramatic compositions, choreographic works and pictorial or graphic works fixed in any tangible medium of expression.

2 Copyright rights shall include all rights recognized under sections 106 and 106A of the Copyright Act of 1976 as amended (17 U.S.C.A. 101 et seq.).

3. "Work for hire"

a. shall have the same meaning as provided under Section 101 of the Copyright Act of 1976, as amended (17 U.S.C.A. 101) except as herein provided and shall mean

i. a work prepared by an employee within the scope of his or her employment; or,

ii. a work specially ordered or commissioned for use as a contribution to a collective work, as part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a "supplementary work" is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon or assisting in the use of the other work, such as forewords, afterward, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an "instructional text" is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

b. "scope of employment" as used herein shall be presumed not to include works which result from activities required of University personnel which are performed for promotion and tenure purposes; works resulting from normal teaching, research or administrative assignments; works performed merely as a result of general terms of the employment contract with the University; or works that result from independent efforts unless such works are specifically so identified within the contract of employment with the individual University employee or constitute "university-supported works," as defined below.

4. "University-supported work" shall mean a work of a creator which is substantially the result of University support or would not have come into existence but for University support. It does not include works made in the course of independent efforts nor works which result from the normal activities associated with teaching, administration or research responsibilities of the employee such as: scholarly articles published in journals independent of the University; theses or dissertations of students; books, articles, or similar works the intended purpose of which is to disseminate the results of normal academic research or scholarly study; or works developed without the use of appreciable University support and used primarily for the purpose of assisting or enhancing the employee's teaching, administrative or research assignment.

5. "University support" shall include the use of University funds, personnel, facilities, equipment, materials, or technological information, and includes such support provided by other public or private organizations which is arranged, administered, or controlled by the University. University support does not include the normal use of offices, classrooms, equipment or facilities in the course of normal teaching, administration or research assignments.

6. "independent efforts" with respect to works means that the ideas for the work came from the creator, the work was not made with the use of University support, and the University is not held responsible for any opinions expressed in the work.

B. POLICY.

1. It is the policy of Washburn University that the copyright or any particular rights associated with a copyright of or in any copyrightable work shall belong to the author or creator thereof except as herein provided. If the author or creator of the work is an employee of the University, the copyright shall be deemed to belong to the University to the extent that the work may be considered a "work for hire" as defined herein.

2. If the work is considered a "work for hire" as defined above, the copyright or any specific copyright rights therein, as defined above, will be deemed to subsist in the University and may be assigned or licensed by the University without consent or permission from the employee. If the work is considered a "work for hire" as defined above, unless otherwise agreed as part of particular agreements entered into between the employee and the University regarding the creation of such works, including University-supported works, the employee shall retain a nonexclusive license in the work insofar as the exercise of those rights is necessary or convenient to the performance of normal teaching, administrative or research assignments. University and the employee may enter into any other such arrangement regarding employee exercise of copyrights in such works as may be agreeable to both parties including licensing, releasing or assigning back to the employee the full copyrights in such works.

3. Where the University claims ownership as a result of university sponsorship, the employee shall be entitled to 40% of the net income generated from the sale, licensing or marketing of such work up to the first $200,000 of cumulative net income and 25% thereafter unless otherwise agreed upon in a written sharing agreement entered into between the employee and the University. The 60% University share of the net income from the first $200,000 and the 75% University share of cumulative net income thereafter shall be retained by the University to defray the expenses of administering the Intellectual Property of the University.

III. TRADEMARK.

A. DEFINITIONS.

1. "Trademark" means any word, name, symbol or device or any such mark or device or combination thereof adopted and used by Washburn University to identify its goods or services and distinguish them from those of others. The term "Trademark" may also include service marks.

2. "Service mark" is a mark used in the sale or advertising of services to identify the services of the University and distinguish them from the services of others.

B. POLICY.

1. It is the policy of Washburn University to claim all rights, title and interest in and to all trademarks and service marks recognized under 15 U.S.C. 1501-1127 and K.S.A. 81-101 through 123 as may be used by the University to designate itself as the source of goods and services of the University. Such rights shall be deemed to vest in the University notwithstanding the entity charged with their enforcement or protection. It is declared to be the policy of the University to claim and enforce such rights in those marks to the extent permitted by those statutes. Such marks shall include, but not be limited, to any word, name, symbol, slogan, logo, design, device, color scheme, or song, to the extent the same may be legally recognized as trademarks or service marks.

2. It is further the policy of Washburn University to claim rights in the marks derived from the following sources:

a. commissioned works: In the event any faculty member, student, employee or outside individual or entity is commissioned by Washburn University to create a trademark or service mark, all rights in such marks shall be claimed by Washburn University unless the parties expressly agree otherwise.

b. Incidental development: In the event that a trademark or service mark is incidentally developed by any faculty member, student, employee or outside individual or entity which, over time, becomes sufficiently identified with Washburn University to become recognized as functioning as a trademark or service mark of the University, all trademark or service mark rights therein shall be deemed to be vested in Washburn University.

3. It is the policy of Washburn University to claim the exclusive right to license others to use such trademarks and service marks. Such licensing may be authorized directly by appropriate University personnel or though such external independent licensing services as may be officially designated by the University. Permission to use, reproduce or distribute trademarks or service marks of Washburn University is required of all entities or individuals other than the following in whom an implied license will be recognized:

a. DEPARTMENTAL USE for academic purposes, including, but not limited to athletic events, continuing education, seminars and conferences.

b. NON-ACADEMIC USE BY UNIVERSITY DEPARTMENTS to the extent such authorization may be granted by Washburn University through the entity responsible for enforcing this policy.

c. FACULTY USE when in the course of normal teaching, research or administrative activities.

d. OFFICIALLY RECOGNIZED OR REGISTERED STUDENT ASSOCIATIONS to the extent such use is consistent with University policies or purposes.

e. UNREGISTERED STUDENT GROUPS OR OTHER CAMPUS OR UNIVERSITY RELATED STUDENT USES as authorized by Washburn University through the entity responsible for enforcing this policy..

4. All authorized uses of Washburn University's trademarks or service marks must appropriately identify Washburn University as the owner of the trademark or service mark and shall contain the appropriate circled R or initials TM as may be appropriate.

IV PATENT.

A. DEFINITIONS.

1. "University personnel" shall include full-time and part-time employees of the University, including faculty, administrative and professional, support services employees and volunteers, persons paid by or through the University and anyone working under university auspices. Students included within any of these categories are considered university personnel.

2. "invention" shall include any discovery, invention, process, composition of matter, article of manufacture, know-how, design, technological development or patentable biological material.

3. "University support" shall include the use of University funds, personnel, facilities, equipment, materials or technological information, and includes such support provided by other public or private organizations when it is arranged, administered, or controlled by the University.

B. POLICY

1. It is the policy of Washburn University that all inventions made in the field or discipline in which the creator is engaged as university personnel or made with the use of University support is the property of the University except as hereinafter provided. Inventions made in the course of independent efforts is the property of the creator.

2. It is also the policy of Washburn University that a creator of an invention made within the field or discipline of the creator or with university supported work shall share in the proceeds from that invention subject to preexisting commitments to outside sponsoring entities or agencies.

a. It shall be the obligation of university personnel to disclose, promptly and in a complete and timely manner, to the entity within Washburn University responsible for administering this policy, all inventions and university supported works. Such disclosure shall be in writing on such forms as may be required and must be acknowledged by the signature of the creator's department head or chairperson.

b. Washburn University, through the entity responsible for administering this policy shall conduct a review of the disclosure which shall assess the relative equities of the creator and the University in the invention and determine its importance and the extent to which the University should be involved in its protection, development and promotion.

c. Washburn University, through the entity responsible for administering this policy shall inform the creator of the University's decision regarding ownership of the invention and the University's legal rights therein as soon as practicable but no later than 120 calendar days from the receipt of the complete disclosure. Washburn University, through the entity responsible for administering this policy, may elect to respond in one of the following ways on behalf of the University:

i. waive the University's right to the invention, allowing the creator to protect the invention as he or she may wish. If the invention was created using outside funds, this waiver is subject to any provisions in the sponsoring agreement. This waiver shall not affect any right in the University to make a royalty-free use of the invention.

ii. elect to acquire title to the invention by assignment. Under this election, development and marketing decisions are at the discretion of the University. The University may elect to license the invention back to the creator for a minimal royalty and the creator may elect to obtain patent protection at his or her expense.

iii. decide that the disclosure is premature or incomplete, in which case the creator will be asked to resubmit the invention disclosure when additional information is obtained.

d. If Washburn University waives the University's right in the invention, the creator shall be free to claim all rights in the invention and may seek to protect the same, including seeking a patent under the patent laws of the United States. In the event of such a waiver, the creator must disclose any potential conflict of interest created by the ownership interest when proposing research to be conducted using University resources that could reasonably appear to influence the financial value of the invention. The University shall create an established means to manage such conflicts prior to conducting the research.

e. If Washburn University, through the entity responsible for administering this policy determines that the University shall claim rights in the invention or discovery, the university personnel responsible for the discovery or invention shall execute any required releases or assignment of rights to the University.

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f. Washburn University may elect to protect its rights in any invention claimed herein under the patent laws of the United States and may market or license the same as appropriate. The University may elect, at any stage in the commercialization of an invention, to withdraw from any further involvement in the protection or commercial application of the invention or work. If the University elects to withdraw from such commercialization, the University shall transfer the intellectual property rights therein to the creator upon request by the creator. If the property rights are transferred, none of the costs incurred by the University or on its behalf shall be assessed against the creator unless they are development expenses deducted by the University from gross revenues received on account of the invention or work prior to the transfer. Such a transfer shall not affect the right of the University to royalty-free use of the invention.

g. With respect to any invention owned by the University, net income less any foreseeable development expenses the University deems necessary to protect, defend or maintain the invention will be distributed as follows:

i. For net adjusted income up to $500,000:

40% to the creator(s)

10% general University programs

7.5% to the creator(s)'s department

7.5% to creator(s)'s college

5% to departmental scholarships

30% to Vice President of Administration or designated successor for administrative expenses of the office which is responsible for the development and protection of the University's intellectual property.

ii. For net adjusted income in excess of $500,000:

30% to creator(s)

10% to University programs

10% to creator(s)'s department

10% to creator(s)'s college

10% to departmental scholarships

30% to administration as provided above.

h. Distributions shall be made semiannually on or before June 1 and December 1 of each year unless funds are withheld to assure that all applicable licensing and related expenses have been accounted for. Upon the death of the creator, the creator's share shall be payable where lawful to creator's heirs or devisees. An appropriate IRS form will be issued to the creator for their share of revenues. Where there are multiple creators, the shares will be divided equally between all of the creators unless the creators agree otherwise and duly notify Washburn University, through the entity responsible for administering this policy at least one month prior to the date of the next income distribution. Where more than one academic unit is involved in the creation of the work, the distribution may be pro-rated as Washburn University may determine on the basis of information submitted by such units. In the event the University accepts equity in lieu of cash for a license fee or a royalty, such distributions as above described may be delayed until such time as the equity is sold.

V. ELECTRONIC MEDIA

A. DEFINITIONS.

1. "Web tools" includes any and all kinds of software used by the creators as the framework upon which courses will be built and delivered to end users.

2. "Web course materials" includes the actual materials prepared for use in the course that is offered through the web.

B. POLICY.

1. Web tools, web course materials or other electronic media created as the result of normal teaching, research or administration assignments and without the use of University resources over and above those usually and customarily provided shall be deemed to belong to the creators except as herein provided in this section. Washburn University shall claim ownership of web tools, web courses and other electronic media to the extent that they are

a. created with grant or contract support in which the terms of the grant or contract require ownership by the University.

b. commissioned in writing by the University.

c. created as a specific requirement of employment or an assigned University duty.

d. patentable and the University elects to claim patent rights therein as provided above in this Intellectual Property Policy.

2. Web tools, web courses or other electronic media which are created as a result of creators' use of University resources over and above those usually and customarily provided but not claimed by Washburn University as provided in section 1 of this part shall owned by the creators but the University retains, as a minimum, a license to use such works as may be necessary or convenient to the normal discharge of administrative, teaching or research responsibilities on a non-exclusive, royalty-free basis. If the creator uses other University employees as support staff to develop the work, such employees shall be considered to be performing "work-for-hire" as above defined and the University shall be considered to own those works except that any copyright therein shall be considered jointly owned by the University and the creator that initiated the development of the project.

3. Where royalties or any other portion of revenues derived from the sale, licensing, or marketing of electronic media may be payable to the creator thereof, such amount shall be determined for patentable media in reference to the provisions herein dealing with patents and for copyrightable media in reference to the provisions herein dealing with copyrights.