6,507: Intellectual Property Policy
Last Revised: July 2012
Section 1: Preamble
- The Board of Regents of the Nevada System of Higher Education ("NSHE"), on behalf of the University of Nevada, Reno ("University") is dedicated to teaching, research, and the extension of knowledge to the public. University personnel recognize as two of their major objectives the production of new knowledge and the dissemination of knowledge. A byproduct of these objectives is the development of new and useful products and processes and the publication of scholarly works. Such activities (1) contribute to the professional development of the individuals involved, (2) enhance the reputation of the University, (3) provide additional educational opportunities for participating students and (4) promote the general welfare of the public at large.
- Inventions and copyrightable works often come about because of activities of university personnel who have been aided wholly or in part through the use of university funds and/or facilities. It becomes significant, therefore, to ensure the utilization of such inventions for the public good and to expedite their development and marketing. The rights and privileges, as well as the incentive, of the inventor or author/creator must be preserved so that the abilities of the inventor or author/creator and those of other university personnel may be further encouraged and stimulated.
- The University acknowledges that faculty, staff and students who are university employees regularly prepare for publication, usually through individual effort and initiative, articles, pamphlets, books and other scholarly works which may be subject to copyright and which may generate income. Publication may also result from work supported either partially or completely by the University. With the advent of innovative techniques and procedures the variety and number of materials which might be created in a university community have increased significantly, causing the ownership of such copyrightable works to become increasingly complex.
- The foregoing considered, as directed by Title IV, Chapter 12, of the NSHE Board of Regents Handbook, the University does hereby establish the following policy with respect to inventions or intellectual property resulting from the work of its faculties, staff and students.
Section 2: Definitions
- "Intellectual Property" is a category of intangible property which includes patents and copyrights.
- The term "Inventions" shall refer to all inventions, discoveries, computer programs, processes, methods, uses, products materials, compositions of matter, or combinations, whether or not patented or patentable at any time under 35 U.S.C., or relevant international foreign laws, as now existing or hereafter amended or supplemented.
- "Copyrightable Works" shall include the following: (1) books, journal articles, texts, glossaries, bibliographies, study guides, laboratory manuals, syllabi, tests and proposals; (2) lectures, musical or dramatic compositions, unpublished scripts; (3) films, filmstrips, charts, transparencies and other video or audio broadcasts; (4) programmed instructional materials; (5) computer programs and documentation; and (6) other materials or works which qualify for protection under the copyright laws of the United States, international or foreign laws, or other protective statutes whether or not copyrightable hereunder.
- "Net Income" is defined as income received by the University from a university owned Invention or Copyrightable Work. Less a fifteen percent (15%) management fee to the University's Technology Transfer Office, and less all payments or obligations directly attributable to patenting, copyrighting, marketing, licensing, protecting, or administering the Invention or Copyrightable Work.
- "Personnel" refers to part-time and full-time members of the faculty, staff, all other agents and employees, and undergraduate students, graduate students, and postdoctoral fellows of the university.
- "Work for Hire" is Copyrightable Work prepared by and employee within the scope of his or her employment, as defined by the copyright laws of the United States.
- "Course Materials" refers to materials prepared for use in teaching, fixed or unfixed, in any form, including, but not limited to, digital, print, audio, visual, or any combination thereof. Course Materials include, but are not limited to, documents related to course approval by relevant authorities, lectures, lecture notes, and materials, syllabi, study guides, bibliographies, visual aids, images, diagrams, multimedia presentations, web-ready content, and educational software.
Section 3: Significant Use
- When an Invention or Copyrightable Work is developed by university personnel or others participating in university programs using significant university resources such as facilities, materials, equipment, personnel, funds or other resources under the control of or administered by the University, the University owns the Invention or Copyrightable Work in accordance with the provisions of this policy. University personnel, and others using significant university resources, as part of the terms of their employment/use of university resources, will assign and, as a consequence of their signing of an employment contract, their continued employment, or continued use of university resources, do thereby assign to the University their rights in Inventions and Copyrightable Works developed using significant university resources and, upon request, will provide reasonable assistance to the University, including executing documents, in protecting, or perfecting university's title in, such Inventions and Copyrightable Works.
- For the purposes of developing Inventions or Copyrightable Works, the University does not construe the provisions of office or library facilities or traditional desktop personal computers as constituting significant use of university space or facilities, nor does it construe the payment of salary from unrestricted accounts as constituting the significant use of university funds, except in those situations where the funds were specifically paid to support the development of Inventions or Copyrightable Works.
- Textbooks developed in conjunction with class teaching are also excluded from the "significant use" category; unless such textbooks were developed using university administered funds paid specifically to support textbook development.
- Ownership of the rights to Course Materials including copyright, shall reside with the author/creator. However, the University retains a fully paid-up, royalty-free, perpetual, and non-exclusive worldwide license to any Course Materials for the purpose of continuing to teach the course of instruction for which the documents were prepared, with the non-exclusive right to revise and update them as required for this purpose.
- Generally, an Invention or a Copyrightable Work will not be considered to have been developed using university funds or facilities if:
- only a minimal amount of unrestricted funds have been used; and
- the Invention or Copyrightable Work has been created outside the assigned duties of the inventor or author/creator; and
- only a minimal amount of time has been spent using significant university facilities or only insignificant facilities and equipment have been utilized; and
- the development of the Invention or Copyrightable Work has been made on the personal, unpaid time of the inventor or author/creator.
Section 4: Inventions
- An invention disclosure should be submitted when something new and useful has been conceived or developed, or when unusual, unexpected, or unobvious research results have been achieved or utilized.
- Determination of rights and equities in Inventions (patentable or not) shall be as follows:
- Except as otherwise specified by the University in writing, Inventions shall belong to the University if conceived or reduced to practice: (1) by university personnel as a result of their duties, (2) by agreement with a non-university sponsor or, (3) through the significant use, by any person, of the university's resources such as facilities, materials, equipment, personnel, funds, or other resources under the control of or administered by the University.
- Inventors acquire ownership in Inventions which are: (1) not the result of a university personnel's duties or subject to the terms of agreements with research sponsors or other third parties; and (2) do not involve the significant use of resources administered by the University.
- In the event there is a question about an Invention as to whether the University has an ownership claim, the Invention should be disclosed to the University. Such disclosure is without prejudice to the inventor's ownership claim. In determining ownership interest in an Invention, a designated official may determine that the University has no property interest in the Invention because its conception and reduction to practice was unrelated to the inventor's university's duties, involved only insignificant use of university resources or for such other reasons as may be set forth in the guidelines.
- Sponsor-Supported Efforts. Prior to signing any agreement with a non-university sponsor that may result in or which deals with patent rights or the like, where university time, facilities, materials, equipment, personnel, funds or other resources are involved, university personnel must bring the proposed agreement to the attention of the appropriate administrators of the constituent institution in accordance with its Invention procedures and either obtain a written waiver of university rights or otherwise modify the agreement to conform with these policies, as is determined by the University in its discretion. Research agreements with private sponsors shall define ownership of Inventions. The agreement under which Inventions may be produced may contain specific provisions with respect to disposition of rights to these materials. The sponsor may receive an option to license such Inventions on terms to be negotiated. In those cases where all rights are vested in the University, where income is shared between the sponsor and the University, the inventor may appropriately share in the income. The nature and extent of inventor participation in income, however, shall be subject to sponsor and university regulations as well as the agreement.
- The University will not release university Inventions to the inventor(s). However, in the event the University decides it cannot financially support Intellectual Property protection for a university Invention, on or more inventor(s) may request that the University seek such protection at the expense of the interested inventor(s). The interested inventor(s) shall enter into a written agreement with the University in which they agree to reimburse the out-of-pocket costs associated with seeking or maintaining Intellectual Property protection for the Invention. After execution of such an agreement, the University will consult with the interested inventor(s) on all patent prosecution or similar matters and will seek cost estimates upon request. Any expenses that were reimbursed by the inventor(s) under the agreement will be considered unreimbursed, out-of-pocket expenses eligible for reimbursement from the first revenue received from a license. In acknowledgement of the support provided by the inventor(s) under this option, in addition to receiving their inventor share of any royalties under University Patent Policy, the inventor(s) that reimbursed Intellectual Property expenses will share, on a pro rata basis, ten percent (10%) of the Net Income distributed to the University from any license revenue.
Section 5: Copyrightable Works
- Copyright is the ownership and control of the Intellectual Property in original works of authorship which is subject to copyright law. In contrast to a patent which protects the "idea", copyright covers the "artistic expression" in the particular literary work, musical work, computer program, video or motion picture or sound recording, photograph, sculpture and so forth, in which the "expression" is embodied, illustrated or explained, but does not protect any idea, process, concept, discovery or the like. It is the policy of the University that all rights in copyright shall remain with the author/creator unless the work is a Work for Hire (and copyright vests in the University under copyright law), is supported by a direct allocation of funds through the University for the pursuit of a specific project, is commissioned by the University, is created with the significant use of university administered resources or is otherwise subject to contractual obligations.
- Except as may be provided otherwise in this policy, the University does not claim ownership of books, articles and similar Copyrightable Works, the intended purpose of which is to disseminate the results of academic research or scholarly study. Such Copyrightable Works include those of students created in the course of their education, such as dissertations, papers and articles. Similarly, the University claims no ownership of popular nonfiction, novels, poems, musical compositions or other Copyrightable Works of artistic imagination which are not university commissioned works or which were not created with the significant use of university administered resources. If title to copyright in Copyrightable Works defined within this paragraph vests in the University by law, the University will, upon request and to the extent consistent with its legal obligations, convey copyright to the creators of such works.
- The University shall retain ownership of Copyrightable Works created as University rather than personal efforts -- that is, works created for university purposes in the course of the author/creator's employment. For instance, work assigned to staff programmers is "Work for Hire" as defined by law (regardless of whether the work is in the course of sponsored research, unsponsored research or non-research activities), as is software developed for university purposes, and the University owns all rights, intellectual and financial, in such Copyrightable Works.
- Except as excluded under Section 3, the University owns all rights, intellectual and financial, in Copyrightable Works created in the course of scholarly projects specifically funded by University sponsored agreements or other university funds. Prior to signing any agreement with a non-university sponsor that may result in or which deals with Copyrightable Works, where any university time, facilities, materials, personnel or resources are involved, university personnel and students must bring the proposed agreement to the attention of the appropriate administrators of the University in accordance with its copyright procedures and either obtain a written waiver of university rights or otherwise modify the agreement to conform with these policies as is determined by the University at its direction.
- Under the copyright laws of the United States, commissioned works of non-employees are owned by the author/creator and not by the commissioning party, unless there is a written agreement to the contrary. University personnel must, therefore, generally require university commissioned contractors to agree in writing that ownership of Copyrightable Works is assigned to the University. Examples of Copyrightable Works which the University may commission non-employees to prepare are:
- Illustrations or designs;
- Artistic works;
- Architectural or engineering drawings;
- Forwards and introductions;
- Computer software;
- Reports by consultants or subcontractors;
- Any videotaping, broadcasting or televising of classroom, laboratory or other instruction, and any associated use of computers, must be approved in advance by the appropriate university administrators, who shall determine the conditions under which such activity may occur and resolve questions of ownership, distribution and policy.
- The University in all events shall have the right to perform its obligations with respect to Copyrightable Works, data, prototypes and other Intellectual Property under any contract, grant or other arrangements with third parties, including sponsored research agreements, license agreements and the like.
- Except as provided in Section 3, university resources are to be used solely for university purposes and not for personal gain or personal commercial advantage, or for any other non-university purposes.
Section 6: Administration
- Institutional procedures for the development of Inventions, Copyrightable Works and Intellectual Property at the University are as follows:
- The University Technology Transfer Office ("TTO") shall be responsible for administering all Inventions, Copyrightable Works, and Intellectual Property owned by the University. In addition, an Intellectual Property Committee, consisting of at least the Vice President for Research, the Vice President for Administration and Finance, a faculty member, and the Patent Counsel and Director of the TTO ("Director"), or their designees shall make recommendations to the President regarding procedures, guidelines, and responsibilities for the administration and development of Inventions, Copyrightable Works, Intellectual Property and such other matters as the President shall determine. The committee shall report annually to the President and to the Chancellor of the NSHE on Inventions and Copyrightable Works disclosed and the disposition thereof.
- The Director is responsible for the administration and disposition of Inventions, Copyrightable Works and Intellectual Property. It is the Director's duty to determine ownership of Inventions, and Copyrightable Works, develop terms of agreements for/with non-university sponsors, inventors and authors/creators and to resolve disputes among co-inventors and co-authors/co- creators. Any disagreement between an inventor(s) or author(s)/creator(s) and the Director concerning ownership of Intellectual Property, or whether to pursue or continue to pursue patent protection on an Invention, may be appealed to the Vice President for Research. If the issue is not resolved at this level, a final appeal may be made to the Executive Vice President & Provost and President.
- When income is to be shared, all Net Income received by the University from Inventions and Copyrightable Works subject to this policy shall be divided with the inventor(s) or the author(s)/creator(s) on the basis stated in Section 7, it being understood that if there should be a plurality of inventors, the portion accruing to the inventors or authors/creators will be distributed on an equal share basis unless specifically agreed otherwise in writing by all the inventors or authors/creators. The inventor(s) or author(s)/creator(s) at or before the time of filing a patent application or copyright must agree in writing to any other terms and conditions negotiated with the University. In the case of plurality of inventors or authors/creators, all individual inventors or authors/creators must sign the same agreement.
- The Director is authorized to establish policies and procedures for implementing the University Intellectual Property Policy, so long as those policies and procedures are not inconsistent with the University Intellectual Property Policy or the Intellectual Property Policy of the NSHE.
Section 7: Distribution of Income
- The inventor(s) or the author(s)/creator(s) of Inventions or Copyrightable Works shall receive sixty percent (60%) of the Net Income from each Invention or Copyrightable Work.
- The inventors' or the authors'/creators' academic unit(s) or department(s) shall receive not less than twenty-five percent (25%) of the Net Income.
- The Vice President for Research shall receive fifteen percent (15%) of the Net Income, unless one or more inventor(s) have reimbursed patent costs under Section 4(2)(e), in which case the Vice President for Research shall receive five percent (5%) of the Net Income, to: (1) pay for unrecovered patent and technology transfer costs incurred by the TTO, and (2) stimulate research and scholarly activities at the University.