A. POLICY
The Policy reflects the following goals:
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To create a University environment
that encourages the generation of knowledge
by faculty, students, and other personnel
of the University.
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To facilitate wide transfer
of useful inventions and writings to society.
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To motivate the development
and dissemination of intellectual property
by providing administrative assistance to
creators and appropriate financial rewards
to creators and the University.
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To ensure that the financial
return from the development of intellectual
property does not distort decisions and operations
of the University in a manner contrary to
the mission of the University.
The Policy is based upon the following principles
relating the University to society:
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The University is a community
of scholars, both faculty and students, dedicated
to the discovery, enhancement, and communication
of knowledge.
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Intellectual property will
be generated within the University and there
exists an obligation to disseminate it.
The Policy is further based upon the following
principles relating faculty, students, and other
personnel to the University:
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Intellectual property is created
by individuals or by groups of individuals,
who are entitled to choose the course of disclosure:
academic freedom of individuals is a higher
priority than possible financial reward.
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There exists a historical
tradition allowing authors to retain ownership
of intellectual property rights from textbooks,
teaching materials and works of art.
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The University is the sole
support of the whole campus community and
is thereby entitled to share in financial
rewards.
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The provisions of this Policy
do no apply to the normal scholarly or creative
publication processes unless the creator intends
to waive all proprietary rights to the publication.
B. DEFINITIONS
Certain terms are used in this document with
specific meanings, as defined in this section.
These definitions may not necessarily conform
to customary usage.
Intellectual Property includes all
intangibles protected by intellectual or creative
effort as defined by law. It also includes computer
software, books, teaching materials, on-line
course materials, works of art, and other inventions,
or other copyright materials that might be developed
as original works of authorship.
University means Duquesne University.
Faculty means members of the University’s
Faculty as defined by University Executive Resolution.
Student means any full-time or part-time
undergraduate, graduate, or professional student
regardless of whether the student receives financial
aid from the University or from outside sources.
It is the responsibility of students who are
also employees of other outside entities to
resolve any conflicts between this policy and
provisions of agreements with their employers
prior to beginning any undertaking at the University
that will involve the development of intellectual
property.
Other personnel means any employee
of the University other than students and faculty
as defined above, or any individual using University
equipment and/or facilities. If a student is
also a part-time University employee, the student
is considered as other personnel with regard
to intellectual property developed as a result
of his employment, and as a student with regard
to other intellectual property. A full-time
employee who is also enrolled for one or more
courses is considered to be other personnel.
Visitors to the University who make substantial
use of University resources are considered other
personnel with respect to any intellectual property
arising from such use.
Creator means any person or persons
who create an item of intellectual property.
Net proceeds to the University means
all proceeds received by the University on intellectual
property that it assigns, sells, or licenses,
minus any patent application, patent maintenance,
copyright, litigation, interference, or marketing
costs directly attributable to the intellectual
property being licensed. Deducted costs shall
be reasonable and fair, and shall be properly
disclosed. The sources and amounts of compensation
shall also be properly disclosed.
Net proceeds to the creator means
all proceeds received by the creator from intellectual
property owned by the creator that the creator
sells, assigns or licenses to the University,
less the costs of patent application, patent
maintenance, legal protection, litigation, interference,
travel, and other marketing costs directly attributable
to the intellectual property being exploited.
Such net proceeds do not include compensation
legitimately received by the creator for consulting
services, interest or other return on invested
labor or capital.
Substantial use of University facilities
means extensive unreimbursed use of major University
laboratory, studio, or computational facilities
or human resources. Use will be considered “extensive”
and facilities will be considered “major”
if similar use of similar facilities would cost
the creator more than $15,000. Creators wishing
to directly reimburse the University for the
use of its facilities must make arrangements
to do so before the level of facilities usage
for a particular intellectual property becomes
substantial.
C. PATENTS
Ownership of patentable intellectual property
created by a member or members of the faculty,
student body, or other personnel of the University,
except intellectual property developed pursuant
to a pre-existing negotiated agreement between
its creator and the University, shall be vested:
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In the University if created
as a result of substantial use of University
facilities, unless superceded by 3. or ;
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In the creators if created
without substantial use of University facilities;
or
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In accordance with the terms
of any preexisting contract between the University
and a sponsoring entity, including but not
limited to government agencies, business organizations,
foundations or professional societies;
Duquesne University shall enjoy a right and
license from the creators to use and modify,
for its own use and study, inventions and software,
whether or not patentable, which are created
through the use of University facilities, whether
or not such use is substantial.
D. INVENTION DISCLOSURE
When a member of the faculty or other personnel
of Duquesne University creates intellectual
property which a reasonably prudent person
would believe to be governed by 1) or 3)
above, such member shall promptly notify
the Associate Academic Vice President for
Research/Office of Research by submission
of a properly executed Disclosure of Invention
form. If a creator of intellectual property
is uncertain whether a particular creation
is intellectual property subject to 1) or
2) above, it shall be the obligation of the
creator to notify the Associate Academic
Vice President for Research of the intellectual
property and the creator’s
basis for concluding that the intellectual
property is subject to 1) or 2) as the creator’s
belief may be. Upon investigation, the Academic
Vice President for Research will promptly
review and determine the rights of the intellectual
property in question according to this policy.
Any question of interpretation or dispute
as to ownership rights of intellectual property
under this policy will be settled as stated
under Section H.
After review of the Disclosure of Invention
form and if ownership of the intellectual property
is concluded to be vested in the University,
the University, through the Office of Research,
shall seek competent patent counsel and shall
promptly decide whether or not to seek patent
or other protection for the intellectual property,
and whether or not to seek licensing or other
commercial exploitation of the intellectual
property. The University shall have no obligation
to exploit commercially any intellectual property.
The creator will be required to execute such
applications, assignments, and other lawful
papers and do such other lawful acts as may
be deemed necessary or desirable by counsel
for the University to vest legal title to the
intellectual property and any patents thereon
in the University or its nominees, and to aid
in obtaining patent (or other) protection therefore,
all without expense to the creator.
E. COPYRIGHT
Ownership of intellectual property subject
to protection under the copyright statutes of
the United States created by members of the
faculty, student body, or other personnel of
the University shall be vested in the creators,
except that ownership of such intellectual property
is vested in the University if:
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the materials have been created
with substantial use of University
facilities; or
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the materials have been created
as a condition of employment as work-for-hire.
Copyrightable intellectual property developed
by members of the faculty pursuant
to a pre-existing negotiated agreement between
its creator and the University, shall be owned
by the creator(s).
Duquesne University shall enjoy a right and
license from the creator(s) to use and modify
copyright materials, for its own use and study,
whether or not copyrightable, which are created
through the use of University facilities, whether
or not such use is substantial. The University
shall, in such cases, make every effort to obtain
permission of the original creator and properly
attribute the original authorship or creation.
The University recognizes that this right shall
be exercised only when necessary, to prevent
unnecessary reengineering or duplication of
previous efforts.
F. ROYALTY DISTRIBUTION
If the University licenses or otherwise commercially
exploits intellectual property owned by
the University pursuant to Article C.1 or E.1),
the University shall share with the creator
one-third of the net proceeds from such
commercial exploitation.
If the University grants royalty bearing licenses
to organizations that require the sharing of
net proceeds with the creator different from
this policy, the creator shall share in the
returns in accordance with the terms of the
agreement or agreements which the University
has with each such organization.
G. WAIVER OF INTELLECTUAL PROPERTY
If the University decides not to carry out
patenting and licensing of an invention or other
commercial exploitation of any intellectual
property which belongs to the University, it
will return the invention or intellectual property
to the creator who may proceed independently
to protect and exploit the creation.
If title to the intellectual property is vested
in the creator, the creator may proceed on the
creator’s own initiative to protect the
creation, bearing the responsibility for all
costs incurred and receiving any and all incomes
resulting.
H. RESOLUTION OF DISPUTES
This policy constitutes an understanding which
is binding on the University and on the faculty,
students, and other personnel of the University
as a condition for participating in research
programs at the University or for use of University
funds or facilities.
Any question of interpretation or claim arising
out of this policy, or dispute as to ownership
rights of intellectual property under this policy,
will be settled by the following procedure:
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The issue must first be submitted
to the Office of Research in the form of a
letter setting forth the grievance or issue
to be resolved. The Provost/Vice President
for Academic Affairs, in cooperation with
the President, shall appoint an Ad Hoc Intellectual
Property Adjudication Committee of five members
(including three faculty members) to review
the matter and then advise the parties of
its decision within 60 days of submission
of the letter.
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If any of the parties to the
dispute is not satisfied with the Committee’s
decision, the party may seek binding arbitration
in Pittsburgh, Pennsylvania and in accordance
with the Rules of the American Arbitration
Association then in effect. Judgment upon
the award rendered by the arbitrator(s) may
be entered in any court having jurisdiction
thereof. The arbitrator(s) will give some
weight to the decision of the Ad Hoc Intellectual
Property Adjudication Committee in reaching
a decision. The responsibility for the cost
associated with the arbitration shall be determined
by the arbitrator(s).
REV 08/06
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