Working Draft

5/16/01

THE CITY UNIVERSITY OF NEW YORK
INTELLECTUAL PROPERTY POLICY

I. Purpose

· To serve the public good by promoting and facilitating the dissemination of the products of research, authorship and invention by the University community

· To recognize and encourage research, authorship and invention by the University community by providing for the sharing of tangible rewards resulting from the commercialization of such research, authorship and invention

· To define the ownership, distribution and commercialization rights associated with the products of research, authorship and invention by the University community, and to define the policies and procedures for managing such products

II. Applicability

This policy shall apply to all forms of Intellectual Property created or developed, in whole or in part, by Members of the University (1) using University Resources or (2) as a direct result of University duties.

III. Ownership Of Intellectual Property

A. General Rule:

1. The Creator shall own all rights in Copyrightable Works¹.

2. The University shall own² all rights in other Intellectual Property.

B. Exceptions and Clarifications to the General Rule:

1. Sponsored Research. Ownership of Intellectual Property resulting from Sponsored Research shall be determined pursuant to the terms of the agreement between the University or the Research Foundation, as the case may be, and the Sponsor, or as otherwise required by law. If ownership is not defined in the agreement, Intellectual Property shall be owned pursuant to the General Rule.

2. Commissioned Work. The University shall normally own Intellectual Property resulting from Commissioned Work. In all cases of Commissioned Work, ownership and royalty rights shall be specified in a written agreement, a copy of which shall be submitted to the OTL. Any such agreement which provides for ownership by other than the University shall also provide the University with a royalty-free, non-exclusive license to use the Intellectual Property for internal educational and research purposes.

3. Copyrightable Work Created Within the Scope of Employment. Copyrightable Work, other than Scholarly or Pedagogical Work, prepared by an employee of the University or the Research Foundation within the scope of his or her employment shall be owned by the University or the Research Foundation, as the case may be. Examples of Copyrightable Work subject to this provision include personnel manuals, written policies and administrative handbooks prepared by employees of the University. Sections V.D.6 and V.E. of this Policy do not apply to such works.

4. Distance Education and Electronically Published Course Materials. Courses designed to be delivered over the internet, by computer or through similar technologies may involve both Copyrightable Works and other Intellectual Property. Consistent with its intent to recognize the Creator as the owner of Scholarly or Pedagogical works, the University claims no ownership rights in either the intellectual content of such courses, or the tools and technologies used to present them, unless the work was the result of Sponsored Research or is Commissioned Work, in which case B.1 or B.3 of this Part shall apply.

5. Negotiated Agreements. A Member of the University who wishes to conduct work using University Resources under terms different from those set forth in the General Rule above may enter into an agreement for the use of such resources with the College(s) where such work shall be conducted. Such agreement shall be negotiated by the President(s) of the College(s) with the advice of the CUNY Office of General Counsel, and must be approved by the University Chancellor. The agreement shall specify who shall own any Intellectual Property resulting from such work, any arrangement as to equity sharing, royalty-sharing, and/or the amount of the fee, if any, to be paid for use of the University Resources.

C. Creator’s Non-Commercial Use. Where the University owns the Intellectual Property under this Policy, the Creator is permitted to continue to use the work for his or her own non-commercial purposes. Any distribution by the Creator to academic colleagues outside the University beyond the limits of "fair use", as defined in Section 107 of the Copyright Act of 1976, shall be permitted pursuant to written agreement from the University through the OTL.

D. License to University. Intellectual Property owned by a Member of the University and created or used by such Member of the University in the course of instruction (including distance education materials under III.B.4) shall be subject to a royalty-free, non-exclusive license to the University to use such Intellectual Property for internal educational and research purposes.

IV. Administration of this Policy

Authority and responsibility for this policy shall reside with the University Chancellor. The Chancellor may seek the advice and assistance of the Intellectual Property Committee (as described in Section V.B.). The responsibility for administration of the policy at the college level is delegated to the Designated Individual at each College.

V. Management of Intellectual Property

A. Disclosure of Intellectual Property.

1. Disclosure Required. Creators shall promptly disclose to the OTL any Intellectual Property that is or might be owned by the University under this policy, including improvements and reductions to practice and Intellectual Property created under Sponsored Research.

2. Form. Disclosure shall be made on a disclosure form prescribed by the University and available from the OTL, the Designated Individual at each College and on the University and the Research Foundation websites.

3. Timing. Disclosure shall be made prior to submission of the Intellectual Property for publication, other release to the public domain or attempt to license, distribute or manufacture the Intellectual Property commercially.

4. Multiple creators. Where more than one Member of the University has participated in the creation of Intellectual Property, all participants must sign the disclosure notice.

B. Intellectual Property Committee.

1. Purpose. An Intellectual Property Committee shall be established to regularly review disclosures made to the OTL and to consider such other matters as may be described in this policy or may be referred to the Committee by the Chancellor.

2. Composition. The Intellectual Property Committee shall consist of at least nine members. The Director of the OTL (who shall serve as chair of the Committee) and the Executive Director of the Research Foundation or his or her designee, shall be members. The Faculty Advisory Council of the Research Foundation shall select the remaining members of the Committee, taking into account the recommendations of the Director of the OTL. Membership of the Committee shall, insofar as possible, consist of individuals who have a record of productivity of copyrightable or patentable materials and should collectively represent a diversity of types of such materials (i.e., textbooks, biotechnology, software, etc.) The General Counsel of the Research Foundation shall serve as staff to the Committee.

3. Term. Intellectual Property Committee Members are appointed for three-year terms with non-concurrent expiration dates and may serve successive terms.

C. Determination of Ownership Rights.

1. Determination of Rights. The Intellectual Property Committee shall determine whether the University has reason to exercise ownership rights over Intellectual Property disclosed to it, and, if the University has such rights, whether it desires to obtain protection for or pursue licensing of such Intellectual Property.

2. Notice to Creator. The OTL shall promptly notify the Creator of the Intellectual Property Committee’s determination.

D. Legal Protection and Commercialization.

1. Forms of Protection. Intellectual Property determined by the Intellectual Policy Committee to be owned by the University may be patented, registered with the U.S. Copyright Office or otherwise legally protected by the University through the OTL.

2. Assignments. The Creator of such Intellectual Property shall cooperate with the University and the OTL in the application for legal protection of the Intellectual Property, including executing appropriate assignments, declarations and/or other documents required to set forth effectively the ownership and rights to the Intellectual Property pursuant to this policy.

3. Costs of Protection. All costs involved in obtaining and maintaining legal protection of University-owned Intellectual Property shall be borne by the University, unless a licensee agrees to bear such costs pursuant to the terms of a written license agreement.

4. Commercialization. The OTL, in consultation with the Creator, has primary responsibility for negotiating with parties having an interest in using, developing or commercializing University-owned Intellectual Property.

5. Progress Reports. The OTL shall regularly inform the Creator of the progress of any protection efforts and licensing of University-owned Intellectual Property disclosed by such Creator.

6. Grant or Assignment to Creator. If the University elects not to protect or commercialize University-owned Intellectual Property, or decides to abandon protection or commercialization, the University shall, at the Creator’s request, grant the Creator permission to file an application for protection or assign to the Creator some or all of the University’s rights in such Intellectual Property, provided however that the University may condition the release of such rights on the assignment to the University of a share, not to exceed 10 %, of net proceeds. For purposes of this section, "net proceeds" shall mean earnings to the Creator from the Intellectual Property over and beyond reasonable costs incurred in the process of legal protection and management. The University shall retain a royalty-free, non-exclusive license to use any Intellectual Property released to the Creator under this Section D.6. for internal educational and research purposes. Pursuant to 37 C.F.R. Part 401, as amended (regulations implementing the Bayh-Dole Act), the U.S. government shall also retain certain rights.

E. Creator’s Additional Rights.

1. Six Month Limit. The University shall make every reasonable effort to act expeditiously under the circumstances in arriving at all decisions and taking all actions under this Part V. If, within six months of disclosure to the Intellectual Property Committee, the Creator has not received notice from the Committee or the OTL that the University: (a) disclaims ownership of the Intellectual Property or (b) has taken steps to protect or commercialize University-owned Intellectual Property, the Creator may request the release of such Intellectual Property. Such request shall disclose the date of any publication of the Intellectual Property.

2. Release or Proof of Continuing Effort. Within 90 calendar days of the date of a request from a Creator for the release of Intellectual Property pursuant to Section E.1, the University shall either (a) disclaim ownership of the Intellectual Property pursuant to Section C.3, (b) execute a release in keeping with Section D.6, or (c) document that the University has exercised and continues to exercise due diligence in attempting to protect or commercialize the Intellectual Property.

3. University Waiver. The University shall be deemed to have waived its rights in the Intellectual Property if: (a) it fails to meet the deadline specified in Section E.2 above, or a mutually agreeable extended time period; or (b) in the case of a patentable Invention, it fails to file a patent application within 11 months of the date of publication as set forth in the Creator’s request for release of the Intellectual Property under Section E.1.

4. Creator’s Right to Protect. If the University, through the Intellectual Property Committee, disclaims ownership of Intellectual Property disclosed to it pursuant to Section C.1, or waives its ownership rights to Intellectual Property pursuant to this Section E, the Creator shall have the right to obtain protection for or pursue licensing of such Intellectual Property in his or her own name and at his or her own cost.

F. Sponsored Research Requirements. The OTL shall coordinate disclosure and reporting requirements and other obligations to Sponsors regarding University-owned Intellectual Property developed under a Sponsored Research agreement or grant, including but not limited to obligations to the U.S. government under 37 C.F.R. Part 401, as amended (regulations implementing the Bayh-Dole Act).

G. Management Organization. The University or the OTL may make an agreement with one or more intellectual property management organizations to undertake the legal protection and/or commercialization activities described in this Part V.

VI. Distribution of Income from Intellectual Property

A. Policy. A Creator of University-owned Intellectual Property is entitled to share in the income, including royalties, equity interests (subject to any University conflict of interest policy), and dividends, earned from the commercialization of that Intellectual Property.

B. Distribution. Subject to the terms of any Sponsored Research agreement and unless otherwise agreed by the University and the Creator, gross income created from commercialization of University-owned Intellectual Property shall be distributed as follows:

1. First, to pay for any out-of-pocket expenses incurred by the University or the Research Foundation in connection with the administration, protection and commercialization of such Intellectual Property, including, but not limited to, fees paid to outside legal, consulting, marketing and licensing organizations and any other out-of-pocket costs incurred by the University or the Research Foundation.

2. Then, 10 % applied to a fund at the OTL for payment of costs related to patent filing, prosecution and maintenance fees.

3. The resulting "Net Proceeds" shall be distributed as follows:

- 50 % to the Creator;

- 25 % to the University for the support of research and scholarly activity; and

- 25 % to the Creator’s College(s), with 50 % of such amount going to the Creator’s academic or research unit(s) for the support of research and scholarly activity.

C. Multiple Creators. Where two or more Members of the University contributed to the creation of Intellectual Property, the Creator’s share of revenues shall be divided among them equally, unless the Members of the University agree upon a different distribution among themselves and notify the University in writing of their agreement.

VII. Issues Relating to Ownership of Equity and Conflict of Interest

A. University’s Equity Interest. Subject to the review and approval of the Chancellor, and after a diligent effort to identify prospective sponsors or licensees, the University is permitted to take an equity interest in sponsors or licensee companies under the following terms and conditions:

1. Sponsors and licensees shall demonstrate management and technical capability, and have the financial resources necessary to meet their development objectives and their obligations to the University.

2. License agreements shall include measures of performance that must be met in order to maintain the license granted by the University.

3. Equity shall not be held in sufficient amount to confer management power, which generally would limit ownership to less than 20% of equity.

4. Equity shall represent a fair valuation for the Intellectual Property.

5. The University shall not accept a position on the board of directors of a licensee, but may accept and exercise observer rights on such boards. Exceptions to this policy require the approval of the University Chancellor.

6. Licensees shall pay for out-of-pocket patenting and related expenses.

B. Member’s Significant Interest.

1. Conflicts of interest may arise when a Member of the University has a Significant Interest in an entity:

a. to which the University has granted a license of Intellectual Property created by the Member;

b. with whom the University has entered into a Sponsored Research agreement;

c. which has contracted with the University for use of the Member’s University office or laboratory or other University Resources; or

d. which employs or otherwise involves the Member’s student advisees.

2. A Member of the University with a Significant Interest in a entity described in B.1, above:

a. shall disclose the Significant Interest to the University prior to the execution of any agreement between the entity and the University;

b. shall not represent the University in negotiating the agreement; and

c. shall not employ or otherwise involve such Member’s student advisees at the entity unless they are paid at market rate.

3. A Member’s Significant Interest in a licensee shall not prohibit the Member from receiving Creator’s royalties pursuant to VI.B.3 of this Policy.

4. Nothing in this Section shall lessen the obligation of a Member to comply with the requirements of state and federal law, the Research Foundation and any other University policy, regarding the disclosure of conflicts of interest.

C. Consulting Agreements. Conflicts involving Intellectual Property may arise when a Member of the University enters into a personal consulting or other agreement with a third party. Such agreements may include provisions as to the licensing or assignment of Intellectual Property and may come into conflict with this Policy. Prior to signing any consulting or other agreement that deals with Intellectual Property rights, a Member of the University may have the agreement reviewed by the OTL to be certain such agreement does not inappropriately assign University rights to third parties. This review is mandated if the agreement involves any use of University Resources. If the agreement is in conflict with this policy, the Member must either obtain from the Intellectual Property Committee a waiver of any University rights, or otherwise modify the consulting agreement to conform with this Policy. This requirement is in addition to, and does not eliminate the necessity for, any approval required by any University conflict of interest policy.

VIII. Exceptions to and Waiver of Policy

A. Any Member of the University is entitled to request an exception or waiver to the provisions of this Policy, including in the event that a publisher or other outside organization proposes terms which are exceptions to this policy.

B. A Member of the University wanting an exception or waiver shall, in the first instance, send a written request to the OTL, which shall circulate the request to the Member’s College President, the University Dean for Research and the Executive Director of the Research Foundation. If these three individuals agree, the OTL shall notify the Member that the request is granted.

C. In the event that a request for exception or waiver is not granted pursuant to B, above, the Member of the University shall have the right to appear, accompanied by representatives of such individual’s choice, before the Intellectual Property Committee for further consideration of the request. The Intellectual Property Committee shall prepare a report of its findings and an advisory recommendation to the University Chancellor for review. The decision of the Chancellor on the findings and recommendations of the Intellectual Property Committee shall be final.

IX. Resolution of Disputes

This policy constitutes an understanding which is binding on the University and Members of the University for the use of University Resources and for participating in research programs at the University. Any questions of interpretation or claims arising out of or relating to this policy, or dispute as to ownership rights of Intellectual Property under this policy, shall be settled by the following procedure: The issue must first be submitted, in the form of a letter setting forth the grievance or issue to be resolved, to a review panel of four members, including a representative of the Creator, and designees of the Executive Vice Chancellor for Academic Affairs, the Executive Director of the Research Foundation, and the Provost of the Creator’s College. The panel shall review the matter and then advise the parties of its decision within 60 days of submission of the letter. The decision of the panel may be appealed to the University Chancellor. The decision of the Chancellor shall be final.

X. Trademarks

The University owns all right, title and interest in Trademarks related to an item of Intellectual Property owned by the University, or to a program of education, service, public relations, research or training program of the University.

XI. Effective Date.

This policy is effective from the date of approval by the University Board of Trustees with respect to Intellectual Property created after that date and shall remain in effect until modified or revoked.

XII. Definitions

"College" shall mean a "senior college" or "community college" of the University or a component thereof, as such terms are defined in Section 6202 of the New York Education Law.

"Commissioned Work" shall mean work commissioned by the University from a Member of the University, outside the scope of his or her employment.

"Copyrightable Work" shall mean an original work of authorship which has been fixed in any tangible medium of expression from which it can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device, and may include, but is not limited to, books, journals, musical works, dramatic works, multimedia products, videos, films, sound recordings, pictoral and graphical works and sculpture. "Copyrightable Work" shall not include computer programs or code, even though copyrightable.

"Creator" shall mean a Member of the University whose creative activity results in the development of Intellectual Property. As used in this policy, the term "Creator" also includes groups of researchers, authors or inventors whose joint efforts produce Intellectual Property.

"Designated Individual" shall mean the College officer who has been appointed by the College President to be in charge of Intellectual Property matters.

"Intellectual Property" shall mean all forms of intellectual property, including but not limited to Inventions, Copyrightable Works, Trade Secrets and Know-How, and Tangible Research Property, but excluding Trademarks.

"Invention" shall mean a process, method, machine, manufacture, discovery, device, plant, composition of matter or other invention that reasonably appears to qualify for protection under the United States patent law, whether or not actually patentable. "Invention" shall also include computer programs and code, even though copyrightable.

The term "Member of the University" shall include full-time and part-time faculty, staff and graduate and undergraduate students, whether paid or unpaid, as well as individuals compensated by grant funds made available to the University by or through the Research Foundation. Any other person who develops Intellectual Property while making extraordinary use of University Resources shall also be deemed a Member of the University, unless there is an agreement providing that such person shall not be subject to this policy.

"Office of Technology Licensing, Management & Support (OTL)" shall mean the administrative office of the University currently known by that name or its successor, whose mission is to foster the transfer of the products of research, authorship and invention of Members of the University for the public good while generating unrestricted income to support research and education.

"Research Foundation" shall mean The Research Foundation of the City University of New York.

"Scholarly or Pedagogical Works" shall mean scholarly books (including text books), instructional materials including lecture notes, articles, student theses and dissertations, novels, poems, musical compositions, visual works of art, and other scholarly publications or works of artistic imagination, whether such works are disseminated in print, electronically or through some other medium.

"Significant Interest" shall mean the following:

(1) the position of director, officer, partner, employee, or agent, or other managerial position; or

(2) anything of monetary value, including but not limited to, salary or other payments for services (e.g., consulting fees or honoraria), equity interest (e.g., stock, stock options or other ownership interests), and Intellectual Property rights and royalties from such rights.

The term does not include: (1) income from seminars, lectures or teaching engagements sponsored by public or nonprofit entities; (2) income from service on advisory committees or review panels for public or nonprofit entities; (3) financial interests in business enterprises or entities that, when aggregated for the Member and the Member’s spouse and dependent children, meet both of the following tests: (a) do not exceed $10,000 per year in value, as determined through reference to public prices or other reasonable measures of fair market value and (b) do not represent more than a 5 % percent ownership interest in any single enterprise or entity; or (4), salary, royalties or other continuing payments that, when aggregated for the Member and the Member’s spouse and dependent children, are not expected to exceed $10,000 per year in value.

"Sponsor" shall mean an organization, agency or individual which or who provides funding, equipment, or other support for the University, directly or through the Research Foundation, to carry out a specified project in research, training, or public service pursuant to a written agreement ("Sponsored Research"). Sponsors include Federal, State, local and other governmental entities, as well as private industry, individuals, educational institutions and private foundations.

"Tangible Research Property" shall mean tangible items produced in the course of research including, but not limited to, biological materials, research notes and reports, laboratory notebooks, computer databases and software, circuit chips, equipment and engineering drawings.

"Trade Secrets and Know-How" shall mean facts, information, data, designs, business plans, customer lists and other secret knowledge which give the owner a competitive edge.

"Trademark" shall mean a distinctive word, design or graphic symbol, or combination of the same, that distinguishes and identifies the goods and services of one party from those of another. The term "Trademark" shall include service marks.

"University" shall mean The City University of New York.

"University Resources" shall mean any resources available to a Member of the University as a direct result of his or her affiliation with the University and which would not otherwise be available to a non-University-affiliated individual, including but not limited to, funds and financial support, facilities, equipment, supplies, services, non-faculty University personnel, students, release time and sabbaticals.

¹Copyrightable Works" does not include computer programs or code, even though copyrightable. This and other capitalized terms are defined in Section XII.

²Nothing in this Policy shall prevent the University and the Research Foundation from agreeing that the Research Foundation may file patent applications in its own name in connection with Inventions resulting from Sponsored Research it administers.