Policy on Intellectual Property and Technology Transfer

(Revised on May 4, 2005; click to see old version)

1. Purpose

Encouraging creative efforts is an integral part of Bradley University’s mission. The purpose of this policy is to encourage creative efforts of the University community and facilitate collaboration with others, while promoting the common interests of society. This policy protects the rights of the University and the faculty in their creative efforts by explicitly stating the responsibilities, privileges, and options held by the University and the faculty when they have created intellectual property. In working with external entities the University shall attempt to preserve its and its employees ownership of the intellectual property.

2. General Guidelines

a. Policy Administration Responsibility

With the Provost’s oversight, the University's Associate Provost for Research is charged with administering this policy. Issues not expressly addressed herein should be referred to the Associate Provost for Research for resolution.

c. Definition of Intellectual Property

Intellectual property, as used in this policy, includes inventions, discoveries, creations, or authored works and also the physical or tangible embodiment of same that may be protected legally, by patents or copyrights or by other means. (Physical or tangible embodiments include but are not limited to biological organisms, plant varieties, ornamental designs, computer software, on-line course materials, circuit chips, and engineering prototypes and drawings.)

Invention is defined as a novel or useful idea reduced to practice and relating to a process, a machine, an article of manufacture, a compound, the composition of matter, or an apparatus or improvement thereof, or an ornamental design, or a plant wholly propagated asexually by root cuttings, layering, inarching, grafting, budding or any other method that does not use seeds, or plants produced by genetic engineering for a specific use (utility patents protect).

Copyrightable creation is defined as original work that 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. Copyrights protect expressions of ideas not the ideas themselves.

d. Consulting and Other Agreements

To avoid conflicts with third parties, persons covered by this policy shall carefully examine the intellectual property provisions in agreements with other entities and shall not enter into any agreements that are inconsistent with the provisions of this policy.

e. Tangible Research Property Protection

Intellectual creativity and invention often produces Tangible Research Property (TRP) which is a physical embodiment of the effort. Examples include integrated circuit chips, computer software, biological organisms, engineering prototypes, and drawings. Control over the development, storage, distribution, use and commercialization of TRP is the responsibility of the owner as described in this policy. The ownership of TRP is similar to that of patents, as described in Section iii.c.

f. Publication of Research/Creative Efforts

This policy as set forth shall in no way limit or restrict the right of faculty from publishing or presenting in other forms the results of their research/creative efforts. When publishing or presenting the results, the faculty shall acknowledge sponsorship, if any. The timing of public disclosure of the University or third party owned intellectual property however is subject to reasonable delays to protect patent or other intellectual property rights. Delays in publication or presentation required by the University or by third parties in sponsored agreements as a general rule should not exceed 180 days. Beyond this date, if publishers require, the University agrees to assign the publication copyrights to the publisher.

3. Ownership

a. Ownership of Copyrights

1) Ownership of a copyright resulting when a faculty member is a party to a separate contract with Bradley or with Bradley and an external agency will vest with Bradley unless specified differently in the separate contract. The words "separate contract" are meant to refer to a contract other than the annual faculty, sabbatical, summer, interim or other regular faculty contracts.

2) Ownership of Copyrights will vest with the faculty in all other cases.

3) Unless specified differently in a special agreement drawn up prior to the start of the work between the faculty member and those assisting the faculty member, the ownership of the copyrights not covered in iii.a.i. will vest with the faculty member.

4) In keeping with academic tradition, the University has no claim to any of the net revenue generated from faculty owned copyrightable items such as books, textbooks, instructional materials, computer software, articles, theses, papers, novels, poems, and musical compositions, and similar creative works, such as a work of art. Therefore, except those covered under Section iii.a.i above, such Intellectual Property is excluded from the remainder of this policy.

b. Ownership of Computer Software

University policy on the ownership of computer software is the same as for copyrightable works under Section 3.a. of this policy. In some instances, software can be patentable; in those cases, University policy concerning ownership of patents, as described in Section iii.c. is applicable.

c. Ownership of Inventions

1) Ownership of a discovery or invention conceived when a faculty member is a party to a separate contract with Bradley or with Bradley and an external agency will vest with Bradley unless specified differently in the separate contract. The words "separate contract" are meant to refer to a contract other than the annual faculty, sabbatical, summer, interim or other regular faculty contracts.

2) Ownership of a discovery or invention will vest with the faculty in all other cases.

3) Unless specified differently in a special agreement drawn up prior to the start of the work between the faculty member and those assisting the faculty member, the ownership of the invention or discovery not covered by iii.c.i. will vest with the faculty member.

4. Protection of Patent Rights

As soon as a patentable intellectual property is conceived, the employee must file with the Associate Provost for Research’s Office a completed copy of the Intellectual Property Disclosure (IPD) form to disclose the invention and to establish the ownership rights. The form must be completed before any other disclosure, presentation, display, performance, or publication of the work.

If the inventor claims ownership on the IPD form, the Associate Provost for Research and anyone else needing to review the intellectual property must complete a nondisclosure agreement, prior to receiving the details of the invention. The Associate Provost for Research shall inform the inventor in writing of the University’s ownership interest claims within 60 days after the filing of the IPD form. If the inventor and the Associate Provost for Research can’t reach agreement on the ownership rights within 80 days after the initial filing of the IPD, either party may follow the Arbitration procedure.

If the University has the ownership, before the creator of tangible research property (TRP) gives, lends or shares this property with anyone for the purpose of research and development both parties must complete TRP transfer/use agreement.

5. Ad-Hoc Dispute Resolution

Disagreements arising from any aspect of this policy will be referred to the Senate Executive Committee. The Senate Executive Committee will form an ad-hoc committee, consisting of five tenured faculty chosen based on their involvement in scholarship or research and development and their expertise as related to the matter being disputed. Each party may disqualify two members without cause and the Executive Committee will appoint replacements. The Committee’s charge is to facilitate resolution of disputes regarding assignment of intellectual property rights or the administration of the Intellectual Property policy. The Committee may request relevant information from the appropriate parties so that they may come to an informed decision. Unless all parties agree to an extension, within 60 days of the Executive Committee of the Senate being informed that their action is required, the Committee will deliver its recommendation to the involved parties and the Provost. Within 20 days of receiving Committee’s ruling, the Provost will make a ruling and inform the parties. The faculty member can appeal the decision through the normal grievance process. In the event that the case goes through a grievance process, the report of the Senate ad-hoc committee will be made available to the Grievance Committee.

6. Commercialization of University Owned IP

After an invention or creation is disclosed and the University ownership is established, the Associate Provost for Research will assemble the appropriate expertise to evaluate the commercial potential of the work disclosed.

a. Within 180 days after the filing of the IPD, the University will conclude whether the potential commercial returns from the invention or creation are sufficient to justify retaining the ownership and proceed with further efforts toward filing an intellectual property protection or securing other appropriate legal protection. If such a determination is made, an assignment agreement will then be executed with inventor(s).

b. Patent applications must be filed in a timely manner, or the owner may lose patent rights. Patent applications for University-owned discoveries and inventions are coordinated through the Vice-President for Business Affairs’ Office in conjunction with the Associate Provost for Research. Patent-related legal expenses are the responsibility of the University.

c. Inventor/Author Assistance: In order to secure patents and/or commercialize inventions or creative works successfully, it is often necessary that the inventor or author work jointly and cooperatively with the University.

i. In all instances, the University will attempt to minimize the assistance required.

ii. The creator shall provide all necessary assistance throughout the process of technology transfer to assure maximum legal protection and effective transfer of the intellectual property.

iii. The creator will retain all records and documents necessary to protect and defend intellectual property that belongs to the University. This shall be done in a safe and secure manner.

iv. The creator shall abide by all commitments made in license, sponsored research, or other agreements and laws related to federally and privately funded research.

v. The creator shall disclose all potential conflicts of interest as defined in the University's Conflict of Interest Policy promptly and efficiently to the Provost Office.

d. Distribution of Revenues: The net income, defined as revenues less incremental costs, shall be distributed between the University and the creator/inventor according to the following schedule:

Recipient Share

Creator 50%

University 50%

Creator(s) payment frequency will be the same as that of the university.

Revenue is consideration paid in cash or equity by a third party in exchange for specific intellectual property rights.

Incremental costs are any specific, additional expenses incurred by the University in obtaining and maintaining the intellectual property protection, and in developing, marketing, licensing, and defending the work.

e. If, within 180 days after the filing of the IPD, the University determines that it has no general proprietary interest in the knowledge or the further commercial development of the invention, the University shall first give the ownership option to the intellectual property to the inventor(s) or author(s). If the University doesn’t respond within the 180 days, or file for patent protection within one year after the filing of IPD, the ownership and all potential proceeds will revert to the inventor(s).

7. Commercialization of Independently Owned Intellectual Property

a. If the University does not participate in the commercialization of the intellectual property, then the University shall have no ownership claims to the intellectual property and the responsibility for securing patents and commercializing the Independently owned Intellectual property is by the inventor. In such cases the University shall have no liability for any matter arising out of the commercialization of the intellectual property, and those sections of the Faculty Handbook concerning insurance and indemnification shall not apply.

b. If the University does not participate in the commercialization of the intellectual property, the University shall still be entitled to a portion of the creator’s net income generated by the intellectual property. The net income sharing shall be done according to a mutually agreed to arrangement between the inventor(s) and the University, or according to the schedule below for a period not exceeding 15 years from the initial filing of the IPD, after which time the University has no claim to any of the income:

Recipient Share

Creator(s) 90%

University 10%

The University’s payment frequency is to be the same as that used by the owner for filing tax returns.

The net income is to be determined using the creator’s federal income tax basis of accounting. If asked by the University, the creator(s) shall provide the necessary information for verification purposes.

c. The creator/inventor and the University may enter into an agreement whereby the University participates in the commercialization of the intellectual property in exchange for a mutually agreed upon fee for services or a mutually agreed upon alternative distribution of the net income.

d. If within one year after the filing of the IPD, the inventor does not file for patent, then the ownership of the IP and all potential proceeds will revert to the University.