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PENN STATE - INTELLECTUAL PROPERTY

Policy IP01 - OWNERSHIP AND MANAGEMENT OF INTELLECTUAL PROPERTY (Formerly RA11 - Patents and Copyrights [Intellectual Property])

Policy Steward:  Office of the Vice President for Research and Dean of the Graduate School

Contents:

  • Purpose
  • Policy
  • .... Research Intellectual Property
  • .... Instructional and Scholarly Intellectual Property
  • Definition of Terms
  • Further Information
  • Cross References

  • PURPOSE:

    To establish policies for ownership and management of intellectual property created by members of the University.

    POLICY:

    Research Intellectual Property -

    The protection of research intellectual property with commercial potential is an essential aspect of the technology transfer process. Rights to research intellectual property conceived, reduced-to-practice or created by University employees with the use of University facilities or resources, or in the field of expertise and/or within the scope of responsibilities covered by employees’ employment/appointment/association with the University are governed by the Penn State Intellectual Property Agreement that assigns such rights to the University.

    As a condition of employment, the Intellectual Property Agreement is required to be completed and signed by individuals first appointed or transferred to the following classification categories: (1a) executive, administrator, academic administrator, and academic throughout the University; (b) faculty, staff exempt, staff nonexempt, and technical service in academic or academic service units throughout the University; (2) for any existing employee in the above classification categories who has not previously signed this IPA; (3) graduate assistants/fellows/trainees at the time of their first appointment; and (4) undergraduate/graduate students, postdoctoral trainees/research associates, wage payroll employees, visiting scholars/scientists/students, emeritus/retired faculty and others who may be in a position to make, conceive or reduce to practice inventions or otherwise develop technology.

      Please Note: The requirement to have individuals identified in item 2., above, sign an intellectual property agreement arises from: (1) the University's obligations under the Federal Bayh-Dole Act to patent and effectively transfer inventions arising from Federally sponsored research results to industry for the public benefit and to grant the government a license to use such inventions for government purposes; (2) the University's compliance with contract terms under industry-sponsored research; and (3) the University's responsibility to protect the intellectual property of our faculty and students. It is not intended to restrict the free exchange of scholarly information or prohibit free and open collaborations between scholars or scientists.

    It shall be the responsibility of the appropriate budget executive or budget administrator to ensure that the Intellectual Property Agreement is presented to, and signed by, any individual meeting the conditions specified above. Letters of offer shall contain a statement that the signing of the attached Intellectual Property Agreement is a condition of employment.

    The signed copy of the Intellectual Property Agreement shall accompany the personnel action ("NAPP" in EASY) appointing or transferring an individual to a position covered by this policy. Personnel actions requiring, but not including, a signed Intellectual Property Agreement shall not be processed until the agreement has been signed.

    The Office of the Vice President for Research manages research intellectual property through the Office of Sponsored Programs and the Office of Technology Management.  The Office of Sponsored Programs manages all relationships with sponsors on behalf of the University and negotiates agreements with sponsors that determine how research intellectual property developed under a research project will be administered.  The Office of Technology Management handles all the patents, copyrights, trademarks, and tangible research intellectual property issues when the University has full or partial ownership of the research intellectual property.   University personnel have an obligation to disclose promptly to the Office of Technology Management, through the cognizant University administrators, research intellectual property developed either with University Resources or within the fields of expertise and/or within the scope of employment for which the University retains them.

    Instructional and Scholarly Intellectual Property -

    The University encourages faculty, staff, and students to create scholarly and instructional intellectual property. In this context, copyright ownership of such works generally rests with the creator(s) unless their creation is directed by the University, or is subject to a sponsor's agreement that provides for a different ownership.  University-directed works are those created at the specific direction of a University unit for the University’s ownership and use.  Instructional Intellectual Property will be deemed a University-directed work if it is created pursuant to a written agreement between the faculty member or staff member and the University unit or if the work is considered University-directed by the standing policy of the unit.

    The University is granted the non-exclusive, royalty-free right and license to use any instructional intellectual property created while the creator was a member of the University community, if that work could be reasonably construed to be related to the scope of the University employment.  In cases of University-directed works, the creators of instructional intellectual property will be granted a non-exclusive, royalty-free right to use the materials for their own limited purposes outside of the University.  Rights of members of the University community to create and use scholarly and instructional intellectual property are subject to University policies on consulting activity and other activities external to the University, as well as to any unique contractual obligations related to the production of scholarly or instructional materials.

    University personnel who enter into publishing contracts should consult with the Office of Technology Management to ensure that the contract does not conflict with elements of this policy or should obtain an explicit written exemption from the cognizant University administrator if the publishing contract might conflict. In particular, personnel are encouraged to reserve in those contracts the right to use the associated material freely for their own classroom instructional purposes. Creators of instructional intellectual property may consider obtaining a Creative Commons license and can contact the Office of Technology Management, through the cognizant University administrators, for assistance.

    University personnel are expected to assist other members of the University community in fulfilling the University’s educational mission.  This includes sharing of instructional intellectual property within the University for internal instructional usage, understanding that developers and users of instructional intellectual property are expected to use the material ethically and to give appropriate credit to all source material and coauthors.  Usage of instructional intellectual property by University employees should be accompanied by appropriate attribution of the source of the instructional intellectual property, and the original creator(s) should be consulted regarding the appropriate attribution and usage when possible.  The original creator(s) should also be given the option not to be listed as a source of the material if they prefer not to be associated with its subsequent usage.  Any questions regarding the appropriate attribution of authorship should be referred to the cognizant University administrator.  Faculty members who dispute the cognizant University administrator’s decision regarding attribution may seek a review by the Faculty Rights and Responsibilities Committee of the University Faculty Senate in cooperation with the Vice Provost for Academic Affairs.

    Intellectual property that spans one of the boundaries between research, scholarly, and instructional as defined in this policy should be considered on a case-by-case basis by the cognizant University administrator.  Faculty members who dispute the cognizant University administrator’s decision may seek a review by the Faculty Rights and Responsibilities Committee of the University Faculty Senate in cooperation with the Vice Provost for Academic Affairs.  In cases that involve research intellectual property, final authority rests with the Vice President for Research.

    DEFINITION OF TERMS:

    Cognizant University administrator
    includes deans, department heads, program and center directors, office directors, or other individuals delegated by the budget executive to administer such matters.

    Instructional intellectual property
    is the term used to describe materials produced for instruction in any format, including (but not restricted to) print materials, video recordings, audio recordings, and digital materials.

    Research intellectual property
    is the term used to describe the discoveries, inventions and creations with potential commercial value that result from research activities.  Most research intellectual property developed at the University can be protected by patents, but some University research intellectual property (i.e. software) is more appropriately protected by copyright.  Although some research intellectual property may be protected by trademark or trade secret, it is rare for the University to utilize these methods of protection.
    Scholarly intellectual property
    is the term used to describe materials resulting from scholarly, literary, and artistic work such as journal papers, books, essays, poems, paintings, sculpture, musical scores, etc. in any format, including (but not restricted to) print materials, video recordings, audio recordings, and digital materials.
    Technology transfer
    is the process by which inventive, creative and scholarly works may be put to public use and/or commercial application.
    University Resources
    is the term used to define any support administered by or through the University, including but not limited to funds, facilities, equipment or personnel.  The term also includes funds, facilities, equipment, or personnel that are provided through funding from governmental, commercial, industrial, or other public or private sources and administered by the University.

    FURTHER INFORMATION:

    For questions, additional detail, or to request changes to this policy, please contact the Office of the Vice President for Research and Dean of the Graduate School.

    CROSS REFERENCES:

    IP02 - Co-authorship of Scholarly Reports, Papers and Publications

    IP03 - Courseware

    RA12 - Technology Transfer and Entrepreneurial Activity (Faculty Research)


    Effective Date: January 7, 2013
    Date Approved: September 14, 2012
    Date Published: January 7, 2013 (Editorial changes- October 25, 2013)

    Most Recent Changes:

    Revision History (and effective dates):

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