Revised October 4, 2018
1. PREAMBLE AND OBJECTIVES
Georgetown University (the “University”) has among its primary purposes teaching, research, service, and the expansion and dissemination of knowledge. In pursuing these goals, University employees (including faculty, administration and staff), and University students, fellows, visitors, and persons who may not be compensated for their University roles (“Covered Individual(s)”), may create or contribute to intellectual property such as patents, copyrights, inventions and related trademarks, trade secrets, know how, improvements, and discoveries (“Intellectual Property”). All Covered Individuals are subject to this Intellectual Property Policy (the “Policy”).
The University has an interest in protecting Intellectual Property in order to:
- Serve the public good by facilitating the development of Intellectual Property and its introduction into the public marketplace;
- Provide knowledge and information to the public;
- Encourage and provide tangible rewards to members of the University community who create such Intellectual Property (“Inventors”); and
- Support further research and development by securing for the University a share in the proceeds from the commercial development of such Intellectual Property.
In addition to supporting these purposes, the Policy was established to support innovation and to provide for an equitable allocation of responsibilities and rewards among Inventors, their departments and schools, the University, and any external organizations that have sponsored and financed research activities at the University. The Policy addresses, among other things, the ownership of Intellectual Property, reporting of Inventions by investigators, prosecution of patent rights by the University, ownership and use of works protected by copyright, development of commercial applications, distribution of financial benefit and expense within the University, and distribution of a share of net income from Intellectual Property to the Inventor(s). The terms and conditions set forth in this Policy are part of the terms of employment of University faculty, administrators and staff, and the terms of enrollment of University students and fellows, and are likewise applicable to all other Covered Individuals. The University’s Office of Technology Commercialization (“OTC”) is primarily responsible for the implementation and oversight of this Policy.
While the University recognizes that the generation of revenue through commercialization of its Intellectual Property and contribution to the regional economy through commercial licensing to local start-up companies are desirable, the University also seeks to maximize the humanitarian impact of its Intellectual Property. Therefore, when appropriate, OTC includes socially responsible licensing terms in Intellectual Property contracts.
2. OWNERSHIP OF INVENTIONS AND PATENTS
For the purposes of this Policy: (i) incidental use means incidental use of office equipment generally made available to Covered Individuals, such as computers and telephones, and use of reference materials and other resources generally made available to Covered Individuals, such as the University’s computing network and library resources; and (ii) tangible research property refers to physical material, such as and without limitation, biological materials, chemical compounds, integrated circuit chips, and prototype devices.
Georgetown University acquires ownership in all “Covered Inventions,” defined in this Policy to mean any invention (new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof), and tangible research property, whether patentable or not and any related Intellectual Property made or conceived by a Covered Individual, provided that the University has not entered into a research grant contracts or other agreement with express provisions to the contrary, and that such invention was made
- during research or other assignment given to a Covered Individual pursuant to a research project, grant or contract, or any other University administered program; or
- with more than incidental use of facilities, equipment, funds, or other resources of the University.
By accepting employment, enrolling as a student, or commencing participation in University research or project activities as a visitor, Covered Individuals hereby assign and agree to assign to the University all of their rights, title and interest in and to Covered Inventions subject to the provisions in this Policy.
Ownership and disposition of Covered Invention rights resulting from research financed wholly or partially by governmental, industrial, philanthropic or other organizations will be determined by the terms and conditions of the related research agreement, the policies of the University, and any rules, regulations, and procedures of the sponsoring organization that have been incorporated into the research agreement. A Covered Individual who elects to perform research on or participate in governmental, commercial, or other projects undertaken by the University is required to sign such supplemental agreements as are necessary to enable the University to fulfill its legal obligations with respect to Covered Inventions.
A Covered Individual who has developed a Covered Invention shall be required, at the request of the University or its legal counsel, to execute such papers as may be necessary or appropriate for protection of the Covered Invention, including a declaration in the United States and abroad and assignment of such patent applications or patents to Georgetown University or its agent, or other legal documents necessary to vest in the University the rights to any Invention in which it possesses an interest. The expenses of any resulting patent proceedings will be paid by the University or by its licensee or designee.
Inventions made by a Covered Individual exclusively on his or her own time and without the aid of more than incidental use of University resources (“Private Invention”) are the sole property of the Inventor. Before any Private Inventions in the specific field of the Covered Individual’s work at the University are patented, the University and the Covered Individual in a good faith process will review the Private Invention and the University must certify that conflicts of interest with Covered Inventions, in which the Covered Individual has an ownership interest, are either avoided or disclosed and managed in accord with the Financial Conflict of Interest Policy (Section IV.C), such review and certification not to be unreasonably delayed or withheld. In addition:
- patents from Private Inventions must be administered so as to not involve the name, facilities, or resources of Georgetown University;
- time spent in administering such patents should conform to the University policy on outside activities by an employee;
- the University will not administer or prosecute Private Inventions or be liable for any associated costs thereof;
- should the Inventor wish to assign a Private Invention patent to the University for administration under University patent policies, the University will consider such an assignment on a case-by-case basis and will accept such an assignment only upon written approval by the OTC and in accordance with a specific written agreement between the Inventor and the University.
The University may convey its rights in Covered Inventions as follows:
- by selling, licensing, assigning, or otherwise exploiting such rights, generally on commercial terms that reflect fair market values; provided, however, that if the Covered Invention serves a humanitarian or charitable need, the University, after consultation with and due consideration of the preferences of the Inventor, may elect to accept terms other than commercial market terms;
- by relinquishing its rights to the Inventor, pursuant to Section 5. h; or
- by including such rights in a research contract with a third party under which such rights are licensed or assigned to the third party.
3. Duties of University Inventors regarding Inventions and Patents
The University recognizes the imperative and the benefits of publishing research results and innovations in the academic community. At the same time, fulfillment of its broad academic mission requires that it act rigorously to protect its Intellectual Property. To that end, Covered Individuals have responsibilities in safeguarding University Intellectual Property, including that they:
Notify the OTC as soon as practicable prior to public disclosure of any research results that they have reason to believe may embody a Covered Invention (see section 4. below). Public disclosure of Inventions and related Intellectual Property prior to filing a patent application may prevent the possibility of patenting.
Work cooperatively with the OTC to provide required information to evaluate whether a patent application or other Intellectual Property should be filed and to enable the patent application filing and prosecution, and the identification of possible co-inventors of the Invention.
Keep careful records of research that may embody University Intellectual Property or that is related to issued patents or already filed patent applications. In the event that physical or electronic storage of such records is or becomes unfeasible, the Inventor should so notify the OTC so that it may assist in seeking a solution.
Not enter into any agreements involving University Intellectual Property with outside organizations; such interest from outside organizations must be conveyed to OTC, which will determine the appropriate course of action and, if appropriate, negotiate such agreements.
In the event that rights are relinquished back to Inventors, Inventors may not use University funds (including funds in discretionary accounts) or other University resources to file a patent application or commercialize the released Invention in any way.
4. DUTY TO DISCLOSE INVENTIONS
Covered Inventions must be timely disclosed, fully and in good faith, to the OTC, using the Georgetown University Invention Disclosure Form, accessible on the OTC website (under “For Inventors”), and to the Chair or Director of his/her Department and, if applicable, Center or Institute. In the case of Covered Inventions resulting from federally funded research, the OTC must report the Inventions to the government; accordingly, the Inventor’s duty of disclosure of such Covered Inventions is of critical importance. Disclosure of a Covered Invention to the OTC must be made in sufficient time in advance of any public disclosure (such as abstract or manuscript publication, grant submission, conference, presentation to prospective collaborators or company sponsors, or any presentation open to the public, even internal) to allow preparation and filing of a patent application prior to such public disclosure.
The obligation of Covered Individuals to disclose Covered Inventions conceived and/or reduced to practice during the course of employment at the University or involvement in University research or projects continues during sabbaticals and after an Inventor’s departure from the University.
The filing of a patent application by an Inventor relating to a Covered Invention to which the University has a right of ownership as described in section 2.a without disclosure of the Covered Invention to the OTC and assignment of ownership to the University may constitute grounds for disciplinary action by the University ("Faculty Responsibilities Code").
As inventions, patents and patent applications have value, the Inventor has an obligation to disclose any potential Conflict of Interest regarding filed patent applications and patents in accordance with the University's Financial Conflicts of Interest Policy. For detailed information on conflicts reporting and management, see the University’s Financial Conflicts of Interest Policy.
5. OFFICE OF TECHNOLOGY COMMERCIALIZATION (OTC)
The Office of Technology Commercialization is administered by a Vice President for Technology Commercialization reporting to the Senior Vice President for Research & Chief Technology Officer of Georgetown University. The OTC is responsible for ensuring that all Inventors receive appropriate service regarding filing and prosecution of applications for patents, copyrights, and related trademarks; for overseeing and conducting licensing and technology transfer; and for providing a central resource for the coordination, handling, and retention of records related to their Covered Inventions.
Patenting of Inventions.
The OTC is responsible for evaluating Invention Disclosures to determine whether they merit Intellectual Property protection, based on various criteria, including their novelty, non-obviousness and commercial potential in the marketplace. The OTC will work with outside patent counsel to prepare and file patent applications. Inventors are responsible for reviewing patent applications as requested and providing guidance on description of the Covered Invention to the OTC. Inventors will be kept apprised of patent prosecution.
For Covered Inventions determined to have commercial value, the OTC will prepare a plan, with the input of the Inventor(s), for the marketing and commercialization of the Invention.
Licensing of Inventions.
- The OTC is responsible for: identification of companies or entities that may be appropriate to develop University Intellectual Property; marketing of Intellectual Property to prospective licensees and/or research and development sponsors; negotiation of all research and development, licensing, and related agreements in cooperation, as appropriate, with the Main Campus Research Services Center, Medical Center Office of Sponsored Research, and General Counsel. Agreements involving Intellectual Property must conform to University policies, including but not limited to those governing academic freedom and conflicts of interest. Inventors will be kept informed of the progress of negotiations and their input will be sought as appropriate. The OTC will negotiate at all times in the interest of the University as a whole. The OTC will be responsible for maintaining and administering licensing agreements. In the process of negotiations, the University will use its best efforts to preserve the Inventor's freedom to publish, collaborate with other non-profit institutions, and transfer materials for non-commercial purposes to other researchers.
- In the course of evaluating Invention Disclosure Forms, the OTC may identify Covered Inventions that would be appropriate for socially responsible licensing. The aim of socially responsible licensing is to facilitate the availability of innovations in health care and other fields to address inadequately met and often urgent needs of society (FAQs for Inventors). For such Covered Inventions, OTC may, after consultation with the Inventor(s), include socially responsible licensing terms as appropriate in the license agreement(s) for the Covered Invention. Socially responsible terms may affect such provisions as sublicensing, fields of use, territory, and royalty income thereby possibly reducing the amount of revenue they generate. If the University enters into a license that, over the objection of the Inventor, includes socially responsible terms that materially diminish the license income that otherwise would be received by the Inventor, then, provided that the Inventor notifies the OTC in writing of the Inventor’s objection promptly after execution of the license, the University and the Inventor shall seek to negotiate in good faith an agreement regarding amended distribution of Net Income to the Inventor (“Amended Net Receipts Agreement”). Pursuant to Sections 6. (The University Committee on Intellectual Property (CIP)) and 7. (Distribution of Financial Benefit and Expenses, Net Income and Equity) of this Policy, any such Amended Net Receipts Agreement shall be reviewed by the CIP, and must receive written approval of the EVP of the Inventor’s campus, whose approval shall not be unreasonably withheld.
The OTC reviews and executes confidential disclosure agreements (CDAs) and nondisclosure agreements (NDAs) concerning University Intellectual Property, as well as Material Transfer Agreements (MTAs). The OTC has primary responsibility for research collaboration agreements with outside organizations when sponsored funding is minimal or not involved. The OTC will review and offer guidance on intellectual property provisions of other agreements, such as service agreements, subcontracts, sponsored research and clinical trials agreements, for which other offices hold primary responsibility.
If, after reasonable marketing efforts, a Covered Invention that is deemed marketable has not been licensed, or if a technology is particularly suited for the establishment of a company, the OTC may decide that a new company (“Start-Up Company”) should be formed to facilitate the further development of the technology. The OTC will confer with the Inventors when considering this route of commercialization and the most appropriate structure for the Start-Up Company.
If a Covered Individual wishes to found a Start-Up Company to commercialize a Covered Invention on which he/she is an Inventor, the Inventor should so inform the OTC, which will then provide appropriate guidance. The Inventor will be required to comply with applicable University policies, including the Financial Conflict of Interest Policy and the policy on Outside Professional Activities.
Additional information for Covered Individuals wishing to start companies can be found on the OTC website (“Startup Guidance” under “For Inventors”).
Service to Inventors.
The OTC will advise Inventors on all questions concerning University copyrights, patents, trademarks, licensing and technology transfer and commercialization. OTC staff will work closely with Inventors to foster timely patent filing and planning. The OTC may seek additional guidance from experts in the field and from outside counsel.
Financial Records and Reports.
The OTC will maintain financial records of the expenses and income related to each Covered Invention and University Intellectual Property. For licensed Covered Inventions, the Inventor will receive financial reports on royalties when they are paid to the University and distributed as described in Section 7 below. The Inventor has the right to examine upon reasonable notice the financial records of the OTC related to his or her Intellectual Property.
Relinquishing Covered Inventions to Inventors.
When a decision is made not to file a patent application on a particular Covered Invention, or to abandon one or more patents on a particular Covered Invention, the OTC will so notify the Inventor(s) and may offer to assign ownership of the Covered Invention to the Inventor(s), subject to the rights of the United States Government in federally funded Inventions and any other Sponsors with rights in the Invention. If the Inventor(s) choose to accept assignment, ongoing patent expenses will be borne by the Inventor(s). A letter stipulating this and other terms, including reimbursement of University expenses and sharing in future revenues, will be executed by the University and the Inventor(s). Circumstances may require that a written agreement be submitted to the University signed by all Inventor(s) concerning the Inventors’ joint decision regarding the Invention’s disposition and management.
6. THE UNIVERSITY COMMITTEE ON INTELLECTUAL PROPERTY (CIP)
The University Committee on Intellectual Property (hereafter “CIP”) shall be appointed by the President of the University. It shall be comprised of representatives of the administration and faculty. It is chaired by, and is advisory to, the Vice President for Technology Commercialization.
CIP Membership and Meetings.
Membership of CIP shall comprise twelve faculty members, the Chief Financial Officer and Treasurer (or his/her designee), the General Counsel (or his/her designee), and the Vice President for Technology Commercialization (Chair). The faculty membership shall include six faculty members nominated by the Executive Vice President (EVP) of the Medical Center, three faculty members nominated by the Provost, one faculty nominated by the EVP of the Law Center, and two faculty members nominated by the Faculty Senate. The CIP will convene quarterly, but may meet more or less frequently depending on volume and urgency of matters requiring its attention.
It shall be the function of the CIP to advise the Vice President for Technology Licensing Commercialization with respect to:
- guidelines and procedures for implementation of this Policy;
- interpreting and applying this Policy in individual cases;
- resolving disputes concerning the interpretation and application of this Policy; and recommending such changes in University policy, as may from time to time be desirable, to the Faculty Senate for formal deliberation and vote, and thereafter, for final approval to the President and the Board of Trustees of the University.
The CIP will assist in the resolution of all disputes between Inventors, or Inventors and the University, regarding ownership of Intellectual Property. The CIP will also assist in the resolution of disputes between Departments and other units over the distribution of royalties and other proceeds as described in Section 7.a of this Policy. The CIP will review as appropriate the factual background of the dispute, which may include examining relevant documents and records relating to, for example, the inception and development of a Covered Invention and/or interviewing potential Inventors and others who might be able to assist the CIP in its understanding of the dispute. After its review, the CIP will recommend a proposed course of action to the Vice President for Technology Commercialization, whose decision shall not be unreasonable.
7. DISTRIBUTION OF FINANCIAL BENEFIT AND EXPENSES, NET INCOME AND EQUITY
Georgetown University will assume financial responsibility for Covered Inventions and other Intellectual Property to which it takes ownership. This responsibility includes, but is not limited to, the costs of assessing patentability, filing patent applications, patent prosecution, maintaining patents, patent reexamination and reissue, marketing and licensing, maintaining records, and litigation and interferences. The University is not, however, obligated to file patent applications, register copyrights or apply for trademark protection, or commercialize any particular technology, Covered Invention or other Intellectual Property. It is the aim of the University that activities related to the protection and marketing of University Intellectual Property be self-supporting from revenues received by the University as a result of technology transfer and commercialization. The OTC seeks to commercialize University Covered Inventions and other Intellectual Property in such ways as to receive reimbursement of its expenses from licensees. The OTC is required to use the University's resources carefully, with a view to promoting the fiduciary interest of the institution.
Distribution of Royalties and Other Income.
Distribution of all royalties and other income from Covered Inventions and Intellectual Property owned by the University shall be as follows:
Deductions from Gross Receipts. Fifteen percent (15%) of gross receipts will be allocated to the budget of OTC. In addition, all direct expenses related to prosecuting and maintaining a patent or other costs incurred in Intellectual Property protection, including fees for outside legal counsel, will be reimbursed to the OTC from receipts related to the Covered Invention or other Intellectual Property. If the overall revenues from such receipts are sufficient to support the activities of the OTC, the percentage amount of the allocation may be reduced so that only the actual costs of the OTC's operations are deducted from gross receipts.
Net Receipts. "Net Receipts," herein defined as gross receipts less the deductions identified in the preceding subsection 7.a.i., will be distributed as follows:
One-half of Net Receipts (50%) will be distributed to the Inventor(s) of the Covered Invention or Intellectual Property; provided, however, that the Inventor(s)’ share will be reduced to thirty per cent (30%) of Net Receipts once the Inventor(s) have received $5M in cumulative Net Receipts. An Inventor’s entitlement to payment under this paragraph is not dependent upon his/her continued employment at the University. In the case of the death of the Inventor, payment will be made to the Inventor’s estate. If the payment is to be made over time, the payments will be made over the life of the patent or according to terms stipulated in the license agreement. At the option of the Inventor, the Inventor's share may be returned to the Inventor’s laboratory rather than to the Inventor personally through written agreement between the University and the Inventor. When there are two or more Inventors of a Covered Invention, the Inventors’ share of Net Receipts will be allocated equally among the Inventors, unless a prior written agreement providing for a different allocation is executed by all Inventors, the Executive Vice President for Health Sciences or the Senior Vice President for Research, the Vice President for Technology Commercialization and the Chairs of the Inventors’ respective Departments. If an Inventor has entered into an Amended Net Receipts Agreement with the University, then the OTC will adjust revenue distribution to the Inventor per the Amended Net Receipts Agreement.
10% of Net Receipts will be distributed to the President of the University (or his/her designee) for support of research and development throughout the institution;
30% of Net Receipts (40% of Net Receipts following the reduction of the Inventors’ share from 50% to 30%) will be distributed to the Executive Vice President of the Inventor’s campus area (Main Campus, Medical Center, or Law Center). If the Inventor holds appointments on more than one campus, the campus share shall be divided among the EVPs proportional to the percentage of support provided. These funds are to be used for support of research and development on the Inventor’s campus or in interdisciplinary programs involving two or more campuses.
10% of Net Receipts (20% of Net Receipts following the reduction of the inventors share from 50% to 30%) will be divided among the Departments, Centers, Institutes, Programs, Sectors, and Schools (hereinafter in this paragraph collectively “the Department(s)”) in which the Inventor holds an academic appointment or staff position and from which the Inventor received his or her support, with the royalties to each proportional to the support it provided. Support will be defined as financial support including without limitation, indirect costs and overhead recovered through grants and funded research, departmental funds, and lab space. In the event an Inventor reports an Invention within a year after changing Department(s), there is a presumption that the royalty will be split equally between the Department in which the Inventor formerly held and subsequently holds academic appointment(s). A Department’s entitlement to payment under this paragraph is not dependent upon the Inventor’s continued employment by the University. Disputes arising under this paragraph will be resolved by the EVP(s) for the appropriate campus(es) with advice from the CIP.
In any case involving multiple Inventors, the proportionate allocation of Net Receipts to the Inventors’ respective campuses and Departments shall parallel the proportionate distribution to the Inventors.
Distribution of Equity.
Distribution of equity received in partial consideration for a license will follow the formula described in subsections 7.a.i. and ii. above. Such distributions may require stock liquidation. All such distributions will be determined by the University Vice President for Finance and Treasurer. When the University takes an active role in founding a start-up company, it may receive equity for its efforts. Such equity is not distributed to the Inventors. When an Inventor participates in founding a company, any equity the Inventor receives as a founder is distributed directly to him/her by the company.
8. COPYRIGHT AND TRADITIONAL SCHOLARSHIP
The primary objective of the copyright is not to reward the labor of authors, but ‘[t]o promote the Progress of Science and useful Arts.’ To this end, copyright assures authors the right in their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.”
(Feist Publications, Inc.. v. Rural Telephone Service Co., 499 U.S. 340, 349 (1991), Justice Sandra Day O’Connor
A main goal of Georgetown University, as a student-centered research institution, is the discovery, production, and dissemination of knowledge. The copyright policies of the University are intended to further that goal by providing appropriate incentives to faculty and members of the academic staff for the production of new knowledge.
Traditional independent scholarship
These policies are not intended to disturb the customary relationship between the University and the author of traditional scholarly works such as books, manuscripts, artistic works, movies and television programs. In general, the University does not claim “work for hire” status under Title 17 of the U.S. Code for such works. Traditionally, most published works written by members of the faculty have been viewed as the property of the author and have been published under agreements made by those authors without participation of the University. Where the criteria in Section 9.a below apply, a formal agreement between the University and author must be made pursuant to the procedure described in Section 9.d below.
Support for fair use
The University strongly encourages faculty members who publish traditional scholarly works to become familiar with their rights under copyright law, and to negotiate contracts with publishers that preserve rather than waive these rights. The University will seek to make available scholarly work of faculty on institutional servers in a manner consonant with copyright law, and encourages faculty to negotiate terms with publishers that allow access by the Academy and students. For information on copyright and fair use, see http://www.lib.umn.edu/copyright/map.phtml.
9. COPYRIGHT AND OTHER INTELLECTUAL PROPERTY
While the University generally has not sought assignment by Covered Individuals of the copyrights in their traditional scholarly works (written or edited), it has generally required assignment of ownership rights in all other Intellectual Property made or conceived by Covered Individuals utilizing the facilities, equipment, funds or other contributions of the University to a degree that is substantially in excess of what is normally provided to Covered Individuals. Consequently, in cases not involving traditional scholarly works, when the University provides substantially more than the usual support for the creation of copyrightable material or commercially valuable collections of information –for example, by subventing publication of scholarship or by committing University resources for the development of digital materials for teaching and learning –formal arrangements OTC must be drafted in order to ensure that rights, responsibilities, and prospective revenues are shared equitably between those who develop the Intellectual Property and the University as the provider of auspices and facilitating resources.
In addition, the formal agreement may specify certain situations or conditions that would trigger the application of a secondary policy. For example, if software, digital resources, or collection(s) of information are commercialized and they generate revenues, the University may reserve the right to a certain percentage of royalties to recover any investment it may have made in such software, digital resources, or collection(s) of information. As a second example, if the University, as an incentive for development, pays a stipend to a researcher to create software, digital resources, or collection(s) of information, that stipend must be repaid to the University from any revenues that accrue from the subsequent marketing of the materials.
In those instances when both:
- the University pays the full or a substantial part of the cost of publication (including such costs as printing, editing, etc., but excluding the salary of the primary author(s), and
- the royalties or revenues from the publication are likely to exceed $10,000, formal agreements concerning the ownership of the copyright and the division of these royalties must be made pursuant to the procedure described in Section I4 below.
Software and digital resources
Distinctions that once were common between texts intended to convey information (and subject to copyright guidelines) and research tools (potentially subject to patent guidelines) have become less tenable at a time when software is both copyrightable and potentially patentable and when courseware and digital academic resources are characterized by a high degree of interactivity. Software development by Covered Individuals frequently receives extensive support from the University. Similarly, digital resource for teaching and learning –that is, software (including Web pages programmed in native HTML, XML, or similar protocols, or created using an authoring package or a courseware-development system) and digital content materials designed for display and dissemination over the internet or over the University’s own network frequently are based upon the work of many hands (including instructional designers and technical staff), and they frequently depend upon the University’s network and computer systems and the staff who support them.
Consequently, the University may require assignment of an ownership interest in software, including courseware and digital academic resources, developed by Covered Individuals at the University. Formal agreements for these categories of Intellectual Property must be created in order to spell out the respective rights of the individual developers and the University. However, in order to encourage the development of technology-based instructional materials, the University may choose not to exercise its claim to such resources and instead to consider the copyright to lie with the developer(s). In particular, the University will not require assignment of ownership for basic web pages or entries in a course management system that are created and maintained by Covered Individuals without substantial assistance, and that simply provide information (including but not limited to reading assignments, other course requirements and links to relevant external Internet resources) specific to a faculty member’s course(s) and/or information about or copies of publications and other professional activities of a Covered Individual.
Collections of information
The creation and maintenance of collections of information also frequently require extensive technical, staff, and systems support from the University. Consequently, the University may require assignment of an ownership interest in collections of information developed by Covered Individuals as resources for scholarship and research. Formal agreements for this category of Intellectual Property must be created in order to spell out the respective rights of the individual developers and the University. However, in order to encourage the development and maintenance of such collections of information, the University may choose not to exercise its claim to such materials and instead to consider copyright and other ownership interests to lie with the individual developer(s).
Formal agreements between the University and Covered Individuals who develop software, digital resources, or collections of information will be created by the OTC. Because ownership of Intellectual Property is divisible in many ways, these formal agreements will generally be based upon an unbundling and distribution of ownership rights in order to grant the developers and the University the rights each finds more advantageous and the responsibilities each is best qualified to discharge. For example, if the University has made a substantial contribution (through its systems and support expertise) to the creation of software, digital resources, or collection(s) of information, a formal agreement may assign or license to the University the ability to exercise certain rights, including but not limited to:
the right, on a limited, non-exclusive basis for the University to make and distribute copies of the material for use in teaching, scholarship, and research within the University.
the right to control whether the University’s name or logo is displayed in association with the material.
the right to require an appropriate acknowledgement of University support in the creation of the material.
the right to reproduce and distribute portions of the material in compilations or other composite works,
the right to reproduce and distribute portions of the material for uses directly related to advancing the mission or maintaining the culture of the University.
the right to be informed in advance of any licenses or assignments of the material by the author(s) or developer(s).
Responsibility to initiate formal agreements
In the case of software, digital resources, or collection(s) of information likely to require the use of University resources for creation, expansion, or maintenance, it is the responsibility of the Covered Individual(s) to initiate a formal agreement with the OTC. In the absence of an agreement to the contrary, the University will claim all authorship rights in software, digital resources, or collection(s) of information created with University assistance as works made for hire under the Copyright Act Title 17 of the United States Code. However, a Covered Individual need not report or initiate formal agreements for basic Web pages or entries in a course management system that are created and maintained by that individual without substantial assistance, and that simply provide information (including but not limited to reading assignments, other course requirements, and links to relevant external Internet resources) specific to a faculty member’s course(s), and/or information about or copies of the publications or other professional activities of the Covered Individual. A Covered Individual also need not report or initiate formal agreements for that employee’s personal archives of data or of other materials relating to scholarship or research.
Problems may attend the disposition of Intellectual Property that results from activities of Covered Individuals while engaged in the service or at the direction of a firm or institution other than the University. In general, the University recognizes the benefits of such activity to Covered Individual, and often to itself. However, the University is concerned about conflicts of interest that may arise from such activity. (Please refer to the Faculty Handbook under “Extramural Professional Activity” and the Financial Conflicts of Interest Policy.) In addition, the University is concerned not only about the potential loss of revenue but also about the imposition of noncomplete clauses that may hinder Covered Individuals from pursuing the University’s mission of teaching and research or prevent Covered Individuals from participating in University-sponsored research-and-development projects.
Consulting, intellectual property and university resources
In the cases of consulting activities involving the use of Intellectual Property developed with University resources, the Covered Individual should provide to the OTC a copy of any contract for work sponsored by an entity other than the University when the terms of the contract vest control of any resulting intellectual property in that entity. In such cases, the University may require that a formal agreement be created concerning the ownership of such resulting intellectual property, pursuant to the procedures described in Section 9.d above. No consulting contract shall restrain or inordinately delay publication of the results of a researcher’s University-related activities.
Consulting, intellectual property, and non-print media
In the cases of consulting activities resulting in the production of non-print analog or digital instructional materials (for example, for distance learning) for an entity other than the University, the Covered Individual should provide to the OTC a copy of any contract for such activity. In such cases, the University may require that a formal agreement be created concerning the ownership of the resulting intellectual property, pursuant to Section 9.d above.
11. INTELLECTUAL PROPERTY AND WORK FOR HIRE
In general, copyrightable material created by a Covered Individual pursuant to a specific direction or assigned duty (other than the teaching of courses) from the University or any of its units shall be considered a work made for hire and shall be property of the University. However, in the case of software, digital resources, collection(s) of information, or other audiovisual educational materials created by Covered Individuals pursuant to specific direction or assignment, the University may choose to share ownership with the individual developer(s). In such cases, formal agreements between the University and the individual employees will be created pursuant to the procedures described in Section 9.d above, except that it is the responsibility of the University department or unit overseeing creation of the material to initiate review by the OTC.
In general, the foregoing terms also apply to students at the University. The University makes no claim of ownership to works created by students or other staff members working on their own, outside of an employment relationship with the University. As a condition of matriculation, however, the University reserves the right to make copies of dissertations as needed for the academic and archival purposes of the institution. In addition, the University requires that students waive any claims against the University, its employees, or fellow students arising out of the reproduction, excerpting, and/or distribution of student-authored postings to University-sponsored courseware Web sites or course management systems as needed for the academic, research, and archival purposes of the institution. Students working on a project governed by a contract or agreement to which the University is a party shall be bound by the terms of that contract or agreement. Students who are hired to perform specific tasks that contribute to a copyrightable work will ordinarily have no authorship or ownership rights in that work unless they have a prior written agreement with the author.
12. APPENDIX A – DEFINITIONS
Device-like Software: Computer software primarily intended and likely to result in the accomplishment of a task or in allowing the user to produce, manage, analyze, or manipulate a product such as data, text, a physical object, or more software.
Disclosure: Executed form reporting the existence of a new invention.
Covered Individual: For purposes of this policy, any Georgetown University employee, (including without limitation faculty, administration, and staff members) or any student or fellow, who is engaged, whether or not for compensation, in University research work from which an invention or copyrightable work is developed.
Intellectual Property: Patent applications, patents, copyrights, inventions, trade secrets relating to said inventions, know how, improvements, and discoveries.
Invention: Any new and useful process or discovery, art, or method, machine, manufacture, device-like computer software, or improvement thereof.
Inventor(s): The individual(s) responsible for conceiving and reducing to practice an idea which becomes an invention.
Reduction to Practice: Occurs at the time when an inventor can prove the product or process was produced or applied successfully. As a matter of law, the time of the filing of the patent application is presumptively the time of reduction to practice unless the inventor can demonstrate an earlier date. Diligence in recording efforts and successes in reducing an invention to practice are vital in establishing the earliest possible date of invention.
Research and Development: Investigation of fundamental knowledge or its applications in any academic discipline germane to the university, and reduction of that knowledge to practice.
Specific Field: Area of research for which the inventor is supported by external or intramural funding or other institutional resources such as office or laboratory space, or has written investigational protocols on file at the University.
Textual Software: Computer software primarily intended and likely to result in informing or educating the user or in improving his or her general capabilities.
Work Made for Hire: Intellectual property produced in the performance of a grant or contract or as a part of an employee's assigned work responsibilities.
13. APPENDIX B – DOCUMENTS
Copies of the following documents can be obtained from the OTC or its website.
- Georgetown University Invention Disclosure Form
- Model Confidential Disclosure Agreement
- Model Materials Transfer Agreement
- Model Exclusive and Non-Exclusive Licensing Agreements