Dean of the Faculty

Faculty Handbook

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VIII. C. PATENTS AND COPYRIGHTS

(Source: Office of the Vice-President/Treasurer, September 1993)

I. POLICY AND PROCEDURE OBJECTIVES

The purposes and objectives of this policy and procedure are to:

  1. enable the College to continue to foster the free and creative expression and exchange of ideas;
  2. preserve traditional College practices and privileges with respect to the creation and dissemination of scholarly works by all members of the College community including faculty, students and staff;
  3. establish principles and procedures for administering patentable and copyrightable materials produced at the College;
  4. protect the creative works of authors and the College's assets and imprimatur; and
  5. establish principles governing the equitable distribution of royalties generated by those creative works patented or copyrighted by the College.

II. POLICY STATEMENT

A. General Policy

It is the policy of the College to encourage creative works by all members of the Reed community. All creative works are the property of the inventor/creator except as indicated below in sections II C, II D, II E and II F.

B. Books, Articles, Computer Programs, and Similar Works

In keeping with tradition, the College does not claim ownership of books, articles and similar works, the intended purpose of which is to disseminate the results of academic research or scholarly study. Such works include those of students created in the course of their education, such as dissertations, papers and articles. Similarly, the College claims no ownership of popular nonfiction, novels, software, poems, musical compositions, or other works of artistic imagination which are not institutional works.

C. Commissioned Works of Non-employees

Commissioned works of non-employees are owned by the creator and not by the commissioning party, unless there is a written agreement to the contrary. College personnel needs, therefore, generally to require contractors to agree in writing that ownership is assigned to the College.

Examples of works which the College may commission non-employees to prepare are:

- illustrations or designs
- artistic works
- architectural or engineering drawings
- computer software
- reports by consultants or subcontractors.

D. Videotaping and Related Classroom Technology

Any videotaping, broadcasting, or televising of classroom, laboratory, or other instruction, and any associated use of computers, must be approved in advance by the Vice President/Provost, who shall determine the conditions under which such activity may occur and, in conjunction with the Vice President/Treasurer resolve questions of ownership, distribution and policy.

E. Scholarly Projects Specifically and Substantially Funded by College Funds

All individuals who participate in research or scholarly projects specifically and substantially supported by College funds must sign an agreement with the college under which patentable and copyrightable works resulting from such projects are assigned to the College.

Scholarly projects specifically and substantially funded by the College include, but are not limited to:

(1) direct support with College funds for a specific project, "product"-a "commissioned work;"
(2) use of College release time for a specific project, task,-a "commissioned work;"
(3) use of prior College developments as part of a "derivative work;"
(4) substantial use and/or the assistance of College support staff; or
(5) substantial use of computer hardware and/or software.

F. Institutional Works

The College shall retain ownership of works created as institutional rather than personal efforts-that is, works created for College purposes in the course of the inventor's/creator's employment. For instance, work assigned to staff programmers is "work for hire" as defined by law (regardless of whether the work is in the course of sponsored research, unsponsored research, or non-research activities), and the College owns all rights, intellectual and financial, in such works.

G. College Rights

As the owner of patent/copyright, the College has the exclusive rights to do and to authorize any of the following upon notification of the creators of the works:

(1) to reproduce the copyrighted work;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies of the copyrighted work to the public by sale or other transfer of ownership, or by license, rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform and/or display the copyrighted work publicly;
(5) to distribute copyrighted works to faculty and staff of the College for internal use in their instructional programs; and
(6) to assign its rights to another as the College deems appropriate. (e.g. the College may choose not to develop a patent/copyright and may assign all rights to the inventor(s)/creator(s).)

III. DISTRIBUTION OF EQUITY

In the case of works patented/copyrighted by the College, and where dissemination and distribution of the work becomes a commercial property, and royalties or other considerations generated will be shared with the authors, the authors of the work will receive 2/3 of the net proceeds received by the College. For the purposes of this policy, net proceeds is defined as the total income generated by the sale, licensing, or distribution of the work, less out-of-pocket expenses incurred by the College in registering the copyright, and any administrative expenses in conjunction with the sale, licensing of the work, and the collection of royalties.

Authors of the work may be students, faculty, and staff of the College, or any combination thereof. When more than one author is involved, the responsibility for determining the relative distribution among the authors rests solely with the authors.

In the case of derivative work, the College authors must negotiate an acceptable arrangement for royalty sharing with the authors of the original work.

In any event, the College assumes no responsibility or liability in disputes among authors concerning their royalty sharing.

IV. ADMINISTRATION OF POLICY

A. Determination of Ownership and Policy in Unclear Cases

Questions of ownership or other matters pertaining to materials covered by this Policy shall be resolved by the Vice President/Provost in consultation with the Vice President/Treasurer.

B. Distribution Procedures

The College encourages and seeks the most effective means of technology transfer for public use and benefit. To that end, the inventor/creator and/or College needs to determine whether to apply for patent protection or copyright protection. In certain instances it may be appropriate to apply for both. Such protection is often necessary to encourage a company to risk the investment of its personnel and financial resources to develop the work.

C. Development Options

The inventor/creator usually has the following options for development of his/her work.

1. Development by the inventor/creator
An inventor/creator who wishes to develop at his/her own expense inventions/creations made in the course of academic research or scholarly study needs to determine ownership. The inventor/creator is required to inform (in writing) the Vice President/Provost of his/her development intentions. The inventor/creator is cautioned to work with reputable, established organizations rather than with unknown or unestablished commercial firms.

2. Development by the College
The College usually administers patents through the Research Corporation in accordance with the current agreement in effect. The agreement is on file with the Controller. This agreement specifies procedures for evaluation for licensing and distribution of royalties.

D. Use of the College Name

1. Patents and copyrights may not be registered in the College's name without prior approval of the Vice President/Treasurer.

2. If copyrightable materials are published without a copyright notice, and copyright may be lost and the work may enter the public domain. The following notice on College-owned materials will protect the copyright:

Copyright c (year) The Reed Institute dba Reed College, All Rights Reserved. /No other institutional or departmental name and address of the department to which readers can direct inquiries may be listed below the copyright notice. The date in the notice should be the year in which the work is first published, i.e., distributed to the public or any sizable audience. Additionally, works should be registered with the United States Copyright Office using its official forms.

V. EXPLANATION OF TERMS

A. Copyrightable Works

Under the federal copyright law, copyright subsists in "original works of authorship" which have been fixed in any tangible medium of expression from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. These works include:

- Literary works such as books, journal articles, poems, manuals, memoranda, tests, computer programs, instructional materials, databases, bibliographies;
- Musical works, including any accompanying words;
- Dramatic works, including any accompanying music;
- Pantomimes and choreographic works (if fixed, as in notation or videotape);
- Pictorial graphic and sculptural works, including photographs, diagrams, sketches and integrated circuit masks;
- Motion pictures and other audiovisual works such as videotapes;
- Sound recordings.

B. Scope of Copyright Protection

Copyright protection does not extend to any idea, process, concept, discovery or the like, but only to the work in which it may be embodied, illustrated or explained. For example, a written description of a manufacturing process is copyrightable, but the copyright only prevents unauthorized copying of the description; the process described could be freely copied unless it enjoys some other protection, such as a patent.

Subject to various exceptions and limitations provided for in the copyright law, the copyright owner has the exclusive right to reproduce the work, prepare derivative works, distribute copies by sale or otherwise, and display or perform the work publicly. Ownership of copyright is distinct from the ownership of any material object in which the work may be embodied. For example, if one purchases a videotape, one does not necessarily obtain the right to make a public showing for profit.

C. Works for Hire

"Work for hire" is a legal term defined in the Copyright Act as "a work prepared by an employee within the scope of his or her employment." This definition includes works prepared by employees in satisfaction of sponsored agreements between the College and outside agencies. Certain commissioned works also are works for hire if the parties so agree in writing.

The employer by law is the "author," and hence the owner, of works for hire for copyright purposes. Ownership in a work for hire may be relinquished only by an official of the College specifically authorized to do so.

D. Derivative Works

A "derivative work" is here defined as a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotation, elaborations, or other modifications that, as a whole, represent an original work of authorship, is a "derivative work."

E. Other Intellectual Property

1. Trade and Service Marks
Trade and service marks are distinctive words or graphic symbols identifying the source, producer, or distributor of goods or services.

2. Trade Secrets
"Trade Secret" is a legal term referring to any information, whether or not copyrightable or patentable, which is not generally known or accessible, and which gives competitive advantage to its owner. Trade secrets are proprietary information.

F. Patent

A patent is a grant issued by the U.S. Government giving an inventor the right to exclude all others from making, using, or selling the invention within the United States, its territories and possessions for a period of 17 years. When a patent application is filed, the U.S. Patent Office reviews to ascertain if the invention is new, useful, and nonobvious and, if appropriate, grants a patent-usually two to five years later. Not all patents are necessarily valuable or insusceptible to challenge.

G. Invention

An invention is a novel and useful idea relating to processes, machines, manufactures, and compositions of matter. It may cover such things as new or improved devices, systems, circuits, chemical compounds, mixtures, etc.

It is probable that an invention has been made when something new and useful has been conceived or developed, or when unusual, unexpected, or nonobvious results have been obtained and can be exploited.

An invention can be made solely or jointly with others as coinventors. To be recognized legally, a coinventor must have conceived of an essential element of an invention or contributed substantially to the general concept.

H. Patentability

Not all inventions are patentable. Questions relating to patentability are often complex and usually require professional assistance.

1. General criteria for patentability.
An important criterion of patentability is that an invention must not be obvious to a worker with ordinary skill in that particular field. It also must not have been publicly known or used by others in this country or patented or described in a printed publication anywhere prior to the date of invention.

2. Loss of patentability.
Inventions that are patentable initially may become unpatentable for a variety of reasons. An invention becomes unpatentable in the United States unless a formal application is filed with the U.S. Patent Office within 12 months of disclosure in a publication, public lecture, or of any other action which results in the details of the invention becoming generally available.

3. Circumstantial impairment of patentability.
Many other circumstances may impair patentability, such as lack of "diligence." For example, unless there is a record of continuous activity in attempting to complete and perfect an invention, it may be determined that the invention has been abandoned by the initial inventor, and priority given to a later inventor who showed "due diligence."

4. International variation of patentability regulations.
Regulations covering the patentability of inventions and application filing procedures vary considerably from country to country and are subject to change. It is important to note that an invention is unpatentable in most foreign countries unless a patent application is filed before public disclosure.

VI. SPECIAL NOTES

A. The basic purposes of the College always take precedence over patent and copyright considerations. While the College recognized the benefits of patent and copyright development, it is most important that the direction of College research should not be established or unduly influenced by patent and copyright development considerations.

B. Agencies sponsoring research at Reed usually require reports of all inventions, whether or not they are considered patentable.

C. The College in all events shall have the right to perform its obligations with respect to patentable and copyrightable works, data, prototypes and other intellectual property under any contract, grant or other arrangement with third parties, including sponsored research agreements, license agreements and the like.

D. College resources are to be used solely for College purposes and not for personal gain or personal commercial advantage, nor for any other non-College purposes.

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