Policy on Patents, Copyrights, and Trade Secrets
Southwestern University is steeped in the tradition of liberal arts universities in providing its students a well-rounded education, and its faculty academic freedom. As the oldest university in Texas existing under its original charter, the University has always striven to be in the forefront of education in the State of Texas by promoting the arts and sciences. Historically, the University has encouraged the free and creative exchange of ideas, the publication of scholarly works, basic scientific research, and the production of artistic works and musical composition.
The purpose of this policy is to advance the interests of the University, promoting and protecting the results of research, scholarship, and artistic work. The policy also preserves and protects the interests of the University which has the responsibility of the stewardship and cultivation of its financial resources. The policy is committed to academic freedom, recognizing that the pursuit of research, scholarship and artistic work complements instruction as well as enhances it, and is integral to the life of this community of teaching and learning. Members of the University Community may also undertake such a pursuit with the primary goal of creating commercially exploitable products, and where the University makes a substantial financial investment in such an enterprise, it acquires a financial interest that this policy also seeks to protect. This policy has been developed to ensure that the rights and interests of all parties concerned are determined according to established, uniform, and fair procedures.
Artistic works, musical compositions, computer programs and software, and writings are subject to Copyright protection. The fruits of research are protectible by obtaining Patents, in both the U. S. and foreign countries. For purposes of this policy, computer software shall be treated as Patentable subject matter.
In order to foster the free exchange of ideas and information, there shall be no trade secrecy or other confidentiality of information arising out of research performed at the University, except as otherwise agreed in a Special Contractual Arrangement, or for a limited time as necessary under this policy for the purposes of preserving the University’s right to seek Patent protection on an Invention owned by the University.
The following terms shall have the meaning in this policy defined below:
- Author. The member of the University Community who writes or creates a Copyrightable Work.
- Committee. The University’s Committee for Patents, Copyrights, and Trade Secrets.
- Copyright. Copyright refers to the right of literary and artistic property as recognized and protected by law. Copyright protection subsists in original works of authorship 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. In no case does Copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operations, concept, principle, or discovery disclosed in such work, but rather extends only to the manner in which it is expressed. 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 for a period of time set forth in the U.S. Copyright Law; currently equal to the life of the author plus 70 years after the author’s death; or as otherwise set forth in Chapter 3 of Title 17, United States Code.
- Copyrightable Work. Works of authorship that are copyrightable include, but are not limited to, the following categories:
- Literary works such as books, journal articles, poems, manuals, memoranda, tests, computer programs and computer software, programmed instructional material, databases, and bibliographies.
- Musical works including any accompanying lyrics.
- Dramatic works and screenplays, including any accompanying musical scores.
- Improvisational and choreographic works (if fixed, as in notation or videotape).
- Recognized forms of art, including, but not limited to, paintings, graphic designs, sculptural works, photographs, architectural designs and sketches.
- Film, television and radio and related media.
- Sound recordings.
- Invention or discovery. As defined by current patent law, an invention or discovery is a new and useful process, machine, manufacture, composition of matter or material, or new and useful improvement thereof. It may cover such things as new or improved devices, systems, circuits, chemical compounds, mixtures, etc. An invention may result when something new, useful, and non-obvious has been conceived or developed, or when unusual, unexpected, or non-obvious results are obtained and can be exploited. An invention is made when the conception has been reduced to practice.
- Inventor. The member of the University Community who conceives an Invention.
- Patent and Patentable Invention. A United States Patent is a property right granted by the U. S. Government giving the Inventor the right to exclude others from making, using, offering for sale, selling and/or importing the patented Invention in the United States and its territories and possessions for a limited period of time. For Patents issued on applications filed prior to June 8, 1995, the period of time is from issuance until (a) 20 years after the original application was filed or (b) 17 years after the Patent was issued, whichever of (a) or (b) is later. For Patents issued on applications filed on or after June 8, 1995, the period of time is 20 years after the original application was filed. These periods may be extended under certain circumstances. To be a Patentable Invention, the Invention must be a new, useful and unobvious machine, composition of matter, article of manufacture or process.
Foreign countries’ patent laws have various additional or different requirements and time periods. Subject to those differences, Foreign Patents are to be covered by this policy.
- Substantial Use of University Facilities. Substantial use of University facilities in the creation of intellectual property for purposes herein means extensive, unreimbursed use of University facilities, equipment or space, or human resources which are not normally used in the education or instruction of University students. Facilities commonly available to all faculty and professional staff, whether within a department or at large, and which have a normal educational use or which are primarily instructional in nature, shall not be considered in determining whether Substantial Use of University Facilities has been made. For example, but without limitation, the following facilities, and equipment would not be used in determining whether Substantial Use of University Facilities had been made: (i) faculty offices, faculty studio or laboratory offices, (ii) library, (iii) laboratory and studio space (including classroom, theaters and physical education facilities) and equipment available to all within a department and which is normally used for educational purposes. Facilities will be used in such determination if, for example, but without limitation, they are segregated for use in an individual’s research or they are specially purchased or renovated for the purpose of furthering an individual’s research. Use will be considered “substantial” if similar use of similar facilities would cost the inventor more than $25,000 (to be adjusted in the future for inflation from January 1, 2001) if purchased or leased in the public market. Any questions as to whether a facility will be so considered and whether use of included facilities is substantial shall be submitted to the Committee.
- University. Southwestern University.
- University Community. The faculty, staff, and students of the University.
- Copyrights. In keeping with academic traditions at the University, the Author retains all rights to Copyrightable Works, unless otherwise agreed pursuant to a Special Contractual Arrangement, or where the primary purpose of the research is the production of a commercially exploitable result, and Substantial Use of University Facilities has been devoted to its production (in such instances, refer to Procedure (Copyright) section that follows)
- Patents. In keeping with academic traditions at the University, the Inventor retains ownership to patentable works, unless otherwise agreed pursuant to a Special Contractual Arrangement, or where the primary purpose of the research is the production of a commercially exploitable result, and Substantial Use of University Facilities has been devoted to its production (in such instances, refer to Procedure (Patent) section that follows).
- No Substantial Use of University Facilities.
- Ownership of Patentable Inventions resulting from the research of a member of the University Community without Substantial Use of University Facilities shall belong to that member, subject only to any Special Contractual Arrangement that a member of the University Community or the University may have executed including, but not limited to, contracts with the Federal Government. Members of the University Community whose Inventions fall into this category may avail themselves of the opportunity to submit the invention to the University for a Patent and for its commercial exploitation and management under terms to be agreed between the University and the Inventor.
- Members of the University Community who believe that they have made Inventions without Substantial Use of University Facilities shall not file, or permit others to file in their name, Patent applications without providing at least 90 days notice and a statement of the circumstances of the invention to the Committee for review and consideration. If requested, additional information as to the nature and circumstances under which the Invention was developed and a copy of the Invention Disclosure or proposed Patent application shall be provided. Requests for such additional information shall be made within 45 days of the original notice. Unless the Committee determines otherwise within 90 days of receiving all requested information, the claim of the Inventor to have made No Substantial Use of University Facilities shall stand and the member of the University Community may then file a Patent application without further coordination with the University or the Committee.
- Substantial Use of University Facilities.
- The University shall own Inventions (as defined herein), Patent applications and Patents resulting from research involving Substantial Use of University Facilities. The Inventor shall assign all rights to such Inventions, Patent applications and Patents covering Inventions, under this Section B, to the University.
- If the University in its sole discretion determines that it does not desire to pursue Patent protection for an Invention, it may release the Invention to the Inventor who may apply for a Patent at the Inventor’s own expense. Under these circumstances, the University shall retain a royalty-free right to make or use the Invention for its educational, research and public service functions.
- Special Contractual Arrangements. Copyrightable Works and Patentable Inventions resulting from Special Contractual Arrangements, whether with the University or outside sources, shall be handled pursuant to the terms of such contract so long as such terms are not inconsistent with other University policies. Any member of the University Community engaged in Special Contractual Arrangements with outside sources is responsible for ensuring that the provisions of any such contract are not in conflict with University policy or University commitments. Under University policy, any Special Contractual Arrangements with outside sources must not make substantial unreimbursed use of University facilities, except by prior written agreement with the University. For purposes of this policy, a faculty member’s general obligation to produce scholarly and artistic works shall not constitute such a Special Contractual Arrangement with the University. Notwithstanding anything herein to the contrary, the University shall retain a royalty-free right to make, use, copy, distribute within the University Community or perform such works in connection with its educational, research and public service functions.
- Dispute. Any dispute pertaining to the above terms and conditions shall be resolved as set forth in the Dispute Resolution section.
- No Substantial Use of University Facilities.
- General. The Author of any Copyrightable Work resulting from Substantial Use of University Facilities, or under a Special Contractual Arrangement with the University providing for rights in the work to be assigned to the University, shall notify the Committee as soon as practical after its creation. The Author also shall execute any document(s) deemed necessary to perfect legal rights in the University and/or enable the University to file applications for Copyright registration, as applicable. The Disclosure shall be made at the time the contract is negotiated and at the time when legal protection for the work is contemplated; and it must be made before the work is sold, used for profit, or disclosed to the public.
- Required Copyright Notice.
- Property rights in Copyrightable Works are secured by creation of the works in any fixed, tangible medium of expression. The Copyright notice, when used, includes either the word “copyright,” the abbreviation “Copr.,” or the symbol “©,” accompanied by the name of the Copyright owner and the year of first publication. Both the word “Copyright” and the symbol “©,” i.e., “Copyright [year] by [copyright owner]” are recommended to prevent innocent infringement of the Copyright by others. The notice must be placed on the works in a manner and at any location that is reasonably calculated to give sufficient notice to the public.
- If Notice appears on sound recordings, the notice must be indicated on the label by the designation “p”, the year of the first performance of the sound recording, and the name of the owner of the Copyright in the sound recording.
- Copyright law also provides for the registration of the Copyright with the U.S. Copyright Office of the Library of Congress. The form for registering Copyrightable material may be obtained from the Register of Copyrights, U.S. Copyright Office, Washington, D. C. 20025.
- General. The Inventor of any Invention thought to be Patentable resulting from Substantial Use of University Facilities shall promptly notify the Committee within 60 days of such Invention or discovery. The Notice shall include the Disclosure (as hereinafter defined). The Inventor shall also execute any document(s) deemed necessary to perfect legal rights in the University and enable the University to file Patent applications. Notice to the Committee shall be made at the time when legal protection for the Invention is contemplated, and it must be made before any product or service embodying the Invention is offered for sale, sold, used for profit or disclosed to the public.
- Responsibility of Inventor and definition of “Disclosure”.
- When a member of the University Community believes that an Invention has been conceived or made, a Disclosure shall be made to the Committee as soon as possible. The Disclosure is a document describing the Invention and establishing legally the name of the Inventor(s) and the date of conception. Included as part of the Disclosure are drawings, sketches, and other pertinent data and information to show the principle of the Invention, its operation, and performance. The Inventor(s) should sign and date each page of the Disclosure and all sketches and data sheets.
- To qualify as a document corroborating the Invention, the Disclosure must be read, understood, and signed by preferably by two witnesses who can understand the Invention. The witnesses must sign and date each sketch and each page of the Disclosure. A working model of the Invention may be prepared and tested before witnesses.
- Since priority of a conception date is often the deciding factor in awarding a Patent, it is most important that the Invention be disclosed as early as possible, with the earliest conception date verified by witnesses. Therefore, the Inventor shall consult promptly with the Committee.
- Further, the Inventor shall promptly seek the advice of the Committee before taking any steps to publish or disclose publicly the Invention or discovery. Any publication describing an unpatented material, device, or process may make it impossible to secure a valid Patent and thereby reduce any benefit that may accrue to the Inventor and the University from such development.
- When the Inventor is conducting research pursuant to a grant to the University from an outside source, the Inventor agrees to assist the University to meet time and documentation constraints required by the grantor.
COMMITTEE ORGANIZATION AND ADMINISTRATION
- Administrative Matters. The Committee shall be responsible for administrative matters relating to Patents, Copyrights, and Trade Secrets.
- Members. The Committee, responsible to the University Council, shall consist of the following persons: The Chair of the Division of Humanities; the Chair of the Division of Natural Sciences; the Chair of the Division of Social Sciences; the Dean of the Fayez Sarofim School of Fine Arts; the Provost; and the Vice President for Fiscal Affairs. The Committee shall elect its own chair. Members having business pending with the Committee in the form of a potential Patent application, potential Copyright application, royalty agreement, or related matters shall not participate in the deliberation on that matter. A substitute for such a disqualified member shall be provided for as follows: a replacement for a chair of a division or school shall be elected by that division or school; a replacement for the Provost or Vice President for Fiscal Affairs shall be appointed by the President.
- Powers and Duties. The Committee shall have the following powers and duties:
- To examine the merits of each notice to it regarding Patents and Copyrights.
- To make recommendations to the President of the University with regard to the preparation and filing of Patent and Copyright applications.
- To consider and make recommendations to the President with regard to license and other agreements covering Patents and Copyrights.
- To consider and make recommendations to the President with regard to the release of Inventions to the Inventor and Copyrightable Works to the Author.
- To oversee the distribution of royalties derived from Patents and Copyrights coming into the University.
- To consider all questions and matters regarding this Policy and its administration and expenses and continuing obligations, and to make recommendations to the President thereon.
- To take such other action as may come before it regarding Patents and Copyrights, or which may be requested of it from time to time by the President, Provost, Vice President for Fiscal Affairs, or the Board of Trustees.
- Procedural Matters. Quorum, voting requirements, and other procedural matters of the Committee shall be pursuant to University policy regarding committees. The Committee in exercise of its duties in paragraph 3 above, upon receipt of a Notice from an Inventor(s) or Author(s) shall:
- Docket the Notice of discovery or Invention or Copyrightable Works and include the date received and all bibliographical data concerning Inventor(s) or Author(s).
- Within five (5) business days provide a copy of the Notice to a member of the Committee competent to assess the merit of the contents of the Notice.
- The reviewing member shall provide a written report and recommendation to the Committee within twenty-one (21) days of the member’s receipt of the Disclosure for review.
- The Committee shall consider the recommendation of the member and arrive at a decision concerning its recommendation to the President of the University, advising the named Inventor or Author of its decision in writing no less than sixty (60) days after the docket date of receipt of the Notice.
- The Committee shall inform the Inventor or Author in writing of the status of the consideration by the President every sixty (60) days until the University makes its decision.
- The President has final authority for approval of notice for filing for a Patent or copyright registration. The President has final authority for approval to release an Invention or Copyright to the inventor(s) or author(s), subject to the Dispute Resolution procedure herein.
DISTRIBUTION OF INCOME
The following provisions apply only to work resulting from substantial use of University facilities.
- Special Contractual Arrangements. The following provisions on distribution of income shall not apply to a work prepared pursuant to a special contractual arrangement with the University. The provisions of such special contractual arrangement shall govern unless otherwise agreed in writing. All special contractual arrangements must conform to University policy or University commitments unless prior written agreements with the University are entered into.
- Royalty Account. The University shall establish a royalty account for each property for which it anticipates receiving royalties or other income. All expenses and income relating to that item shall be recorded therein. Income to each royalty account shall be distributed as follows:
- The direct expenses of the University allocable to preparing and prosecuting the Patent application of the Invention or Copyright registration of the work covered by the account shall be charged to the account before making any distributions of income. Direct expenses shall not include University salaries or other overhead associated with the administration of this policy.
- After the direct expenses [as referred to in paragraph (a) above] are paid, any remaining balance shall be distributed as follows: (i) 50% to the Inventor, Author or artist, (ii) 50% to the University, unless other percentages were agreed upon in a Special Contractual Arrangement involving Substantial Use of University Facilities.
- In the event the University receives equity in an enterprise as a result of a transfer of rights under an Invention or Copyright, the amount, if any, to share with the Inventor(s) or Author(s) shall be the same percentages as noted in subsection B above unless other percentages were agreed upon in a Special Contractual Arrangement.
- Payment of Royalty. Payment of royalties to an Inventor or Author shall be on an annual basis on such date each year as is set forth by the Committee, unless the Committee makes special arrangements otherwise.
- Subsequent Expenses. Any expenses of the University arising subsequent to the preparation and prosecution of a Patent application or Copyright registration, including but not limited to, a) marketing and licensing of an Invention, and b) enforcement of the rights in and to the Invention or work, shall be charged to the account before any further royalties, become due and owing to the Inventor or Author.
CONFLICT OF INTEREST
In order to avoid conflicts of interest relating to any Patent and/or Copyright made with Substantial Use of University Facilities, each member of the University shall (a) disclose to the Committee any equity, consultancy or management relationship which such member has or is considering with any entity then being considered by the University as a potential licensee of such Invention, and (b) refrain from any involvement in the University’s evaluation and/or negotiation of the license with that entity or any competitor of that entity. In the event the member elects to participate in management of the entity, the member shall report quarterly to the Committee the proportion of time being devoted to the entity in a manner decided by the Committee.
Any question of interpretation or claim arising out of, or relating to, this policy, or dispute as to ownership rights of property affected by this policy, shall be settled as follows:
- The matter first shall be submitted to the Committee in written form setting forth the question, claim, or dispute to be resolved. The Committee shall review the matter and take such other steps as may be required to formulate a response, after which the Committee shall advise the parties as to the determination. The Committee shall endeavor to respond as quickly as possible and within 30 days of submittal of the written request.
- If any party is dissatisfied with the Committee’s decision, the party may appeal in writing to the President, who will respond to the appeal within 30 days of submittal of the written request.
- If any party is dissatisfied with the President’s decision, the party may appeal to an ad hoc committee of the Board of Trustees, which will be convened for purposes of conducting a review of the appeal and rendering a final decision.
- Final authority for administration of this policy lies with the Board of Trustees of the University.
BOARD OF TRUSTEE APPROVAL
All changes in this policy are subject to review and approval by the Board of Trustees.