Introduction
Creative works, inventions and discoveries of commercial importance are a natural outgrowth of activities within the Hendrix College community. The following policy clarifies the ownership rights to intellectual property works made by faculty, staff and students of Hendrix College.
The goal of this policy is to ensure that creative works, discoveries, inventions and other intellectual property generated by faculty, staff and students of Hendrix College are utilized in ways most likely to benefit the public. The College seeks to assist its faculty and other creators and researchers in properly disclosing their scholarly work, in complying with applicable laws and formal agreements, and in gaining the protection available under United States laws governing copyrights and patents. Likewise, the College seeks to ensure that commercial benefits are distributed in a fair and equitable manner that recognizes both the contributions of the inventors and creators and the interests of Hendrix College.
Ownership of Creative Works
As “works made for hire” are defined under Section 101 of the Copyright Act of 1976, copyrightable works of authorship created by an employee within the scope of his or her employment are owned by the employer. The College does not intend for this “works made for hire” doctrine to apply to Creative Works of faculty unless extraordinary resources of the College are used in the creation of the work. “Creative Works” are copyright-able works, other than inventions as discussed below, that result from a faculty member’s pursuit of traditional teaching, research and scholarly activities, including the creation of books, articles and other literary works; artistic, musical or dramatic works; or course materials, whether in traditional or electronic form, unless extraordinary resources of the college were used in the creation of the work. Faculty members own the copyright in any Creative Works that result from that person’s efforts. With regard to any particular creative work, the College and the faculty member may mutually agree on an alternative ownership arrangement. In the event a Creative Work is the result of more than one faculty member, the creators are expected to agree among themselves on the fractional ownership of the copyright.
Ownership of Inventions
Definition of Invention. Inventions are ideas and may or may not be patentable. Under U.S. Patent Law, an invention is patentable if it is a novel, unobvious and useful idea relating to a process, machine, manufacture, composition of matter or an improvement thereof. Patentable inventions include ideas relating to machines and other devices, software (which also may be protected by copyright), electrical circuits, chemical compositions or compounds and even some business methods. An invention is considered new or novel if it has not been previously publicly known or used by others in this country or patented or described in a printed publication anywhere in the world prior to conception of the invention. Patentability of an invention may vary from country to country and is determined by the patent laws of the particular country issuing the patent.
Administration. The administration of this patent policy resides with the Patent Advisory Committee which shall be appointed by the President of the College. The committee shall consist of the Provost, who shall chair the committee, the Natural Sciences Area Chair, and an at-large member to be determined by the President. It is the responsibility of the Patent Advisory Committee to: (1) evaluate the patentability and commercial or other value of the invention; (2) determine a course of action for patenting and commercializing the invention; and (3) ensure that all sales or licensing of inventions and/or discoveries are implemented to bring the inventions and/or discoveries to the public while securing financial reward for the College and the inventors. The chair of the Patent Advisory Committee shall report to the President of the College. The Vice President and General Counsel of the College shall be consulted on all legal matters pertaining to this policy.
Applicability. This policy concerning inventions applies to all inventions, whether or not patentable, conceived or first reduced to practice by full-time, part-time or visiting faculty, post-doctoral researchers, staff, students, or any other persons performing research or engaging in work at the College where such inventions may be created or discovered.
Ownership. Ownership of inventions conceived or reduced to practice by faculty, staff or any other person performing research or engaging in work or study at the College, where such inventions are created or discovered within the course of their employment or using extraordinary resources of the College, resides with Hendrix College. Inventions or discoveries that are made off college premises and that are unrelated to teaching and professional activities are exempt from this policy.
Any student invention is deemed made under College auspices and therefore the property of the College pursuant to the patent policy only if it is made in the course of the student’s employment by the College for an assigned work project. Royalties from the College’s licensing of any student invention is shared with the student on the same basis that royalties are shared with faculty or staff employees.
When a patentable invention is developed through a sponsored grant or contract, the special provision contained in the grant or contract prevails. In the absence of such special provisions, the College policy applies. Generally, the College has the right to elect ownership of intellectual property generated during the course of federally sponsored research activities; however, the government retains “march-in” rights and may claim ownership under certain limited circumstances. Regardless of the College’s election of ownership of the intellectual property, the government retains a non-exclusive, non-transferable, irrevocable, royalty-free, worldwide license to the invention produced under government sponsorship.
Procedures for Reporting an Invention. When any person makes a discovery or invention to which this policy applies, a report of the invention should be made promptly to the Chair of the Patent Advisory Committee. The report should be made on an invention disclosure form obtained from the committee chair. If ownership of the invention resides with the College, the inventor(s) shall assign all intellectual property rights to the invention to the College upon the committee’s request and otherwise cooperate with the College and take any further actions necessary to effectuate ownership by the College. Within 30 days of receipt of an invention disclosure form, the Chair convenes a meeting of the Patent Advisory Committee to evaluate the invention.
The Patent Advisory Committee shall have the sole right to determine the disposition of inventions in which the College has a proprietary interest. A decision to exercise this right shall be transmitted in writing to the inventor within 60 days of the date of disclosure of the invention to the committee. If the committee decides to pursue a patent, it may recommend that the College alone, or with the assistance of an external organization such as a technology transfer company, make applications for letters of patent. Title to all such patent applications and resulting patents shall be held by Hendrix College. If the committee decides not to patent an invention, or not to commercialize an invention, whether or nor patentable, the College releases to the inventor its interest in the invention.
Legal Expenses and Distribution of Income. An account is opened to which expenses associated with patenting and marketing inventions are charged. Expenses include, but are not limited to, invoiced costs such as legal fees, patent filing fees, licensing agent fees and other out-of-pocket expenses.
Revenues attributable to a particular invention are paid to the College as an advance or in full reimbursement of expenses incurred with respect to the exploitation and protection of that invention. After the College’s full recovery of expenses, the net revenues are distributed fifty percent to the inventor(s) and fifty percent to the College.
In each of the first three years in which revenues are received from an invention, the College allocates one-fifth of its share (i.e. 10% of net royalties) to the department(s) of the inventor(s). These funds may be used for equipment purchases, research and instructional activities, and other purposes approved by the Provost, but they may not be used to create or support permanent faculty positions.
In the absence of an agreement to the contrary, net revenues from inventions developed as a result of assigned College duties and the Creative Works of staff is divided 75% to the College and 25% to the inventor.
In the event of multiple inventors, the inventors are expected to agree among themselves on the fractional distribution of each inventor’s share of any invention revenues. The inventors shall sign a written agreement specifying the fractional distribution of their share of royalties. The inventor’s share continues even if he or she leaves the College.
Dispute Resolution. In the event of any dispute regarding a decision of the committee under this policy, including, without limitation, the ownership of an invention or the allocation of the inventor’s share of royalties, the President shall have the final decision concerning the College’s position in the matter.
Definition of Extraordinary Resources
“Extraordinary resources” may consist of paid released time from regularly assigned duties (but not a sabbatical or similar leave); direct investment by the College through funds or staff; the College’s purchase of special equipment for the project; use of the College’s multimedia production personnel and facilities; or extraordinary use of the College’s computing resources. Ordinary use of incidental supplies, use of a College computer in a faculty office, or use of College personnel or shared facilities on an occasional basis is not considered use of extraordinary resources. The College determines whether extraordinary resources have been used on a case-by-case basis.