Intellectual Property | General Counsel

Office of the General Counsel

1. GENERAL

1.1

As part of its mission, Monmouth University promotes creativity, intellectual inquiry, research and scholarship to enhance the educational and service goals of the University, benefiting the public and the University community. The University recognizes and affirms the traditional academic freedom of its faculty and staff to publish scholarly and artistic works without restriction.

1.2	The purpose of this policy, in seeking to fulfill that mission is:

1.2.1	to encourage the development of intellectual property for the best interests of the public, the University and the creator of the intellectual property; and
1.2.2	to provide for timely disclosure and protection of intellectual property developed or created by members of the University community; and
1.2.3	to allow members of the University community maximum scientific and professional freedom with respect to the method of dissemination and publication of their findings, consistent with any contractual obligations of employment or sponsored research; and
1.2.4	to establish guidelines for the protection of the ownership of intellectual property through patents, copyrights and trademarks and for the licensing of such intellectual property for commercial application; and
1.2.5	to provide guidelines for the sharing of income, as appropriate, derived from the production and/or licensing of intellectual property produced at the University.

2. APPLICABILITY

2.1.	This policy is applicable to the following members of the University community:

2.1.1	all individuals employed by the University, including but not limited to student employees; and
2.1.2	any individual using the University’s facilities under the supervision of University personnel, including but not limited to visiting faculty, consultants to the University and adjunct faculty, unless special terms for management of the work of such individuals are negotiated by the University; and
2.1.3	all students, both graduate and undergraduate, including but not limited to students engaging in research or development of intellectual property under the supervision or direction of a faculty member or other University employee.

3. USE OF UNIVERSITY RESOURCES

3.1	The University is a non-profit institution and as such, its resources are not to be used in connection with for-profit business enterprises. University resources are to be used solely for University purposes and not for personal gain or personal commercial advantage, nor for any other non-University purposes in accordance with the University’s Policy on Conflicts of Interest for Students and Employees. Some of the activities prohibited by that policy include use of University resources for personal commercial activities, engaging in private business activities that directly compete with the University and engaging in activities which conflict with University interests.
3.2	Courses and related materials which are developed by faculty members as part of their own individual research, without payment of a stipend or the receipt of release time or other additional compensation, shall not be considered an Institutional Work under this policy.
3.3	The following types of work are covered under this policy:

3.3.1.	No institutional or minimal institutional support or involvement.
3.3.2.	Substantial* institutional support or involvement.
3.3.3.	As an assigned duty or pursuant to a work-for-hire agreement with the institution.
3.3.4.	With support from an external sponsor.
* As defined in Definitions (Section 12)

3.4.	Works Developed with Substantial Use of University Resources

3.4.1

The University will not construe the provision of offices or library facilities as constituting substantial use of University resources, except for those instances where the resources were furnished specifically to support the development of such Copyrightable Works.

3.4.2

Copyrightable Works that are not works for hire but are works that are developed with integral and substantial use of funds, space, hardware, personnel or facilities administered by the University, where use was essential and substantial rather than incidental and for which an agreement has been signed by the author and appropriate University representative, or would have been signed if properly disclosed pursuant to Section 4.3.2, shall be owned by the University. Furthermore, Copyrightable Works that are not works for hire (see Section 4.2.3 below) but are works that are developed in the course of or resulting from research supported by a grant or contract with the federal government (or an agency thereof) or a nonprofit or for-profit nongovernmental entity, or by a private gift or grant to the University, shall be determined in accordance with the terms of the sponsored grant or contract.

4. MANAGEMENT OF COPYRIGHTABLE WORKS

4.1

The University encourages the preparation and publication of Copyrightable Works that results from teaching, research, scholarly and artistic endeavors by members of the faculty, staff and student body of the University. Authors shall be permitted maximum freedom with respect to their Copyrightable works consistent with the obligations to the University. Copyrightable works may be created under a variety of circumstances and conditions that impact the ownership and subsequent management thereof, as follows:

4.2

Ownership of Copyrightable Works

4.2.1	Books, Articles and Similar Works
	In keeping with academic tradition and except to the extent required by the terms of any funding agreement, the University does not claim ownership to pedagogical, scholarly or artistic works, regardless of their form of expression. Such works include but are not limited to faculty-prepared works such as textbooks, conference materials and refereed literature. Such works include those of students created in the course of their education, such as dissertations, papers and journal articles. Furthermore, the University claims no ownership in popular fiction or nonfiction creative works, such as novels, poems, videotapes, films, or multimediaworks, musical compositions, or other works of artistic imagination that are not works for hire (defined in Section 4.2.3 below). In addition, the University does not claim ownership to material developed by a faculty member for their own use in teaching particular courses that are not works for hire or works developed with substantial use of University resources (see Section 3.4 above). These materials include but are not limited to lectures, lecture notes, individualized handouts or charts, glossaries, class notes, curriculum guides or laboratory notebooks for in-class use or for electronic delivery. The University does not consider the subject of the course, the course syllabus or other materials that are not developed for the personal use of the faculty member to be included in the above category. Such materials can be utilized by either the University, other qualified faculty at the university, or by the faculty member at a subsequent university without restriction. If the faculty member retains title to copyright in teaching or course materials as noted above, the University shall retain a permanent royalty-free right to use the materials (other than books and materials available from a publisher through normal distribution channels) for educational purposes as part of the University course offerings when the development of such materials was advanced through the use of University facilities, supplies, equipment or staff services. The University retains the right to modify such materials for curricular purposes. If title to the copyright in works defined within this subsection vests in the University by law, the University will, upon request and to the extent consistent with its legal obligations, convey copyright to the authors of such Copyrightable Works.
4.2.2	Recorded Material in Classrooms or Laboratories
	Blanket permission is provided for media recording in classroom or laboratory for the use of students or faculty for the limited purpose of teaching and learning and research. Ownership of such recordings shall be consistent with Section 4.2.1 above. For recording done for research or for wider distribution through any media, prior permission and/or appropriate IRB approvals should be obtained from anyone included in the activity. Recorded materials in any media may not be used for wider distribution or for commercial purposes without permission from the Provost and the faculty member.
4.2.3	Institutional Works or Works for Hire

4.2.3.1	Institutional Works
	The University shall retain ownership of Copyrightable Works created as institutional rather than personal efforts, that is, created for institutional purposes in the course of the creators’ employment, including but not limited to simultaneous or sequential contributions over time by numerous faculty, staff or students. For instance, work assigned to programmers is Institutional Work or Work for Hire as defined by law, as is software developed for University purposes by staff working individually or collaboratively. Brochures, training programs, CD-ROMs, videos, and manuals for which staff members are hired to develop are other examples of Institutional Works or work for hire.
4.2.3.2.	Faculty Produced Works which are Works for Hire
	Courseware and related materials developed by faculty for which the faculty are paid a stipend, receive release time (including paid sabbaticals), or developed under an approved professional development plan or any other special compensated time, shall be considered works which fall under this doctrine only if the subject of a separate written agreement between the University and the faculty member for the development of coursework or related materials which indicates that the work under the agreement shall be considered a work for hire arrangement. If there is an agreement it must be executed at the time of granting of the stipend, release time, approval of the professional development plan or any other special compensated time. For any coursework or related materials developed by the faculty for which the faculty are paid a stipend, receive release time, are part of an approved professional development plan or any other special compensated time, which are not work’s for hire, the faculty member shall grant the University a permanent royalty-free right to use the coursework or related materials for educational purposes as part of the University course offerings and may modify such materials for curricular purposes.

4.2.4.

Execution of Assignment Agreements

Present and prospective employees of the University shall, upon request by the Provost, or designee, to perfect intellectual property rights, execute an assignment agreement in a form prescribed by and available from the Provost’s office to set forth effectively the ownership and rights to Copyrightable Works. Executed invention assignment agreements shall be maintained in the respective Department Head’s office or by the Provost.

4.3	Disclosure, Assignment and Protection

4.3.1

Authors of Copyrightable Works that are not owned by the University, or any of its components, own the copyrights in their works and are free to publish them, register the copyright, and to receive any revenues which may result therefrom.

4.3.2.

Authors of Copyrightable Works that are not works for hire (see Section 4.2.3 above) but are works that are owned by the University under Section 3.4 shall promptly disclose to the Provost any work of authorship covered by this policy (including those made under sponsored research or cooperative arrangements). Disclosure shall be made on a disclosure form prescribed by and available from the Office of the Provost or his/her designee. Such persons shall cooperate with the University to the best of their ability in protecting intellectual property rights inherent in the work. Furthermore, such persons shall warrant that, to the best of his/her knowledge, the work does not infringe upon any existing copyright or other legal rights.

4.4	Negotiation and Execution of Agreements for Copyrightable Works Owned in Whole or in Part by the University.
	Agreements permitting a party to use, develop, or otherwise commercialize Copyrightable Works owned in whole or in part by the University are encouraged. The Provost, or his/her designee, has primary responsibility for negotiating with third parties having an interest in using, developing or otherwise commercializing Copyrightable Works.
4.5	Software as Patentable Subject Matter
	In recent years, the U.S. Patent and Trademark Office has determined that software which meets certain technical and legal criteria may be patentable. In the case that software originally disclosed as a Copyrightable Work subsequently is determined to be patentable subject matter, and the University chooses to seek patent protection for the software, then such software shall be managed under this regulation as an Invention.

5. MANAGEMENT OF INVENTIONS

5.1	Inventors shall be permitted maximum freedom with respect to their inventions, consistent with any obligations to the University. All University employees are required to abide by their obligations to the University, as set forth in this policy, under research agreements entered into with any external sponsors.
5.2	Ownership

5.2.1	An Invention resulting from activities related to an individual’s employment responsibilities and/or with substantial support from University-administered funds, facilities or personnel shall be owned by the University.
5.2.2	An Invention unrelated to an individual’s employment responsibilities that is developed on his or her own time without University support or significant use of University facilities is not owned by the University.
5.2.3	Ownership of an Invention developed in the course of or resulting from research supported by a grant or contract with the federal or a state government (or an agency thereof) or a not-for-profit or for-profit nongovernmental entity, shall be determined in accordance with the terms of the sponsored grant or contract, or in the absence of such terms, shall be owned by the University.
5.2.4	Present and prospective employees of the University shall, upon request by the Provost, perfect intellectual property rights, execute an invention assignment agreement in a form prescribed by and available from the Provost or his/her designee to set forth effectively the ownership and rights to inventions. Executed invention assignment agreements shall be maintained in the respective Department Head’s office, and the Provost or his/her designee.

5.3	Disclosure, Assignment and Protection

5.3.1	All persons subject to this policy under Section 2 above shall promptly, before he/she discloses the same to the public and soon enough to permit timely filing of a patent application, disclose to the Provost or designee any Invention covered by this policy, including those made under sponsored research or cooperative arrangements. Disclosure shall be made on a disclosure form prescribed by and available from the Office of the Provost. Such persons shall cooperate with the University and the Provost in protecting intellectual property rights in the invention, to the best of their ability.
5.3.2	All inventors shall execute appropriate assignment and/or other documents required to establish the ownership and rights to Inventions.
5.3.3	The Provost or his/her designee, in cooperation with the Vice President for Finance, will determine whether the University desires to commit funding to obtain protection for the Invention, and shall so notify the inventor of the decision. In many cases, the Provost may advise to seek to identify one or more licensees who will bear the cost of obtaining patent protection.
5.3.4	In those instances where the inventor perceives that delay would jeopardize obtaining the appropriate protection for the Invention, the inventor may request in writing that the University render its decision within twenty (20) working days as to whether or not it shall proceed to file a patent application or take other steps to obtain available protection.
5.3.5	If the University fails to proceed in a timely manner to patent and/or license an invention, ownership will revert to the inventor(s) to the extent possible under the terms of any agreements that supported or relate to the work.

5.4	Negotiation and Execution of License Agreements for Inventions.

5.4.1	License agreements granting to a third party the right to use, develop, or otherwise commercialize University-owned Inventions are encouraged. The Provost or his/her designee, in consultation with the Vice President and General Counsel and the Vice President for Finance, has primary responsibility for negotiating with parties having an interest in such activities.
5.4.2	Final terms of a license agreement for a University-owned Invention must be approved by the President of the University, in accordance with contract management protocols specified in University policies. Any agreement to license or transfer ownership of University-owned Inventions must be approved by the President.

5.5	Obligations to Sponsors
	The Office of Grants and Contracts, in consultation with the Provost or his/her designee, shall coordinate reporting requirements and other obligations to research sponsors (including governmental) regarding Inventions developed under a research contract or grant.

6. DISTRIBUTION OF INCOME FROM COMMERCIALIZATION

6.1	Distribution of Income from Inventions

6.1.1	All monetary proceeds from commercialization of University-owned inventions, including royalties, equity interests, and dividends, are the property of the University. As used in this section, monetary proceeds from commercialization shall include external use of an invention and not proceeds derived from the use of such inventions by the University. Income received by the University from commercialization of an Invention will be distributed as follows:
	Step 1 Distribute the first $5,000 of gross income to the inventor. This distribution is in recognition of individual creativity and inventorship.
	Step 2 Deduct expenses directly assignable to the specific patent to arrive at the “adjusted income” (when such costs are not provided from other sources). These expenses include patent filing, prosecution and maintenance fees, and marketing and litigation costs incurred in commercializing and defending the specific invention.
	Step 3 Distribute the remaining adjusted income as follows: fifty percent (50%) to the inventor and fifty percent (50%) to the University.
6.1.2	The University will provide inventor(s), at the end of each fiscal year, an annual accounting of income and expenses related to the invention. Books and receipts regarding the invention will be open to the inventor or his/her designee.
6.1.3	In the event of multiple inventors, the inventors will agree among themselves as to the distribution of the income accruing to the inventors; distribution of the inventors’ share shall be made only upon receipt of a signed agreement between the inventors.

6.2	Distribution of Income from Copyrightable Works

6.2.1

All monetary proceeds from commercialization of Copyrightable Works, including royalties, equity interests, and dividends are the property of the University. Income received from commercialization of Copyrightable Works will be distributed as follows:

6.2.1.1	Institutional Works (see Section 4.2.3). The University shall be entitled to all income from distribution or commercialization of Institutional Works.
6.2.1.2	Works Developed with Substantial Use of Resources (see Section 3.4), and commercialized by the University. In cases where the University commercializes or distributes of the Copyrightable Work, the distribution of income shall be made in accordance with the following steps:
	Step 1. Deduct expenses directly assignable to the specific copyrightable work (when such costs are not provided from other sources).
	Step 2. Distribute the remaining adjusted income as follows: 50% to the creator, 50% to the University.

6.2.2	The University will provide creator(s), at the end of each fiscal year, an annual accounting of income and expenses related to the copyrightable work. Books and receipts regarding the invention will be open to the creator or his/her designee.
6.2.3	In the event of multiple creators, the creators will agree among themselves as to the distribution of the income accruing to the creators; distribution of the creators’ share shall be made only upon receipt of a signed agreement between the creators.

6.3	Equity and other Nonmonetary Returns

6.3.1

The University may negotiate, but shall not be obligated to negotiate, for equity interests in lieu of or in addition to royalty and/or monetary consideration as part of an agreement relating to Inventions or Copyrightable Works.

6.3.1.1

Inventors and authors may receive up to fifty percent (50%) of any equity or other nonmonetary consideration received by the University under this section. However, the University may choose to receive the consideration under terms that restrict its ability to sell, distribute or otherwise deal with the equity interests. In such cases, any restrictions on the University’s interest shall be equally applicable to the interest of the inventor or author, unless waived or varied in writing and signed by the Provost and the inventor (for inventions), or by the Provost and the authors (for Copyrightable Works).

6.3.1.2

Neither the University nor any component thereof acts as a fiduciary for any person concerning equity or other consideration received under the terms of this regulation.

6.4	Departmental Royalty Distributions

6.4.1

Where royalty distribution to individuals would be impracticable or inequitable (for example, when copyrightable material has been developed as a laboratory project, or where individual royalty distribution could distort academic priorities), the “inventor’s share” may be allocated to a research or educational account in the academic department where the copyrightable material was developed. Such determination will be made on a case-by-case basis by the Provost and School Dean after consultation with the principal investigator or department head.

7. PROVISIONS FOR RELEASE OF RIGHTS TO INVENTORS AND AUTHORS

7.1

Subsequent to the execution of any agreement where the University either whole or in part claims ownership of a work of intellectual property, the University may, at it sole discretion, determine to release to the inventor(s) its ownership rights to any intellectual property upon such conditions as the University deems beneficial and fair to all parties. The release of rights must be approved by the Provost and also will be verified in writing to all parties. Any release of rights will be subject to the following provisions:

7.1.2

The University shall retain a perpetual, royalty-free license to use the Invention or Copyrightable Work, and any corresponding patents or copyrights, for research, education and service purposes as defined in Section 4.

8. INVENTION DISCLOSURES

An invention disclosure is a document which provides information about inventor(s), what was invented, circumstances leading to the invention, and facts concerning subsequent activities. It provides the basis for a determination of patentability and the technical information for drafting a patent application. An invention disclosure is also used to report technology that may not be patented but is protected by other means such as copyrights. Such documents shall be filed in accordance with Sections 4.3 and 5.3 of this policy.

9. ASSIGNMENTS

No assignment, license or other agreement may be entered with respect to copyrighted works owned by the University except by an official specifically authorized to do so.

10. USE OF THE UNIVERSITY NAME IN COPYRIGHT NOTICES

10.1	The following notice should be placed on University-owned materials in order to protect the copyright:

10.1.1

10.2	No other institutional or departmental name is to be used in the copyright notice, although the 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.
10.3	Additionally, works may be registered with the United States Patent and Trademark Office using its official forms. Forms may be obtained from the General Counsel’s Office, to which questions concerning copyright notices and registration also may be addressed.

11. INTELLECTUAL PROPERTY COMMITTEE

11.1

An Intellectual Property Committee will advise, evaluate, and oversee the activities of scholarly works support services; review current procedures and practices and make recommendations for future directions; resolve conflicts of interest; arbitrate decisions concerning the assignment of intellectual property; and mediate and resolve any disputes between the university and the inventors/creators. The committee will be jointly appointed by the Provost and the Faculty Association. Committee members will include faculty members, one from each academic school, equally selected to represent areas with major and constant involvement in the invention or authorship fields (none of whom have current administrative appointments), the Provost’s designee and the University’s Vice President and General Counsel. The Committee will be chaired by the Provost’s designee. All decisions or recommendations of the advisory committee shall be subject to the review of the Provost.

11.2

Any dispute involving the inventor(s), a department, a school or the University that cannot be settled through informal discussion shall be submitted to the Intellectual Property Committee which will investigate the dispute and make a recommendation for resolution to the Provost, who will make the final determination in consultation with the President. Committee members or administrators who are directly involved with the property in question should withdraw from the process at such times as necessary to avoid conflicts of interest.

12. DEFINITIONS

12.1	For the purposes of this policy, the following terms are defined as follows:

12.1.1	Invention: a process, method, discovery, device, plant, composition of matter, other invention that reasonably appears to qualify for protection under the United States patent law (utility patent, plant patent, design patent, certificate of Plant Variety Protection, etc.), whether or not actually patentable. An Invention may be the product of a single inventor or group of inventors who have collaborated on a project.
12.1.2	Copyrightable Work: an original work of authorship which has been fixed in any tangible medium of expression from which it can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device, such as books, journals, software, computer programs, musical works, dramatic works, videos, multimedia products, sound recordings, pictorial and graphical works, etc. A Copyrightable Work may be the product of a single author or a group of authors who have collaborated on a project.
12.1.3	Intellectual Property: collectively, all forms of intellectual property including but not limited to Inventions, Copyrightable Works, Trademarks, and Tangible Research Property.
12.1.4	Substantial: as used in this policy, includes, for example, released time from regularly assigned duties; direct investment by the university of funds or staff, or the purchase of special equipment for the project; extraordinary use of multimedia production personnel and facilities; or extraordinary use of computing resources.