EVMS Intellectual Property Policy
PREFACE
The purpose of this Intellectual Property
Policy is to establish rules and procedures applicable to patentable
inventions, works subject to copyright protection and other intellectual
property conceived or developed in the course of performance of work and
research under the auspices of Eastern Virginia Medical School (EVMS).
It does so by defining (a) how intellectual property developed or
created by EVMS faculty and others working under the auspices of EVMS
will be identified and protected; (b) how ownership and usage rights in
such intellectual property will be shared among EVMS, the inventors and
creators of such intellectual property, and third parties that might
sponsor or be involved in its creation or development; and (c) how such
intellectual property will be managed and how revenues from its
commercialization will be shared. This Intellectual Property Policy is
comprised of a Patent Policy (Section I below), a Copyright Policy
(Section II below) and Terms Applicable to both Patent and Copyright
Matters (Section III below).
- PATENT POLICY
The policy of Eastern Virginia
Medical School (EVMS) is to consider and, where deemed
appropriate by the EVMS Office of Technology Transfer pursue the
patenting, licensing, and commercialization of any Invention to
which EVMS has or acquires ownership rights.
- Goals.
By adopting this
Patent Policy EVMS intends to:
- Stimulate basic and applied
research within the educational, research, and clinical
activities of the School and enhance collaboration.
- Motivate discovery of
practical applications of research by rewarding Inventors
for their Inventions.
- Evaluate all EVMS Inventions
and acquired Independent Inventions for development,
patentability, and licensing potential.
- Insure that EVMS and EVMS
Inventors receive equitable shares of the financial returns
from Inventions resulting from EVMS Activity.
- Coordinate and evaluate the
use of EVMS Inventions in the public interest.
- Purpose.
It is the purpose of
this Patent Policy to set forth the rules governing the relationship
of EVMS Inventors, EVMS, other associated Inventors, and outside
sponsors supporting research within EVMS. This policy governs the
ownership and disposition of rights in EVMS Inventions and related
intellectual property and applies to all EVMS Members.
- Objectives
In general, EVMS objectives include
the dissemination of existing knowledge, the acquisition of new
knowledge and understanding, the training of students, residents and
fellows, and the stimulation of a spirit of inquiry. However, useful
Inventions may result from EVMS Activity. When this occurs, EVMS
will, where deemed appropriate by the EVMS Office of Technology
Transfer, endeavor to protect and control the use of such Inventions
under this Patent Policy and, the patent laws of the United States
and other countries.
The Director of the EVMS Office of
Technology Transfer, under the direction of the EVMS President, may
exercise broad discretion for the development and protection of EVMS
Inventions, patents, and other intellectual discoveries and may act
for EVMS in all matters involving intellectual properties, including
the making of contracts and the waiving, assigning, or transferring
of EVMS rights consistent with law and this Patent Policy.
- Definitions
Wherever they are used in this
Patent Policy the following terms have the following meanings:
- “EVMS Activity” is defined as any
activity conducted under circumstances in which any one or more of
the following conditions are present.
- Research, educational, clinical
or other activity conducted by any EVMS Member(s) in connection with
their employment or engagement by or other association with EVMS;
for example, work performed by EVMS Members acting in the course of,
and within the scope of, their employment; or
- Research, educational, clinical
or other activity conducted by any EVMS Member(s) using EVMS funds,
time, facilities, equipment, materials or proprietary information;
for example, work carried out by EVMS Members within facilities
owned, operated or controlled by EVMS; or
- Research, educational, clinical,
or other activity conducted by any EVMS Member(s) in the course of
projects or undertakings sponsored or supported in whole or in part
by funds or other resources provided or administered by or through
EVMS; for example, work carried out by EVMS Members under a grant
obtained by EVMS.
- “EVMS Expenses” is defined, with
respect to any Invention, as EVMS’ expenses related to the research,
testing, development, licensing, marketing or commercialization of
such Invention, or to pursuing, obtaining, maintaining or defending
patent and other legal protections and rights in or for such
Invention, to the extent such expenses are not reimbursed to EVMS
from grant, sponsor or other third party sources, as well as such
other expenses as may be allocated to any Invention by agreement of
EVMS and the EVMS Inventor(s) of such Invention. EVMS Expenses with
regard to any Invention shall in each case be determined in good
faith by the Director of Finance in consultation with the Office of
Technology Transfer whose determinations with regard to EVMS
Expenses shall be conclusive.
- “EVMS Invention” is defined as an
Invention which resulted in whole or in part from EVMS Activity, or
is invented, discovered, conceived, created, made or first reduced
to practice as a part or in the course of EVMS Activity by an EVMS
Inventor.
- “EVMS Inventor” is defined as an
EVMS Member who invents, discovers, conceives, creates, makes or
reduces to practice any Invention.
- “EVMS Member” is defined as any
individual within one or more of the following groups: EVMS
full-time and part-time faculty, EVMS community faculty, EVMS
classified and unclassified employees, EVMS administrative staff,
paid EVMS student assistants, EVMS students, residents, fellows and
trainees, EVMS visiting faculty and researchers, EVMS employees and
visitors covered by sponsored program agreements or other
contractual arrangements, and any other person or group that uses or
is aided by EVMS resources.
- “Improvement” is defined, with
respect to any Invention, as any change or modification to such
Invention that could improve or enhance its functionality,
efficiency or commercial value, or any new Invention that is derived
in whole or in part from such original Invention, or includes any or
all of the features of such Invention or is otherwise directly
related to such Invention.
- “Independent Invention” is
defined as an Invention which did not result in whole or in part
from EVMS Activity and is not invented, discovered, conceived,
created, made or first reduced to practice as a part or in the
course of EVMS Activity by an EVMS Inventor.
- “Invention” is defined as any
trade secret, know how, technology, process, machine, article of
manufacture or composition of matter, or any idea that enhances the
functioning of research, educational, clinical or administrative
practices, or any Improvement of any of the foregoing. An Invention
may or may not be patentable.
- “Invention Assignment Form” is
defined as the form required to be filed with the Office of
Technology Transfer, which assigns each EVMS Invention to EVMS. The
Invention Assignment Form is located on the internet
here.
- “Invention Disclosure Form” is
defined as the form required to be filed with the EVMS Office of
Technology Transfer after any Invention is identified by an EVMS
Member. The Invention Disclosure form is located on the internet at
here.
- “Invention Income” is defined,
with respect to any Invention, as any value received by EVMS with
respect to such Invention, or by any EVMS Inventor before or after
disclosure to EVMS of such Invention in consideration for licensing
or other commercial exploitation or for use of such Invention, or
for any transfer of any right, title or interest in or to such
Invention. Invention Income includes, but is not limited to, expense
reimbursements, option fees, license fees, patent application and
progress fees, registration fees, and royalty income.
- “Inventor” is defined as any
person who invents, discovers, conceives, creates, makes or reduces
to practice any Invention.
- “Net Invention Proceeds” is
defined, with respect to any Invention, as gross Invention Income
less EVMS Expenses.
- Assignments and Disclosures
- Each EVMS Invention shall be
deemed to be the property of EVMS, shall be disclosed to EVMS by its
EVMS Inventor(s) in an Invention Disclosure Form prescribed by the
EVMS Office of Technology Transfer, and shall be assigned to EVMS
using an Invention Assignment Form prescribed by the Office of
Technology Transfer.
- Within thirty (30) days after any
Invention is identified by its EVMS Inventor(s), the EVMS Inventor(s)
shall notify the EVMS Office of Technology Transfer that an
Invention has been made, by completing and filing the prescribed
Invention Disclosure Form, which requires the signatures of the
Chair(s) of the Inventor(s) primary department(s) and the Dean of
EVMS.
- As part of the Invention
Disclosure Form filing, all EVMS Inventors should agree on their
respective percentage contributions to inventorship of the
Invention, and all EVMS Inventors should agree on how they would
like their share of Net Invention Proceeds from the Invention shared
among them. If a disagreement exists among co-Inventors with regard
to their respective percentage contributions to inventorship, or if
disagreement exists among joint EVMS Inventors with regard to their
desired sharing of Net Invention Proceeds, it should be so stated in
the Invention Disclosure Form for later resolution in accordance
with this Intellectual Property Policy.
- If there are any Inventors who
are not EVMS Inventors involved in the invention, discovery,
conception, creation or reduction to practice of any Invention with
an EVMS Inventor, the EVMS Inventor(s) of such Invention shall ask
each non-EVMS co-Inventor to complete and sign the Invention
Disclosure Form along with the EVMS Inventor(s), and make all
reasonable efforts to obtain their signatures on the Invention
Disclosure Form. For any non-EVMS co-Inventors who do not sign the
Invention Disclosure Form, the EVMS Inventor(s) involved shall
fairly estimate the inventorship contribution of each such non-EVMS
co-Inventor for purposes of the Invention Disclosure Form. EVMS
Inventors shall also disclose in the Invention Disclosure Form, to
the extent known to them, each such non-EVMS Member’s employment or
other relationship with any non-EVMS educational institution(s) or
other organization(s).
- At any time after the filing of
the Invention Disclosure Form, EVMS Inventors may submit a directive
to the Office of Technology Transfer that is contrary to the initial
Invention Disclosure Form and which modifies the desired sharing of
Net Invention Proceeds.
- Within thirty (30) days of the
filing of an Invention Disclosure Form, the Office of Technology
Transfer will notify the EVMS Inventors of its decision whether the
Invention is an EVMS Invention. If the Office of Technology Transfer
determines that an Invention is an EVMS Invention, the EVMS Inventor(s) shall assign all of their rights to such EVMS Invention
to EVMS within thirty (30) days of notice by the Office of
Technology Transfer that the Invention is an EVMS Invention, by
executing and filing with Office of Technology Transfer an Invention
Assignment Form. Each EVMS Inventor who is or may be a co-Inventor
or a contributor to the invention, discovery, conception, creation
or reduction to practice of the EVMS Invention must sign the
Invention Assignment Forms.
- If an EVMS Inventor believes that
an Invention is an Independent Invention, EVMS Inventors should be
prepared to provide documentation of the independence of such
Inventions before a final determination is made by the EVMS Office
of Technology Transfer. Disagreement with any such determination by
the Office of Technology Transfer must be noted by the Inventor(s)
in writing to the Office of Technology Transfer within thirty (30)
days after notification of the determination, and will then be
resolved in accordance with pertinent provisions of this
Intellectual Property Policy.
- If any Invention is determined to
be an Independent Invention, the Inventor(s) may voluntarily assign
it to EVMS, but no Inventor is under any obligation to do so and
EVMS is under no obligation to accept any such assignment. Should
EVMS not accept assignment of any Independent Invention, the
Inventor(s) will be free to patent, license, manufacture, and market
the Independent Invention at their own expense. However, should any
Improvement be made to the Invention in the course or as a result of
EVMS Activity, the Improvement will be an EVMS Invention under, and
treated as such in accordance with, this Patent Policy. EVMS
reserves the right to assert its rights to such Improvements, and
each EVMS Member is responsible for notifying EVMS of all such
Improvements promptly upon becoming aware of them by filing a new
Invention Disclosure Form.
- Following its receipt of the
Invention Assignment Form for any EVMS Invention, the EVMS Office of
Technology Transfer will undertake an evaluation of the commercial
potential of the EVMS Invention utilizing the information provided
with the disclosure, discussions with the Inventor(s) and other
means or resources the Office of Technology Transfer deems
appropriate. The Office of Technology Transfer may, but will in no
case be obligated to, elect to seek an evaluation from an outside
patent assessment/administration group with regard to the commercial
potential of any EVMS Invention.
- After evaluation of the EVMS
Invention, if the decision to retain the assignment of any Invention
is made by the EVMS Office of Technology Transfer, the EVMS Office
of Technology Transfer will pursue patent protection. The patent application(s) will be written by EVMS’ patent counsel in
association with the Inventor(s), using Invention Disclosure Form
information and other information obtained from the Inventor(s). The
Office of Technology Transfer may consider and pursue other
alternatives, apart or simultaneous with patent application, such as
licensing and/or options to third parties, and take such other
actions as the Office of Technology Transfer may deem appropriate to
promote and exploit any assigned Invention.
- If after the evaluation of the
EVMS Invention the decision to not retain the assignment of any
Invention is made by the EVMS Office of Technology Transfer, the
Office of Technology Transfer shall reassign such EVMS Invention to
the assigning Inventor(s). If EVMS makes an election to reassign,
the Office of Technology Transfer will give the Inventors(s) written
notice of this decision within ninety (90) days after submission to
the Office of Technology Transfer of the completed Invention
Disclosure and Invention Assignment Forms relating to the EVMS
Invention. The ninety (90) day time-frame for reassignment may be
extended at the discretion of the Director of the EVMS Office of
Technology Transfer, in which event the Inventor(s) shall be
notified in writing of the extension.
- EVMS may decide to discontinue
pursuit of any patent application on any EVMS Invention at any time,
for any reason, in which case EVMS may reassign such EVMS Invention
back to its Inventor(s) and may elect to retain certain or
continuing rights in reassigned Inventions. Following reassignment
of any Invention, the Inventor(s) will be free, at their own
expense, to take appropriate actions to obtain patent protection for
the Invention and otherwise exploit and develop the Invention.
- If it is subsequently determined
that there is an Improvement to a reassigned Invention, or that
additional know how, technology or other value has been added in the
process of perfecting the Invention for patenting or commercial
exploitation, EVMS may exercise these rights. EVMS Inventors are
responsible for disclosing and assigning such subsequent
Improvements to EVMS to the Office of Technology Transfer by filing
updated Invention Disclosure and Invention Assignment Forms with the
Office of Technology Transfer.
- If the EVMS Office of Technology
Transfer deems it appropriate at any time with respect to any EVMS
Invention, the Office of Technology Transfer will review and may
revise allocations of inventorship and Net Invention Proceeds set
forth in the Invention Disclosure Form for the Invention. If such
review results in revision of the inventorship or distribution
percentages set forth in the Invention Disclosure Form, the Office
of Technology Transfer will give written notice of such revision(s)
to the EVMS Inventors listed in the form. Such revisions will become
effective and binding on all the Inventors thirty (30) days after
such notice, unless within such 30-day period the Office of
Technology Transfer receives written notice from any of the
Inventors of his or her disagreement with the revisions. Any such
disagreement will be resolved in accordance with applicable
provisions of this Intellectual Property Policy.
- Determination of inventorship
for any Invention involves application of patent law rules and
principles to the facts and circumstances of any given case. A
patent application must correctly identify and name all
co-Inventors, and may not name as an Inventor any party who is not
such based on proper application of patent law rules and principles.
Final determinations of inventorship will in all cases be made by
the EVMS Office of Technology Transfer with assistance of EVMS’
patent counsel. In some cases these determinations of inventorship
may result in changes to the allocations of inventorship
contributions and Net Invention Proceeds specified in Invention
Disclosure Forms.
- Early peer-reviewed publication
of results is a major objective of every academic institution.
However, premature publication of any Invention could jeopardize its
future licensing and patent potential. EVMS Inventors must defer all
public disclosure and publication of any Invention until such time
as disclosure to and review by EVMS has been completed in accordance
with this Patent Policy. All public disclosures of EVMS Inventions
through press announcements, conference presentations, grant or
sponsorship applications or any other means must by approved in
advance by the EVMS Office of Technology Transfer. Any public use of
or commercial activity (for example, an offer to sell) with regard
to an Invention can also jeopardize its future licensing and patent
potential. Consequently, all such activities related to EVMS
Inventions must also be approved in advance by the EVMS Office of
Technology Transfer.
- Distribution of Income
- Whenever it receives Invention
Income with regard to an EVMS Invention, EVMS will first
deduct/recover all EVMS Expenses with regard to the EVMS Invention,
and then determine the Net Invention Proceeds available for
distribution. In determining EVMS Expenses, the Office of Financial
Services may utilize assistance and data obtained from the Inventor(s), Department Chair(s), and other sources the Office of
Financial Services deems necessary or appropriate.
- After EVMS has recovered any and
all EVMS Expenses, the Net Invention Proceeds will be allocated and
distributed as follows:
- (a) To the Inventor(s) (1/3)
- (b) To the Inventor(s) primary
department at the time of Invention (1/3)
- (c) To EVMS (1/3)
- For any EVMS
Invention, EVMS may enter into an agreement with another entity or
entities that addresses the intellectual property arrangement
between the parties, including, but not limited to, intellectual
property ownership, patent prosecution, marketing, licensing,
license management, expense recovery, and revenue distribution. When
EVMS is the recipient and administrator of the Invention Income,
EVMS shall pay any amounts due to the other party under the terms of
the agreement prior to the internal distribution of Net Invention
Proceeds in accordance with Section F.2 above.
- The Office of Financial Services
and the Office of Technology Transfer will calculate Invention
Income, EVMS Expenses and Net Invention Proceeds and distribute any
share of Net Invention Proceeds to which any Inventor is entitled
within sixty (60) days after the receipt of Invention Income.
Together with each distribution, EVMS will provide the Inventor with
a statement showing calculation of his/her distribution, and
pertinent information regarding licensing or other commercial
activity that resulted in the distribution. These payments are
subject to the Internal Revenue Service regulations.
- EVMS’ President, with the advice
of the Dean/Provost and the approval of the EVMS Board of Visitors,
and utilizing information and recommendations from other sources as
the President deems necessary or appropriate, may change the
allocations of Net Invention Proceeds as between the Inventor(s)
primary department(s) and EVMS from those set forth in Section F.2
above. The Inventor(s) proportional share of Net Invention Proceeds
will not be changed by any such action.
- Should this Patent Policy be
revised or changed at any time the Inventor(s) rights under this
Patent Policy, including the fractional portion of Net Invention
Proceeds to which each is entitled, will remain the same as when the
first Invention Disclosure and Invention Assignment Forms were
submitted for the Invention involved in accordance with this Patent
Policy, subject, however, to any revisions of such entitlements made
in accordance with this Patent Policy.
- With respect to the departmental
portion of any Net Invention Proceeds, the Department Chair shall
have final utilization and allocation authority within all
applicable EVMS policies, rules and regulations, subject, however,
to any action by EVMS’ President pursuant to Section F.5 above.
- With respect to the EVMS portion
of any Net Invention Proceeds, EVMS’ President will have final
utilization and allocation authority within all applicable EVMS
policies, rules and regulations.
- Contracts and Grants
- Whenever EVMS Activity is
conducted under a grant approved by EVMS, if any part of this Patent
Policy conflicts with any term or requirement of such grant, the
terms of such grant shall govern. Likewise, if any part of this
Patent Policy conflicts with any applicable law or governmental
regulation, the terms of such law or regulation shall govern. It is
the policy of EVMS that all nongovernmental private sponsored
research contracts must be in compliance with all applicable laws
and regulations and to the extent feasible under the specific
circumstances in any case, consistent with this Patent Policy and
all other EVMS policies, rules and regulations. However, contracts
with private sponsors may grant ownership interests or other rights
in Inventions developed in the course of privately sponsored
research to the private sponsors, in any case where EVMS deems such
arrangements to be in the overall best interests of EVMS. In such
cases the rights of the Inventor(s) will be subject to the terms of
the arrangements between EVMS and the private sponsors, and may be
less than the Inventor(s) would otherwise have received under this
Patent Policy.
- EVMS Members must be careful to
avoid situations which could be considered conflicts of interest or
violations of this Patent Policy when entering into agreements to
provide consulting or other services to third parties, or agreements
establishing joint venture or other relationships with third
parties. Such situations might include, but are not limited to, ones
which require EVMS Members to disclose or use proprietary EVMS
knowledge, technology or licensing or patent information, and/or
involve the assignment or allocation of licensing, ownership or
other rights in Inventions to third parties. All such situations and
agreements must be disclosed to and approved in advance in writing
by the Director of the EVMS Office of Technology Transfer. EVMS
Members may not enter into any agreements with outside persons or
organizations that are inconsistent with EVMS’ rights and interests
with regard to patents and other intellectual property as stated in
or established pursuant to this Patent Policy, nor transfer any
rights or materials relating to or embodying intellectual property
subject to this Patent Policy, without the express prior written
consent of the Director of the EVMS Office of Technology Transfer.
- Cooperative or sponsored research
agreements carried out by EVMS Members within any EVMS Activity must
not transfer, assign or license ownership or other rights to any
existing or potential Invention in consideration for research funds
or otherwise unless approved by the Director of the EVMS Office of
Technology Transfer. Any sponsor must pay a competitive price for
the use of the Invention, which shall be determined by the EVMS
Office of Technology Transfer at the time the technology is
available for use and not earlier.
- EVMS Inventors may not obtain,
sell, assign, transfer or license any Invention or obtain any
Invention Income with respect to any Invention, or attempt to do any
of these things, prior to disclosure and assignment (if required by
this Patent Policy) of the Invention to EVMS. After disclosure and
assignment of any Invention to EVMS, the Inventor(s) may do these
things in conjunction with the EVMS Office of Technology Transfer,
but not independently.
- EVMS Inventors must fully
disclose to EVMS any economic and/or other relationship they may
have with any third party, individual or entity to which Invention
rights may be assigned or licensed, or which might otherwise have
grounds to claim rights in or to any EVMS Invention based on such
relationship. In such situations, the distributions of Net Invention
Proceeds under paragraph F.2 above may be changed by the Director of
the EVMS Office of Technology Transfer, with the concurrence of
EVMS’ President, after review of the facts underlying such
relationships.
II. COPYRIGHT POLICY
PREFACE
It is the policy of EVMS to foster
and encourage the creation of copyrightable works by its faculty and
others associated with the School, to leave ownership of such works
and the copyrights in them with their creators in appropriate cases,
but to retain rights for EVMS to use all such works in connection
with its educational and research missions. Copyrights in certain
works created by EVMS faculty and others associated with the School
will be owned by EVMS, and ownership of copyrightable works will
depend in each case on the category of the work and the status of
its creator, as detailed more fully in this Copyright Policy. This
Copyright Policy applies to all works of any type that are
protectable under United States or other applicable copyright laws,
other than computer software and programs and other copyrightable
materials within the definition of “Inventions” in the EVMS Patent
Policy (Section I above). Rights and obligations with regard to
those materials are governed by the Patent Policy and not by this
Copyright Policy.
- Definitions. Wherever they are
used in this Copyright Policy, terms defined in the EVMS Patent
Policy have the meanings given to them there, and the following
terms have the following meanings:
- “Directed Works” are defined as
works that are specifically funded by or created at the direction of
EVMS. Such funding need not constitute Exceptional Use of EVMS
Resources in order for the work to be considered a Directed Work.
Directed Works also include works created by Faculty Members in an
institute, center, department, or other unit that, with approval of
EVMS’ President, has adopted rules providing that copyright in
materials prepared by faculty in the course of their professional
work or in the course of study with that unit vests in EVMS and not
in the creator of the materials.
- “Exceptional Use of EVMS
Resources” is defined as EVMS support for the creation of a work
with resources of a degree or nature not routinely made available to
Faculty Members. Exceptional Use of EVMS Resources may include but
is not limited to:
- Waiver of fees normally required
to use specialized EVMS resources or facilities, such as equipment,
production facilities, service laboratories, specialized computing
resources, and studios;
- EVMS funding or gifts in support
of the work’s creation; and
- (c) Reduction in levels of teaching,
service or other typical EVMS activities (e.g., course load, student
advising responsibilities, division meetings, office hours,
administrative responsibilities) specifically to facilitate creation
of the work.
Ordinary or limited use of computers, laboratory space,
libraries, office space or equipment, routine secretarial services
at routine levels, telephones, and other informational resources
shall not be considered Exceptional Use of EVMS Resources.
- “Faculty Member” is defined as
any full-time or part-time EVMS faculty employee.
- “Non-Faculty Employee” is defined
as any full-time or part-time employee of EVMS who is not a Faculty
Member. Non-Faculty Employees include but are not limited to EVMS
classified and unclassified employees, EVMS administrative staff and
paid EVMS student assistants.
- “Sponsored or Externally
Contracted Works” are defined as works developed using funds
supplied under contracts, grants and other arrangements between EVMS
and third parties, including sponsored research agreements.
- “Student” is defined as any EVMS
student, resident, fellow or trainee.
- “Student Works” are defined as
papers, theses, dissertations, artistic and musical works, and other
creative works made by Students.
- “Traditional Non-Directed Works”
are defined as pedagogical, scholarly, literary, or aesthetic
(artistic) works resulting from non-directed effort. Such works may
include, but are not necessarily limited to, textbooks, manuscripts,
scholarly works, fixed lecture notes, distance learning materials
not falling into one of the other categories of this Copyright
Policy, works of art or design, musical scores, poems, films,
videos, audio recordings, or other works of the kind that have
historically been deemed in academic communities to be the property
of their creators.
- “Traditional Non-Directed Work
Involving Exceptional use of EVMS Resources” is defined as any
Traditional Non-Directed Work the creation of which was supported
by, or utilized, or received the benefit of, or otherwise involved,
Exceptional Use of EVMS Resources.
- “Works Made for Hire” are
defined as:
- Any work prepared by a
Non-Faculty Employee within the scope of his or her employment;
- Any work specifically ordered or
commissioned for use as a contribution to a collective work, as a
part of a motion picture or other audiovisual work, as a
translation, as a supplementary work, as a compilation, as an
instructional text, as a test, as answer material for a test, as an
atlas, or as any other type of work, if the creator of the work
expressly agrees in writing that the work will be considered a work
made for hire; and
- Any work produced for EVMS by an
independent contractor.
- Works Created by Faculty Members.
- Traditional Non-Directed Works.
- Ownership.
- The Faculty Member creator of a
Traditional Non-Directed Work shall own the copyright in the work
unless it is a Traditional Non-Directed Work Involving Exceptional
Use of EVMS Resources, a Directed Work, a Sponsored or Externally
Contracted Work requiring EVMS’ ownership of copyright or a Work
Made for Hire.
- As a condition of employment,
each Faculty Member creator of a Traditional Non-Directed Works
shall be deemed to have granted EVMS a non-exclusive,
non-transferable, royalty-free license to use and permit others to
use the work for EVMS’ own educational and research purposes, unless
such a license will impede scholarly publication or similar
activities.
- Traditional Non-Directed Works for which
authorship cannot be attributed entirely to one or more identifiable
authors but instead resulted from simultaneous or sequential
contributions over time by multiple authors, some of whom cannot be
specifically identified, shall be owned by EVMS.
- Commercialization; Assignment to EVMS. Where an EVMS Faculty Member
creator of a Traditional Non-Directed Work desires assistance from
EVMS in commercializing the work, the creator shall report the work
to the EVMS Office of Technology Transfer using such forms and
procedures as the Office may require. The Office will not be
obligated to accept any such work for commercialization, but if in
its discretion it does so in any case, it will undertake reasonable
efforts to commercialize the work. If EVMS is to be involved in
commercializing a Traditional Non-Directed Work, the creator shall
assign the work to EVMS using an assignment form provided by the
EVMS Office of Technology Transfer, which will include provisions
outlining the commercialization responsibilities of EVMS and a
mechanism for the sharing of commercial proceeds with the creator.
- Allocation of Commercialization Proceeds. When any Traditional
Non-Directed Work is assigned to EVMS and commercialized by EVMS,
income from such commercialization shall be apportioned and
distributed as though the work was an EVMS Invention under the EVMS
Patent Policy.
- Traditional Non-Directed Works Involving
Exceptional Use of EVMS Resources.
- Ownership. Traditional Non-Directed Works Involving Exceptional
Use of EVMS Resources shall be owned by EVMS. Whether any given work
involves Exceptional Use of EVMS Resources shall be determined
initially by the Chair of the Department in which the creator has
principally been involved or from which the creator has received
resources to fund the work, taking into account the nature and
amount of resources customarily made available to faculty in that
Department for similar work.
- Release to Creator. The President
of EVMS, with support from the Department Chair involved, may
release or transfer EVMS’ rights in a Traditional Non-Directed Work
Involving Exceptional Use of EVMS Resources to the work’s creator
through an appropriate written agreement.
- Release Agreement. Any
agreement for release or transfer to a creator of EVMS’ rights in a
Traditional Non-Directed Work Involving Exceptional Use of EVMS
Resources shall include provisions that:
- EVMS shall have a
non-exclusive, non-transferable, royalty-free license to use and
permit others to use the work for EVMS’ own educational and research
purposes; and
- If commercialization of the work generates
income, either (a) the creator shall reimburse EVMS for the
Exceptional Use of EVMS Resources involved in creation of the work,
or (b) the creator shall share income from such commercialization
with EVMS in an amount to be negotiated between the creator and the
EVMS Office of Technology Transfer. Proceeds to EVMS from
commercialization shall be allocated as directed by EVMS’ President
or his designee.
- Selection of Release Options. The Director of
the EVMS Office of Technology Transfer, after consultation with the
creator’s Department Chair, shall determine which of the options
available under paragraph (c)(ii) above is to be selected in
conjunction with the release of any work to its creator.
- Joint
ownership. In addition to discretionary release or transfer to the
creator of a Traditional Non-Directed Work Involving Exceptional Use
of EVMS Resources under paragraphs (c) and (d) above, the EVMS
Office of Technology Transfer may alternatively negotiate with the
creator for joint ownership of the work and sharing of income from
the work. The Office will consult with the department chair involved
in advance of, and keep such Department Chair(s) apprised of
developments in, any such joint ownership negotiation.
- Appeal.
Disputes regarding whether a work is a Traditional Non-Directed Work
Involving Exceptional Use of EVMS Resources shall be resolved under
the dispute resolution procedures specified below. However,
decisions regarding financial terms made under paragraph (c)(ii)
above shall not be subject to appeal.
In the event that the creator and EVMS are unable to reach agreement
regarding such financial terms, ownership of the work at issue shall
remain with EVMS.
- Directed Works.
- Ownership. EVMS shall own
the copyrights in all Directed Works created by Faculty Members.
Where practicable in the estimation of the creator’s Department
Chair, and subject to any additional terms or limitations made
necessary by EVMS licensing agreements or other obligations, the
creator shall be granted a non-exclusive, non-transferable,
royalty-free license to use the work for the creator’s own
educational and research use.
- Release. EVMS may release or
transfer EVMS’ rights in a Directed Work to the work’s creator or
agree to joint ownership of the Directed Work, subject to the same
requirements, process and procedures as are applicable to release or
joint ownership of Traditional Non-Directed Works Involving
Exceptional Use of EVMS Resources under paragraphs 2(b)-(e) above.
- Appeals. Disputes regarding whether a work is a Directed Work
shall be resolved under the dispute resolution procedures specified
below. However, decisions regarding financial terms with regard to
any Directed Work released to its creator shall not be subject to
appeal. In the event that the creator and EVMS are unable to reach
agreement regarding such financial terms, ownership of the work at
issue shall remain with EVMS.
- Sponsored or Externally Contracted
Works.
- Ownership.
- Unless the agreement under which a work is
created expressly requires copyright ownership by EVMS or conveyance
of rights to a third party, the Faculty Member creator of a
Sponsored or Externally Contracted Work shall own the copyright in
the work.
- As a condition of employment, each Faculty Member
creator of a Sponsored or Externally Contracted Work shall be deemed
to have granted EVMS a non-exclusive, non-transferable, royalty-free
license to use and permit others to use the work for EVMS’ own
educational and research purposes.
- EVMS will own a Sponsored
or Externally Contracted Work where the relevant agreement requires
copyright ownership by EVMS or conveyance of rights to a third
party, in which case EVMS will convey rights to the third party as
required. In each such case the creator of the work shall be
required to report the work to the EVMS Office of Technology
Transfer and assign all his or her rights in the work to EVMS,
using such forms and procedures as the Office may require. Where a
proposed sponsored research agreement or research grant will require
that copyrightable works be owned by EVMS or a third party, the EVMS
Office of Technology Transfer should inform the relevant Faculty Member(s) of the copyright provisions and secure the consent(s) of
such Faculty Member(s) to such provisions before the agreement is
signed or the grant accepted.
- Release. EVMS may release or
transfer EVMS’ rights in a Sponsored or Externally Contracted Work
owned by EVMS to the work’s creator if EVMS has ascertained that
such release or joint ownership will not conflict with the terms of
the relevant agreement or grant, or has obtained the written consent
of the other party to the agreement or grant to such release or
joint ownership. Any such release, transfer or joint ownership shall
be subject to the same requirements, process and procedures as are
applicable to release or joint ownership of Traditional Non-Directed
Works Involving Exceptional Use of EVMS Resources under paragraphs
2(b)-(e) above.
- Works Created by Non-Faculty Employees.
- Ownership. Copyright and all other rights in Works Made for Hire by
Non-Faculty Employees shall be owned by EVMS. Exceptions to EVMS
ownership may occur where:
- EVMS, with approval of its President
or his designee, enters into an agreement with a Non-Faculty
Employee in advance of creation of a work specifying that the work
shall be owned in whole or in part by the Non-Faculty Employee;
- EVMS ownership is waived by the President or his designee; or
- The work is a Traditional Non-Directed Work for which the EVMS
Office of Technology Transfer waives EVMS ownership to the extent
necessary to allow the Non-Faculty Employee creator(s) to assign
rights to academic publishers for publication made with no more than
nominal consideration to the creator(s).
- Works Created by
Independent Contractors.
Works produced for EVMS by independent
contractors shall be considered Works Made for Hire and copyright
and all other rights in such works shall be owned by EVMS. No EVMS
unit or department shall enter into an arrangement for any work to
be produced by an independent contractor without a written contract,
signed by the independent contractor giving EVMS ownership of all
copyrightable works produced by the independent contractor and
requiring the independent contractor to execute assignments to EVMS
of copyright and other rights in such works, as deemed necessary and
advisable by the EVMS Office of Technology Transfer.
- Works Created by EVMS Students.
- Ownership and Use.
- Students shall own copyrights in Student Works except in the
following cases:
- Copyrights to Traditional Non-Directed Works,
Traditional Non-Directed Works Involving Exceptional Use of EVMS
Resources and Directed Works created by any Faculty Member(s) with
Student assistance shall be owned by the Faculty Member(s) and/or
EVMS, as specified in Section B above.
- EVMS shall own the
copyright in any Student Work that is a Sponsored or Externally
Contracted Work.
- EVMS shall own the copyrights in all Student
Works created in the course of Students’ paid employment or
engagement by EVMS, except in any case where one of the exceptions
set forth in Section C.1 above applies.
- Student Works that
constitute classroom, laboratory, and other academic materials
generated by Students in the instructional process shall not be used
for commercial purposes by the Students generating such materials.
Students have a limited right to use these materials for personal,
educational purposes.
III. TERMS APPLICABLE TO ALL INTELLECTUAL
PROPERTY MATTERS
- A. The EVMS Office of Technology Transfer will be
responsible for managing and administering patent processing and
other actions to secure and protect rights with regard to all
Inventions, copyrightable works and other intellectual property in
which EVMS has or acquires any right, title or interest under this
Intellectual Property Policy. EVMS’ President may designate an
alternative office to handle the administrative process for a
specific kind of Invention, work or other intellectual property. In
any case, the Director of the EVMS Office of Technology Transfer,
acting under the direction of the EVMS President and in accordance
with EVMS contracting policies and procedures, will have final
signature authority concerning transfer and licensing of EVMS’
interests in all patents, Inventions, copyrightable works and other
intellectual property.
- All EVMS full-time and part-time employees
shall be required to agree in writing to this Intellectual Property
Policy by executing an EVMS PARTICIPATION/CONFIDENTIAL
NON-DISCLOSURE AGREEMENT.
- Questions of interpretation and
disputes arising under this Intellectual Property Policy shall be
submitted in writing to the EVMS Office of Technology Transfer,
which will attempt to provide the requested interpretation and/or to
assist in resolution of the dispute. If any question or dispute is
not resolved within thirty (30) days after its written submittal to
the Office of Technology Transfer, the party or parties involved may
request its
consideration by the Director of the Office. If the Director is
unable to resolve the matter within sixty (60) days after its
submittal to him, he may submit the matter to EVMS’ President for
consideration.
The President, in his sole discretion, may (a)
forward his recommended decision on the question or dispute to the
appropriate EVMS Grievance Committee, or (b) establish a dispute
resolution panel to conduct a hearing into the matter or make a
recommendation based upon the written record, provided that all
parties to the dispute shall in each case be given an opportunity to
present evidence and arguments in support of their respective
positions. Each party shall provide each other party to any dispute
with a copy of any written materials submitted to the panel
simultaneously with submission of such materials to the panel. Any
hearing will be conducted following procedures established by the
panel. No party shall have the right to be represented by counsel
before the panel, but any party may be accompanied at a panel
hearing by an advisor of such party’s choosing, who shall not
participate in the hearing.
Each panel shall report its findings and
conclusions to the President in writing along with a written
recommendation for disposition of the matter within forty-five (45)
days after appointment of the panel by the President; provided,
however, that for good cause the President may extend the time
period for such report by not more than an additional thirty (30)
days. Copies of all findings, conclusions and recommendations of the
panel shall be provided to all parties to the dispute. On receipt of
such findings, conclusions and recommendations, the President shall
issue a written decision in the matter to each of the parties to the
dispute. The President’s decision shall be final, and binding on all
parties to the dispute and conclusive unless any party appeals such
decision in writing to the EVMS Board of Visitors within fifteen
(15) days after such party’s receipt of the President’s decision.
The Board of Visitors shall review the appeal and shall render its
decision in writing. The determination of the Board of Visitors
shall be final, conclusive and binding on all parties to the
dispute.
- The EVMS Office of Technology Transfer may from time to
time establish such processes and procedures as it deems necessary
or desirable for implementation of this Intellectual Property
Policy. It is recognized that situations, circumstances and issues
relating to intellectual property subject to or other matters
covered by this Policy may arise that are not specifically addressed
by its terms and provisions or by processes or procedures
established pursuant to it. In each such case the EVMS Office of
Technology Transfer will determine how the situation, circumstance
or issue should be addressed or resolved in keeping with the intent
of this Policy and the overall best interests of EVMS, and address
the situation, circumstance or issue in accordance with such
determination.
- In any case where EVMS owns or obtains ownership
of an Invention or creation pursuant to either the EVMS Patent
Policy (Section I above) or Copyright Policy (Section II above), if
the EVMS Office of Technology Transfer believes such Invention or
creation is or may be subject to protection under both patent law
and copyright law, the Inventor(s)/creator(s) of such
Invention/creation shall assign all of their patent, copyright and
other rights in such Invention/creation to EVMS using such
assignment form(s) as
the Office may require. On commercialization of such works, the
Inventor(s)/creator(s) shall be compensated in accordance with the
provisions of the EVMS Patent Policy. The EVMS Office of Technology
Transfer may on its own initiative investigate whether any Invention
reported to it under the EVMS Patent Policy might also be subject to
copyright protection and/or whether any work reported to it under
the EVMS Copyright Policy might also be an Invention subject to the
EVMS Patent Policy.
- This Intellectual Property Policy shall take
effect upon its adoption by the EVMS Board of Visitors and shall
cover all Inventions, copyrightable works and other intellectual
property in which EVMS has or could obtain rights pursuant to the
terms of this Policy, for which no previous agreements or
assignments have been entered into by EVMS with the Inventor(s) or
creators of same.
For more information on this Intellectual Property
Policy and its implementation at EVMS, please contact:
EVMS Office
of Technology Transfer
504 Fairfax Hall
Eastern Virginia Medical
School
721 Fairfax Ave.
Norfolk, VA 23507
(757) 446-5099
Adopted
November 14, 2006 by the Eastern Virginia Medical School Board of
Visitors
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