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).
I. PATENT POLICY
A. The policy of Eastern Virginia Medical School (EVMS) is to consider and, where deemed appropriate by EVMS Technology Transfer pursue the patenting, licensing, and commercialization of any Invention to which EVMS has or acquires ownership rights.
1. By adopting this Patent Policy EVMS intends to:
2. Stimulate basic and applied research within the educational, research, and clinical activities of the School and enhance collaboration.
3. Motivate discovery of practical applications of research by rewarding Inventors for their Inventions.
4. Evaluate all EVMS Inventions and acquired Independent Inventions for development, patentability, and licensing potential.
5. Insure that EVMS and EVMS Inventors receive equitable shares of the financial returns from Inventions resulting from EVMS Activity.
6. Coordinate and evaluate the use of EVMS Inventions in the public interest.
1. 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.
1. 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 EVMS 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.
2. The Director of EVMS 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.
1. Wherever they are used in this Patent Policy the following terms have the following meanings:
2. “EVMS Activity” is defined as any activity conducted under circumstances in which any one or more of the following conditions are present.
a) 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
b) 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
c) 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.
3. “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 EVMS Technology Transfer whose determinations with regard to EVMS Expenses shall be conclusive.
4. “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.
5. “EVMS Inventor” is defined as an EVMS Member who invents, discovers, conceives, creates, makes or reduces to practice any Invention.
6. “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.
7. “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.
8. “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.
9. “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.
10. “Invention Assignment Form is defined as the form required to be filed with EVMS Technology Transfer, which assigns each EVMS Invention to EVMS.
11. “Invention Disclosure Form is defined as the form required to be filed with EVMS Technology Transfer after any Invention is identified by an EVMS Member.
12. “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.
13. “Inventor” is defined as any person who invents, discovers, conceives, creates, makes or reduces to practice any Invention.
14. “Net Invention Proceeds” is defined, with respect to any Invention, as gross Invention Income less EVMS Expenses.
F. Assignments and Disclosures
1. 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 EVMS Technology Transfer, and shall be assigned to EVMS using an Invention Assignment Form prescribed by EVMS Technology Transfer.
2. Within thirty (30) days after any Invention is identified by its EVMS Inventor(s), the EVMS Inventor(s) shall notify EVMS 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.
3. 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.
4. 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).
5. At any time after the filing of the Invention Disclosure Form, EVMS Inventors may submit a directive to EVMS Technology Transfer that is contrary to the initial Invention Disclosure Form and which modifies the desired sharing of Net Invention Proceeds.
6. Within thirty (30) days of the filing of an Invention Disclosure Form, EVMS Technology Transfer will notify the EVMS Inventors of its decision whether the Invention is an EVMS Invention. If EVMS 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 EVMS Technology Transfer that the Invention is an EVMS Invention, by executing and filing with EVMS 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.
7. 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 EVMS Technology Transfer. Disagreement with any such determination by EVMS Technology Transfer must be noted by the Inventor(s) in writing to EVMS 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.
8. 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.
9. Following its receipt of the Invention Assignment Form for any EVMS Invention, EVMS 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 EVMS Technology Transfer deems appropriate. EVMS 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.
10. After evaluation of the EVMS Invention, if the decision to retain the assignment of any Invention is made by EVMS Technology Transfer, then EVMS 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). EVMS 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 EVMS Technology Transfer may deem appropriate to promote and exploit any assigned Invention.
11. If after the evaluation of the EVMS Invention the decision to not retain the assignment of any Invention is made by EVMS Technology Transfer, EVMS Technology Transfer shall reassign such EVMS Invention to the assigning Inventor(s). If EVMS makes an election to reassign, EVMS Technology Transfer will give the Inventors(s) written notice of this decision within ninety (90) days after submission to EVMS 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 EVMS Technology Transfer, in which event the Inventor(s) shall be notified in writing of the extension.
12. 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.
13. 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 EVMS Technology Transfer by filing updated Invention Disclosure and Invention Assignment Forms with EVMS Technology Transfer.
14. If EVMS Technology Transfer deems it appropriate at any time with respect to any EVMS Invention, EVMS 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, EVMS 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 EVMS 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.
15. 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 EVMS 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.
16. 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 EVMS 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 EVMS Technology Transfer.
G. Distribution of Income
1. 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.
2. 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)
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.
4. The Office of Financial Services and EVMS 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.
5. 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.
6. 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.
7. 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.
8. 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.
H. Contracts and Grants
1. 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.
2. 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 EVMS 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 EVMS Technology Transfer.
3. 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 EVMS Technology Transfer. Any sponsor must pay a competitive price for the use of the Invention, which shall be determined by EVMS Technology Transfer at the time the technology is available for use and not earlier.
4. 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 EVMS Technology Transfer, but not independently.
5. 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 EVMS Technology Transfer, with the concurrence of EVMS’ President, after review of the facts underlying such relationships.
II. COPYRIGHT POLICY
A. 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.
B. 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:
1. “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.
2. “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:
a) Waiver of fees normally required to use specialized EVMS resources or facilities, such as equipment, production facilities, service laboratories, specialized computing resources, and studios;
b) 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.
d) 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.
3. “Faculty Member” is defined as any full-time or part-time EVMS faculty employee.
4. “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.
5. “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.
6. “Student” is defined as any EVMS student, resident, fellow or trainee.
7. “Student Works” are defined as papers, theses, dissertations, artistic and musical works, and other creative works made by Students.
8. “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.
9. “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.
a) “Works Made for Hire” are defined as:
b) Any work prepared by a Non-Faculty Employee within the scope of his or her employment;
c) 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
d) Any work produced for EVMS by an independent contractor.
C. Works Created by Faculty Members
1. Traditional Non-Directed Works.
b) 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.
c) 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.
d) 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.
e) 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 EVMS 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 EVMS Technology Transfer, which will include provisions outlining the commercialization responsibilities of EVMS and a mechanism for the sharing of commercial proceeds with the creator.
f) 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.
D. Traditional Non-Directed Works Involving Exceptional Use of EVMS Resources.
1. 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.
2. 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.
3. 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:
a) 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
b) If commercialization of the work generates income, (a) the creator shall reimburse EVMS for the Exceptional Use of EVMS Resources involved in creation of the work, and (b) the creator shall share income from such commercialization with EVMS in an amount to be negotiated between the creator and EVMS Technology Transfer. Proceeds to EVMS from commercialization shall be allocated as directed by EVMS’ President or his designee.
4. 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, EVMS 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.
5. 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 3.2 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.
E. Directed Works.
1. 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.
2. 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 2.2-2.5 above.
3. 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.
4. Sponsored or Externally Contracted Works.
(1) 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.
(2) 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.
(3) 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 EVMS 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, EVMS 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.
b) 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 2.2-2.5 above.
F. Works Created by Non-Faculty Employees.
1. 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:
a) 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;
b) EVMS ownership is waived by the President or his designee; or
c) The work is a Traditional Non-Directed Work for which EVMS 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).
G. Works Created by Independent Contractors.
1. 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 EVMS Technology Transfer.
H. Works Created by EVMS Students.
1. Ownership and Use.
a) Students shall own copyrights in Student Works except in the following cases:
b) 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 1.2 above.
c) EVMS shall own the copyright in any Student Work that is a Sponsored or Externally Contracted Work.
d) 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 3.1 above applies.
2. 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. EVMS 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 EVMS 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.
B. 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.
C. Questions of interpretation and disputes arising under this Intellectual Property Policy shall be submitted in writing to EVMS 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 EVMS 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.
D. EVMS 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 EVMS 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.
E. 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 EVMS 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. EVMS 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.
F. 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.