1.09 Intellectual Property

Last Revised:27 February 2020 Refer Questions to: Office of the Provost

Scope

This Policy applies to all Gallaudet University (the “University”) full-time and part-time faculty, visiting faculty, teachers, staff and other employees, as well as students –including undergraduate and graduate students, and postdoctoral fellows, student employees, and anyone retained by the University (collectively, the “Gallaudet Community”) to create Intellectual Property as that term is defined in Attachment A. A department intending to engage an individual as an independent contractor to create Intellectual Property is responsible for ensuring compliance with this Policy and its implementing procedures prior to the start of any work or performance of services.

Policy

The University supports and encourages its faculty, staff, and students in their creation and dissemination of innovative new works that further the University’s mission. This Policy is intended to create a balance of rights and responsibilities that benefit both innovators and the University, and also, to create clarity and consistency around the University’s existing norms regarding the ownership and use of different kinds of intellectual property created by individuals in the Gallaudet Community. Based on the terms defined in Attachment A, it is generally the University’s policy that:

1. All Administrative Materials are the property of the University unless otherwise specified.
2. Traditional Scholarship is owned by the creator(s) and such creators are encouraged to retain nonprofit educational use whenever possible.
3. Generally, New Media is also owned by its creator(s). The University retains a permanent, irrevocable, non-exclusive, no-cost license of such New Media to use, reuse, reproduce, display, distribute, license or sub-license and to make derivative works.
4. Faculty members own the copyright in the Course Content they create and grant a non-exclusive, perpetual license to the University and its students to use and modify – but not to publish or commercialize – such content.
5. All intellectual property rights in Courseware developed by the University is owned by the University, and Faculty members retain the right to use Courseware in connection with their teaching activities at the University. In the event that Courseware is licensed by the University from a third-party provider, use by Faculty members is subject to the terms of those licenses.
6. A Student owns any works he or she creates individually in his or her capacity as a student, including but not limited to papers, articles, presentations, reports or STEM related works.
7. A Student owns any contributions he or she makes to in-person or online classroom sessions, classroom projects, forums or discussion groups, and grant to course instructors and the University a perpetual, royalty-free, irrevocable license to use such contributions.
8. Ownership and use rights for intellectual property created or developed for a sponsored program or a grant will be determined in accordance with the terms of that agreement or grant as well as any applicable federal law (The University reserves the right to review and re-negotiate such terms if those terms compromise or jeopardize the University’s own interests).

Further, Covered Members should notify the University’s dedicated point of contact of each Covered Invention by following the University’s disclosure process described in the procedures below as soon as possible after developing an invention and before publicly disclosing such invention. The University has discretion to decide whether each determined inventor needs to assign to the University all (or a portion) of his/her right, title, and interest in the Covered Invention, and to determine whether it will file a patent application (including commercialization) on a Covered Invention or whether it will release and/or assign certain rights to the Inventor. This Policy should be interpreted in conjunction with the University’s other policies, as well as any related or relevant provisions of the University’s faculty, student or staff handbooks. Any laws or contractual terms binding on the University will take precedence over this Policy. The procedures following this Policy apply to all members of the Gallaudet Community engaging in projects and partnerships – both within and outside the University – relating to intellectual property ownership and use. Approved by: Gallaudet University Board of Trustees

Procedures

I. Ownership and Use of Intellectual Property Section I addresses ownership and use of different kinds of intellectual property, and the different categories of creators involved. For all members of the Gallaudet Community, individuals are expected to acknowledge assistance and/or co-authorship where appropriate.

1. Traditional Scholarship

The University’s general policy is that Traditional Scholarship is owned by the creator(s). This means that the creators of scholarly works – whether faculty, students or staff – retain any copyright, trademark and patent rights in their scholarly works and the right to receive any revenue generated by the works. Ownership rights are subject to any contracts or agreements that the creator may enter into, such as with the University for Exceptional Resources or with third parties, such as with a publisher or academic journal. Gallaudet Community members are encouraged, but not required, to retain nonprofit educational use rights in such publications for the University whenever possible.

2. New Media

The University’s general policy on New Media is that New Media is owned by its creators but that the University retains a permanent, irrevocable, non-exclusive, no-cost license to use, reuse, reproduce, display, distribute, license or sub-license and make derivative works of the New Media. The University asserts a license in New Media because multiple contributors to New Media can make ownership designations or divisions difficult, especially when multiple people contribute over time to an ongoing project. Additionally, where software can include both potentially copyrighted and patent-protected elements, the University must have a stake to effectively enforce and protect these creations for the benefit of their creators and the University. In addition, there are often more significant University resources involved in the creation of New Media than in Traditional Scholarship. Creators of New Media should discuss with the Provost or its designee, preferably in advance, any situations where they wish to claim exclusive ownership of New Media. If the creator wishes to make New Media available outside of the Gallaudet Community, e.g., via an open source or creative commons license, this possibility should also be discussed in advance with the Provost or its designee, and where appropriate, the Provost or its designee will consult with the Office of the General Counsel.

3. Course Content

Faculty members own the copyright in the Course Content they create. If more than one Faculty member contributes to Course Content, then that Course Content is a joint work, as that term is defined under copyright law. If Course Content is developed and changed over time by one or more Faculty members for multiple offerings of the same or related courses, then the copyright law governing derivative works will apply. The University has an Operational and Identity Interest in its ongoing instructional operations. By teaching at the University, Faculty members grant a non-exclusive, perpetual license to the University to use and modify – but not publish or commercialize – their Course Content. If a Faculty member is assigning ownership of Course Content or Materials to the University in exchange for payment above and outside of the Faculty member’s normal compensation, the University and Faculty member will enter into a written agreement detailing the terms of that assignment.

4. Courseware

All intellectual property rights in courseware developed by the University is owned by the University. Faculty members retain the right to use Courseware in connection with their teaching activities at the University. If Courseware is licensed by the University from a third-party provider, use by Faculty members is subject to the terms of those licenses.

5. Administrative Materials

All Administrative Materials are assumed to include an Identity or Operational Interest of the University unless otherwise specified, and therefore are the property of the University. For example, the University owns administrative work, such as committee reports or departmental records. If a Faculty member or Researcher contributes to a University publication, such as a course catalog or alumni magazine, then the University will own that contribution. The Faculty member or Researcher who creates an Administrative Material may negotiate with the University to be able to use or reproduce it for his or her own purposes. The University owns all rights in Administrative Materials created by Staff members in the scope of their employment. Intellectual property created outside the scope of employment belongs to that Staff member. Ownership of Administrative Materials with a Contractual Interest will be governed by the terms of the relevant contract.

6. Student Works

A Student owns any works he or she creates in his or her capacity as a student, including but not limited to papers, articles, presentations, reports or STEM related works. A Student owns any contributions he or she makes to in-person or online classroom sessions, forums or discussion groups. Students grant to course instructors and the University a perpetual, royalty-free, irrevocable license to use the Student’s contributions to any classroom forums or discussions for other nonprofit educational purposes. Students who allow themselves to be filmed or photographed by University personnel in connection with academic courses or other University-related activities or events are implicitly granting a perpetual, royalty-free license to the University to use that footage for University-related projects and promotions. Students have a non-exclusive, limited right to use any Course Materials in the context of participating as a registered student in a Course at the University. However, Course Materials are owned by the Faculty members who created them (and/or the University) and may not be copied or distributed by Students without the express, written permission of their owners. Any evidence that Students have copied or distributed Course Materials for any purpose other than participating in the Course is both a violation of the University’s honor code and of copyright law.

7. Grants, Sponsored Works, Specially Funded Works and Supervised Research Projects

If intellectual property is created or developed pursuant to an agreement for sponsored research or any other written agreement, including an agreement between the creator(s) and the University, then the ownership and use rights for that intellectual property will be determined in accordance with the terms of that agreement or grant as well as any applicable federal law. The Office of Sponsored Programs should be consulted in advance of any grant applications with intellectual property restrictions as some grants and contracts from government agencies or private sponsors require that intellectual property rights be granted to the University. The Office of Sponsored Programs will work with faculty members to make sure that any such intellectual property restrictions of the grantor or sponsor are observed. If a sponsored program or grant involves collaborators at other institutions or companies, any agreement between the parties should address how those respective institutions’ intellectual property policies will interact with the requirements of the sponsored program or grant. Generally, the terms of any such sponsored program or grant will take precedence over any conflicting language in this Policy or the policies of any other contracting entity, provided that the terms of the agreement do not compromise or jeopardize the University’s own interests. In engaging in outside contracts, grants, or other outside employment, Faculty members are bound by faculty teaching requirements and related responsibilities as set forth in the Faculty Handbook, University policy and any applicable law. Staff members are also bound by University policy and applicable law. II. Patents: Special Considerations Every Member of the University shall participate in the patent protection process described in this Section II in connection with any Inventions developed (in whole or in part) by such Member in any of the following circumstances:

• for any Inventions that are owned by the University, as specified by this policy; and
• for any Inventions that are required to be patented or evaluated for patenting, as required by any law, regulation, contract, or other legal requirement.

A Member who falls into one of the circumstances described above is a “Covered Member.” An Invention that satisfies the conditions described above is a “Covered Invention.” Covered Members should notify the University’s dedicated point of contact, the Director of Gallaudet Innovation and Entrepreneurship Institute (GIEI) of each Covered Invention by following the University’s disclosure process as soon as possible after developing the Invention, and before publicly disclosing the Invention, such as publishing a paper describing the Invention, submitting such a paper for publication, giving a presentation about the Invention, or releasing a product containing the Invention (even if that product is made available for free or is not complete). The University will make a disclosure form available that Members can use to disclose their Inventions to the University. The University will make efforts to reply to disclosures of Inventions submitted by Members within a reasonable amount of time. After the University reviews the disclosure document, it will determine the inventor(s) of the Covered Invention. The University has discretion to decide whether each determined inventor needs to assign to the University all (or a portion) of his/her right, title, and interest in the Covered Invention, in consultation with the inventor(s). The University has sole discretion to determine whether it will file a patent application on a Covered Invention. Filing determinations may be made, for example, on the basis of Commercial Interests in the Covered Invention, obligations to and rights of third parties, or for other reasons which the University, deems appropriate. The Inventor(s) of a Covered Invention will cooperate in the patenting process as the University may require, with the University bearing all costs of the patenting process. The University has sole discretion to commercialize a Covered Invention, but shall take into account the public interest and the concerns, if any, of the Inventors. If a Covered Invention is subject to an external agreement with a third party (for example, the federal government or other funding sponsor), the University must comply with that agreement when making commercialization decisions. The University will make reasonable efforts to keep the Inventor(s) informed of its commercialization efforts. If the University’s efforts to commercialize a Covered Invention generates royalties, the University will share those royalties with the Inventor(s) in accordance with this Policy.Unless otherwise agreed in a writing between the Inventor(s) and the University, any royalties generated (after reimbursement to the University of all related out-of-pocket expenses) will be divided as follows: (i) one-third (⅓) to the Inventor(s), divided equally among all Inventors unless otherwise agreed; (ii) one-third (⅓) to the department(s) of the Inventor(s), divided equally among all departments unless otherwise agreed; and one-third (⅓) to the University. If the University decides not to file a patent application on a Covered Invention or to permanently cease efforts to patent or maintain patent protection for a Covered Invention (such as abandoning a patent application or patent on a Covered Invention), the Inventor(s)may request a release of the Invention back to the Inventor. The University may in its discretion agree to release and assign, or release all of the University’s interests in the Invention to the Inventor(s)as agreed upon by the parties. Release of a Covered Invention may be conditioned upon, among other things, agreement by the Inventor(s) to one or more of the following:

1. To reimburse the University for all costs incurred by the University in connection with the Covered Invention, either upon release, or if and when the Inventor(s)receive income from the Invention, or at some other agreed-upon time.
2. To share with the University a percentage of the net income (i.e., income remaining from gross income after repayment of University costs above and the Inventor(s)’legal and licensing expenses) received by the Inventors from the Invention. Income subject to this revenue sharing provision includes equity received by Inventor’s consideration for the Invention but does not include financing received for purposes of research and development.
3. Upon request by the University, to report to the University regarding the Inventors’ efforts to commercialize the Invention and, at the University’s request, to reassign those Inventions which the Inventor(s) are not attempting to commercialize.
4. To fulfill any obligations that may exist to sponsors of the research that led to the Invention.
5. To grant back to the University an irrevocable, perpetual, royalty-free, nonexclusive, worldwide right and license to use the Invention for its research, education and clinical care purposes and a right to grant the same rights to other non-profit institutions.
6. To agree to such limitations on the University’s liability and indemnity provisions as the University may request.

The University presently has no office dedicated to technology development. Individual faculty or staff members interested in pursuing patent or licensing options for their intellectual property are encouraged to seek outside legal counsel to advise them on such questions. The Office of the Provost, the Office of Sponsored Programs and if appropriate, the Office of the General Counsel will provide any assistance they reasonably can to help creators navigate such questions and, as appropriate, identify outside assistance for such endeavors. Where appropriate, and at its discretion, the University will pay for outside legal assistance on intellectual property and commercialization matters. In certain situations, the creators of works may wish to transfer rights to the University in exchange for University assistance in developing, disseminating or protecting creations. Any such requests should be directed to the Provost and will be considered on a case-by-case basis. Any such arrangement must be documented in a written agreement between the parties. III. Resolution of Intellectual Property Ownership Questions or Disputes The preceding guidelines, together with the relevant elements of intellectual property law, should address the vast majority of questions related to ownership of intellectual property created within the Gallaudet Community. Under normal circumstances, the party or parties who hold the rights will decide how the intellectual property may be used and will receive any income associated with it. This Section III addresses those circumstances in which a question or dispute regarding intellectual property ownership and/or use cannot be resolved by this Policy.

1. Process for Resolving Intellectual Property Ownership Questions or Disputes

Any questions relating to the interpretation or application of this Policy should be directed to the Provost or its designee. In the event of a dispute or disagreement related to intellectual property created within the Gallaudet Community, the Provost or its designee will consult with the creator(s) as well as appropriate deans and administrative staff to reach an agreement or resolution regarding the ownership, use and development of the intellectual property. In all cases, the Provost or its designee will be guided by the principles set forth in this Policy together with relevant elements of intellectual property law, and the creator(s) will be given an opportunity to explain the situation and propose terms for resolution of ownership and use questions. If the parties cannot come to an agreement, the Provost or its designee, in consultation with the Office of the General Counsel will make a written determination.

2. Appeals

On receipt of a notice of appeal of a written determination regarding an intellectual property dispute, an ad hoc committee normally composed of Staff, Faculty and Student representatives – depending on the kind of Intellectual Property and issues involved – will be formed. The committee will review the Provost’s or its designee’s written determination, the positions of the Provost or its designee and the creator(s), and the relevant facts and circumstances, and will make a written recommendation to the Office of the General Counsel no later than sixty (60) days following the date or receipt of the notice of appeal. The Office of General Counsel, after review of the recommendation of the ad hoc committee, will issue a determination within thirty (30) days of receipt of the ad hoc committee’s recommendation. The Office of the General Counsel’s determination will be filed in the Office of the President, and a copy will be delivered to the Provost and the creator(s). The Office of the General Counsel’s determination will be final and binding upon the University and the creator(s).

3. Periodic Review

This Policy will be reviewed every three years by a review committee appointed by the Provost to determine whether it (i) is accomplishing its intended purposes, (ii) is in conformity with federal and state laws, including intellectual property laws; and (iii) is consistent with prevailing norms at comparable institutions. The review committee will make recommendations to the Provost, including specific recommendations regarding the establishment of offices or positions on campus to carry out the terms of this Policy. At any time, the Provost, in consultation with the Office of General Counsel, may make substantive changes to this Policy (with the approval of the Board of Trustees) and/or its implementing procedures where appropriate. Additionally, the Provost may make changes to this Policy to clarify its terms or make other minor amendments that are not substantive changes to the rights and obligations it sets forth, for example, to ensure reference that specific names of programs, departments, titles or cross references to other policies remain accurate.