Intellectual Property Policy
SUMMARY: This policy pertains to patents and copyrights as may result from work conducted under sponsored agreements. Also included in this policy is the statement on royalty-sharing as provided in the Patent Policy.
The University Research Council shall serve as a standing University Committee on Intellectual Property. The Council, which has representation from the principal faculties affected by policies in this area and which is chaired by a senior administrative officer of the University, is hereby charged with advising the Office for Sponsored Programs on matters of University policy in individual cases, and with recommending such changes in University policy as may from time to time be required.
- An employee of the University shall promptly and fully report to the University in a manner stipulated by the Office for Sponsored Programs any discovery, invention, possible invention, or potentially useful biological or chemical material the individual has made and has reason to believe might be useful, patentable, or otherwise protectable. This is to be done regardless of whether University funds or funds from an external source provided the immediate support for the work from which the invention resulted. Instructions for the proper method of reporting should be requested from the Office for Sponsored Programs. If the Director of the Office for Sponsored Programs (hereafter referred to as "the Director") determines that such discovery or invention or possible invention occurred within the scope of said member's research, teaching, or other University-related duties, then the following policy on patent rights shall apply.
- The Director shall determine whether or not to submit a patent disclosure for evaluation by an outside agent selected by the University and under the terms of a general agreement between such an agent and the University. The individual is expected to cooperate in every way necessary (but at no expense to the individual) with the University and the outside agent, including the assigning of any patent rights the individual may have, in order to permit the University and the outside agent to evaluate the discovery or invention and to pursue the appropriate steps to obtain a patent. Royalties or other income resulting from the discovery or invention shall be shared among the inventor, the University, and the outside agent. The Royalty-Sharing Policy shall set forth the distribution of income to be implemented after the University shall have complied with the terms of its agreement with the outside agent. The University's arrangement with the outside agent for handling patents shall reflect the importance of serving the public interest in patent matters.
- If the University elects within a reasonable time not to pursue or fails to pursue a patent, then the individual may elect to pursue the patenting and commercial introduction of a potential invention without assistance from the University. In this event, the Director must be so notified in writing and the plans for doing so briefly described. The Director shall notify the individual as to the University's intent with regard to the discovery or invention, including, if appropriate, the assignment of rights to the individual. An individual who obtains a patent, under the terms of this paragraph, without assistance from the University shall be entitled to all royalties and other income resulting therefrom. It is expected that in pursuing patents, individuals will make arrangements that best serve the public interest, and the Director will be available to advise individuals on this question.
- Notwithstanding paragraphs 1 and 2, whenever research or a related activity is subject to an agreement between an external sponsor and the University that contains restrictions as to the disposition of discoveries or inventions, any discoveries or inventions shall be handled in accordance with such agreement. In negotiating with sponsors, the Office of Research Administration and other representatives of the University should strive to obtain the greatest obtainable latitude and rights for the individual inventor and the University consistent with the public interest and this policy.
- Except as qualified below, a member of the University is entitled to ownership of copyright and royalties or other income derived from works, including books, films, cassettes, software, works of art, and other materials. It is expected that when entering into agreements for the publication and distribution of copyrighted materials individuals will make arrangements that best serve the public interest. It should also be noted that software in general is covered in the University's Policy on the Ownership of Software.
- Notwithstanding paragraph 1, immediately above, whenever research or a related activity is subject to an agreement between a sponsor and the University that contains restrictions concerning copyright or the use of copyrighted materials, all materials shall be handled in accordance with such agreement. In negotiating with sponsors, project directors and the University should strive to protect and advance the public interest as well as to obtain the greatest latitude and rights for the individual author and the University consistent with the public interest and this policy.
- Notwithstanding paragraph 1, immediately above, whenever copyrightable work is created by a member of the non-teaching staff as part of the individual's University responsibilities, the work shall be treated as a work-for-hire under the terms of the Copyright Act of 1976, and the ownership will ordinarily be retained by the University.
(applicable to Inventions, Patents, and Copyrights)
- The Principal Investigator shall be required to sign the Agreement on Intellectual property prior to the University's acceptance of a sponsored project award. In those cases in which the University is not required to sign an award document, the Principal Investigator's signed Agreement must be on file with the Office for Sponsored Programs prior to an account being established for the award. All participants in externally sponsored research will be required to sign the Agreement on Intellectual property before being permitted to participate on the sponsored project.
- In some situations, because of substantial University involvement, it may be appropriate to vary in favor of the University by explicit agreement between the University and an inventor or author (and an outside sponsor, if one is involved), the foregoing provisions concerning rights to obtain a patent or copyright or the rights to royalties or other income, or both. At the request of either the Director or the inventor or author, the University Research Council shall adjudicate such cases on an individual basis as expeditiously as possible. The timing of the University Research Council's adjudication must take into account the time limitations of federal law and other requirements as may have been agreed upon in a sponsored agreement under which the invention was discovered or other work was created in copyrightable form.
- In the absence of any agreement between the University and the individual under paragraph 1 (immediately above), and where there are significant additional costs to the University associated with an invention or work by an individual member of the University, the individual would be expected to reimburse the University for such additional costs. Significant additional costs are defined as contributions of University funds or resources well in excess of the norm incurred in the creation of an invention or copyrightable work or in seeking patent or copyright protection of such a discovery or work.
- In the case of sponsored works, the agreement with the sponsor shall provide either that the sponsor reimburse the University for its reasonable expenses and/or that the University shall have the right to recover its reasonable expenses, including charges for special equipment used, the cost of obtaining patent protection out of royalty income, unless the University, in exceptional cases in advance, agrees to waive a portion or all of such expenses for reasons of public policy, e.g. in the case of educational materials for disadvantaged children.
The net income (gross royalties, license fees and/or lump-sum payments minus administrative, licensing, legal, and other related expenses incurred by the University) resulting from an invention to which the University has taken title will be divided as follows:*
||Cumulative Net Income|
|First $50,000||Above $50,000|
|Inventor's Dep't||30% (15% + 15%)||40% (20% + 20%)|
- Half the Department's share is to be used as determined by the inventors so long as they remain at Boston College.
- The inventors' share will normally be shared equally among all inventors unless they agree otherwise.
- Inventors may arrange for their personal share to be retained by the University (e.g. to support their research).
- The inventors' share will continue even if the inventors have left Boston College.
- The portion of the Department's share under the inventor's control will normally follow an inventor who has transferred to another part of the University. However, it will not follow an inventor who has left the University.
- In cases of large sums of income, Deans and Departments are encouraged to arrange with the University for the capitalization of their shares to create an endowment for support of their activities.
- The Department's, Dean's and Academic Vice President's shares will be used to support excellence in teaching and research as well as technology transfer programs which may serve to maximize the effect of such income.
* The definition of "net income" does not include option payments obtained from Research Corporation Technologies as a result of invention disclosures submitted to that organization. Such payments will be reserved for the inventor's use in a separate University account.