Board Policy 210.1
- Patent & Copyright Policy
- Preamble
- Definitions
- Statement of Policy
- Applicability of Policy
- Obligations of Inventors and
Waiver and Notice Rights
- Distribution of Revenues
- Sponsored Research
- Publication Rights
- Copyrights and Computer Software
- Patent and Copyright Policy Administration
- University Patent and Copyright Committee
- Campus Patent and Copyright Committees
- General Responsibilities
- Committee Procedure
I. Patent and Copyright
Policy
A. Preamble
As a state-supported institution of higher learning,
the University of Arkansas has a responsibility for and an interest
in the advancement of knowledge and creative work that will enhance
its educational mission and promote the economic and social welfare
of the public it serves, particularly the people of the State of Arkansas.
This responsibility and interest are advanced by engaging in research,
the results of which may, on occasion, have commercial applications
which are patentable or copyrightable. While Inventions and copyrightable
works are not the primary objectives of University Research, when they
occur the University has the responsibility of insuring that such Inventions
and Works are used and controlled in a manner that benefits the public,
the Inventor or Author and the University to the fullest extent possible.
To achieve this purpose, the University adopts
this policy to meet the following objectives:
- Assist the faculty, students, and staff in matters related to
Inventions, patents, and copyrights and provide an environment that
will encourage the disclosure and development of meaningful Inventions
and Works;
- Obtain the proper benefits for Inventors and Authors and for the
University from commercial applications of University Research and
apply funds accruing to the University from these applications to
the support of research and other scholarly activities at the University;
- Encourage and facilitate collaborations with sponsors of University
Research by appropriately allocating the rights to Inventions and
Works which result from Sponsored Research consistent with federal
laws; and
- Determine the rights and interests of all parties in University
Research and Sponsored Research according to established, uniform
procedures.
For purposes of this policy and of Board
Policy 210.2, Copyright in Distance Learning, the University of Arkansas
shall mean and refer to the following principal campus units, divisions
and administrative units: The University of Arkansas, Fayetteville;
The University of Arkansas for Medical Sciences (including the Area
Health Education Centers); The University of Arkansas at Little Rock;
The University of Arkansas at Monticello; The University of Arkansas
at Pine Bluff; the University of Arkansas Community College at Batesville;
Cossatot Community College of the University of Arkansas; the University
of Arkansas Community College at Hope; the University of Arkansas
Community College at Morrilton; Phillips Community College of the
University of Arkansas; Division of Agriculture; Arkansas Archeological
Survey; the Criminal Justice Institute; the Cammack Campus; and the
System Administration. These educational and administrative units,
together with certain authorized adjuncts to each and those campuses
or units later added by merger or otherwise, constitute the University
of Arkansas for which the Board of Trustees is the governing Board
of control and are also referred to collectively as the University
of Arkansas System
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B. Definitions
The following definitions are employed in interpreting
and implementing this policy:
- "University" means the University of Arkansas and any
entity or activity under the authority of the Board of Trustees of
the University of Arkansas.
- "University Research" means any research or development
activity which is directly related to the duties and responsibilities
for which a person has been compensated by or through the University
or for which facilities owned, operated, or controlled by the University
are used.
- "Sponsored Research" means University Research for which
the University has received external support. (For purposes of this
policy, external support includes funds received by the University
as part of a lease agreement.)
- "Invention" refers to any material capable of legal protection
arising out of University Research and includes any discovery, invention,
process, know-how, design, model, computer software (if patentable),
strain, variety, or culture of an organism, or portion, modification,
translation, or extension of these items but excludes Works as defined
hereinafter which are not patentable. It includes marks used in connection
with these. (The term "mark" refers to trademarks, service
marks, collective marks, and certification marks.) It also includes
tangible research property, i.e., tangible items produced in the
course of research such as, but not limited to, e.g., biological
materials, engineering drawings, integrated circuit chips, computer
databases, prototype devices, circuit diagrams, and equipment. (Items
of tangible research property may be associated with one or more
intangible properties such as patents, copyrights, and trademarks.)
- "Inventor" means a person who creates, develops or discovers
an Invention and includes the definition of "inventor" used
in United States Patent Law.
- "Work" means an original work of authorship arising out
of University Research which is protectable by copyright. It includes
books, journals, software, computer programs, musical works, dramatic
works, videos, multimedia products, sound recordings, pictorial and
graphical works and other similar works.
- "Author" means a person who develops or creates a Work
and includes the definition of "author" used in the United
States Copyright Act. The University may also be an Author under
certain circumstances such as when a Work constitutes a "University
Work."
- "University Work" means a Work created specifically for
institutional purposes in the course of a person's employment with
the University.
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C. Statement
of Policy
- It shall be the policy of the University to acquire and retain
legal title to all Inventions created by any person or persons to
whom this policy is applicable. This policy is established in furtherance
of the commitment of the University to the widest possible distribution
of the benefits of University Research, the protection of Inventions
resulting from such research, and the development of Inventions for
the public good.
- Inventors shall retain rights in Inventions which the University
has chosen not to claim under this policy or pledged to a third party
as a result of a grant, contract, cooperative agreement, or other
Sponsored Research agreement.
- Rights to Works shall be determined according to the provisions
of this policy which apply to copyrights.
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D. Applicability
of Policy
- This policy shall apply to all persons employed, compensated or
appointed by the University and to anyone using facilities owned,
operated, or controlled by the University. It shall also apply to
all Inventions and Works financed, in whole or in part, from funds
under the control of the University.
- Employees engaged in external consulting work or business are
responsible for ensuring that agreements emanating from such work
are not in conflict with this policy or with contractual commitments
of the University. Such employees should provide affirmative notice
to the other parties to such agreements, informing them of the obligations
of the employees to the University and the possible applicability
of this policy to such agreements.
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E. Obligations
of Inventors and Waiver and Notice Rights
- Disclosure. All persons to whom this policy is applicable shall
furnish to the University a full and complete disclosure of any Invention
promptly after it is created or conceived or first reduced to practice.
Such persons shall cooperate in a timely and professional manner
with the University or with patent or other counsel in protecting
Inventions and perform all acts necessary for the University to fulfill
its obligations under University Research, including the execution
of assignments. The University may require technical advice and assistance
from Inventors in the development and licensing of their Inventions.
- Assignment. All persons to whom this policy is applicable shall,
upon request, assign all Inventions and patents to the University,
except those which might be owned by third parties pursuant to Sponsored
Research agreements and those which might result from independent
work or permissible consulting activities without use of facilities
owned, operated, or controlled by the University.
- Waiver. If the University chooses not to protect or commercialize
an Invention, the University may, at its sole discretion, waive its
rights to the Invention and assign ownership of the Invention to
the Inventor as allowed by law, subject to the rights of third parties
and to the reservation by the University of a license to practice
the Invention for University purposes. The minimum terms of such
license shall grant the University the right to use the Invention
in its internally administered programs of teaching, research, and
public service on a perpetual royalty-free basis. The University
may retain more than the minimum license rights and the assignment
or license may be subject to additional terms and conditions, such
as revenue sharing with the University or reimbursements of the costs
of statutory protection, when justified by the circumstances of development.
- Notice. The University will inform Inventors in a timely manner
of its substantive decisions regarding protection, commercialization
and/or disposition of Inventions which are disclosed under this policy.
The initial notice of such a decision to an Inventor should be given
no later than six (6) months after disclosure of the Invention to
the University.
- Independently-Owned Patents. The University may accept assignment
of patents or other intellectual property from parties to whom this
policy does not apply provided that such action is determined to
be consistent with the public interest and educational mission of
the University. The patents or other intellectual property so accepted
shall be administered in a manner consistent with the administration
of Inventions under this policy.
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F. Distribution of
Revenues
- In consideration of the disclosure and assignment of Inventions,
the Inventor, or the Inventor's heirs, successors, or assigns shall
receive fifty percent (50%) of the first two hundred thousand dollars
($200,000) of Net Revenues from the commercialization of an Invention.
The remaining fifty percent (50%) shall be distributed to the University
in the following manner: forty-five percent (45%) to the chief executive
officer of the Inventor's campus or division for distribution within
the campus or division for patent administration and research purposes;
and five percent (5%) to a fund to be managed and distributed by
the University of Arkansas for patent administration and research
purposes. Any Net Revenues above $200,000 shall be distributed as
follows: (a) thirty-five percent (35%) to the Inventor or the Inventor's
heirs, successors, or assigns; (b) sixty percent (60%) to the chief
executive officer of the Inventor's campus or division for distribution
within the campus or division for patent administration and research
purposes; and (c) five percent (5%) to a fund to be managed and distributed
by the University for patent administration and research purposes.
If there are joint Inventors, Net Revenues shall be distributed equally
among them absent a mutual agreement to the contrary.
- "Net Revenues" shall mean for this purpose all Revenues
received by the University from the commercialization of Inventions
and Works minus the costs incurred by the University for patenting,
licensing, and the protection and maintenance of patent and copyright
rights and other documented costs incurred by the University directly
related to commercialization.
- "Revenues" shall mean cash from payments including, but
not limited to, royalties, option fees, license fees or from the
sale of Equity but shall not include research support received by
the University as part of the consideration for licensing an Invention
or Work in lieu of an option free, license fee or royalty. Inventors
shall have no entitlement to a share of such research support as
personal income.
- Net Revenues will be distributed normally on an annual basis,
with payments being made within sixty (60) days after the end of
a calendar year in which Net Revenues from the Invention or work
have accrued.
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G.
Equity
- In agreements with business entities relating to rights in Inventions
and Works, the University may receive Equity as partial or total
compensation for the rights conveyed. In any such instance, the University
shall share any such Equity with the Inventor or Author in the same
manner as Net Revenue is shared pursuant to Section I.F above. Consistent
with Arkansas Code ' 19-11-717 and campus or unit conflict of interest
policies, and subject to review and approval by the Chancellor or
other chief executive officer of the unit of the University, the
President and the Board of Trustees, Inventors or Authors may hold
direct, individual Equity in a business entity that has an agreement
with the University relating to the commercialization of Inventions
or Works. The University, in its sole discretion, may require an
Inventor or Author who holds direct, individual Equity in such a
business entity to waive any right which the Inventor or Author may
have to share in Equity and/or Net Revenues through the University
under Section I.F above.
- Dividend income and income from the sale or disposition of Equity
held by the University pursuant to agreements relating to the commercialization
of Inventions or Works shall belong to the University and be distributed
in accordance with the provisions of Section I.F unless an Inventor
or Author has been required to waive such rights under Section I.G.1
above. Such Equity shall be sold or disposed of at a time and in
a manner selected solely at the discretion of the University, subject
to restrictions imposed by law, the underwriters of the stock issuance
or the business entity. Dividend income and income from the sale
or disposition of Equity held directly by an individual Inventor
or Author shall belong to the Inventor or Author and may be sold
or disposed of at a time and in a manner selected solely at the discretion
of the Inventor or Author, subject to restrictions imposed by law,
the underwriters of the stock issuance or the business entity.
- An Inventor or Author shall not serve as a member of the board
of directors or other governing board or as an officer or an employee
(other than as a consultant) of a business entity that has an agreement
with the University relating to the commercialization of Inventions
or Works and in which the University has Equity without prior review
and approval by the Chancellor or the chief executive officer of
the unit of the University. When requested and authorized by the
University, an employee may serve on behalf of the University as
a member of the board of directors or other governing board of a
business entity that has an agreement with the University relating
to the commercialization of Inventions or Works and in which the
University has Equity.
- "Equity" shall include, but not be limited to, stock,
securities, stock options, warrants, buildings, real or personal
property, or other non-cash consideration. Inventors shall not be
entitled to receive a share of the subset of University-owned Equity
which consists of buildings, real or personal property, or other
non-cash consideration.
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H. Sponsored
Research
Rights to Inventions and Works made under Sponsored
Research are determined by the contractual or grant agreements between
the University and the sponsor. Except in limited circumstances where
the University determines that the waiver of such rights is appropriate
in fulfilling its educational mission, allocation of rights to Inventions
and Works made under Sponsored Research shall be consistent with this
policy.
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I. Publication Rights
In all Sponsored Research, the right shall be
reserved for Inventors, Authors and the University to publish and disseminate
the knowledge gained and the results obtained. The University may grant
a sponsor a limited review period (normally thirty (30) days) prior
to submission for publication in order to protect proprietary information
and any technology which may be the subject of a patent application.
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J. Copyrights
and Computer Software
- Copyrights to, and royalties from, textbooks, reference works,
submissions to scientific journals, and other Works (excluding computer
software and Technology Enhanced Course Materials) produced by persons
to whom this policy is applicable as a part of their normal teaching,
scholarly and aesthetic activities at the University or on approved
off-campus duty assignments, and which do not result from projects
specifically funded in whole or in part by the University or by a
sponsor of the University, shall belong to the Author or Authors
and may be retained or assigned by them. If, on the other hand, the
University provides its own funds, or a sponsor's funds, to finance
(in whole or in part) a specific research or educational project
(herein "commissioned Works") and such Works are produced
by persons to whom this policy is applicable as a result of the project
or the Works constitute University Works, ownership of copyrights
and Revenue rights therein shall reside in the University. Revenues
generated by the commercialization of such Works may be shared with
the Authors or creators according to Section I.F of this policy or
on other terms as set by the University in its sole discretion.
- All rights to computer software, including computer programs,
computer data bases, and associated documentation (herein "computer
software"), whether copyrightable or patentable, produced by
any person to whom this policy is applicable shall belong to the
University, with the exception of software which constitutes Technology
Enhanced Course Materials governed by Board Policy 210.2. Revenues
generated by the commercialization of computer software shall be
shared with the Authors/Inventors according to Section I.F of this
policy. Computer software produced on an Author's own time or through
permissible consulting activities and without the use of facilities
owned, operated, or controlled by the University shall belong to
the Author and all rights thereto may be retained or assigned by
the Author.
- It shall be the responsibility of the Author or creator to notify
the University of the development of all commissioned Works, University
Works and computer software.
II. Patent and Copyright
Policy Administration
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A. University Patent
and Copyright Committee
The President shall appoint a University
Patent and Copyright Committee of nine (9) members with one (1) representative
from each of the four (4) four-year campuses, the Medical Sciences
campus and the Division of Agriculture and a single representative
agreed upon by a consensus of the two-year campuses and other units
of the University. The specific representative of the two-year campuses
and other units of the University may be selected on a rotating basis
with a limit on the number of consecutive annual terms that a person
from any one of such entities may serve. The Vice President for Finance
and Administration and the Associate Vice President for Legal Affairs
shall be ex officio members of the Committee. The General Counsel
shall serve as legal advisor to the Committee. A chairman shall be
elected from among the membership of the Committee. The Committee
shall meet at least annually and at other times upon the request
of the chairman or the President. The Committee shall be responsible
for:
- Reviewing the operation of the University Patent and Copyright
Policy and proposing policy changes if needed;
- Reviewing proposed exceptions to the established policy;
- Resolving issues referred by campus patent and copyright committees;
- Advising the President on patent and copyright policy matters
as requested.
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B. Campus Patent
and Copyright Committees
- Each campus of the University shall establish a committee composed
of faculty and staff which shall be responsible for implementing
the University Patent and Copyright Policy on the particular campus.
Any campus which has received less than five (5) Invention disclosures
during a fiscal year shall not be required to establish or maintain
a committee and may request assistance from such committee of any
other campus in implementing this policy. The committees shall consist
of no less than five (5) members, appointed by the Chancellor or
chief executive officer, and shall meet no less than on a quarterly
basis. A chairman shall be elected from among the membership of the
committees.
- For the Fayetteville campus only, the committee shall be composed
of no less than eight (8) members; three (3) of which shall be appointed
from the Division of Agriculture by the Vice President for Agriculture.
Disclosures for patentable or copyrightable material emanating from
the Fayetteville campus and the Division of Agriculture shall be
administratively controlled by the Fayetteville campus committee.
- In matters of a substantive legal nature, the committees shall
seek the advice and assistance of the General Counsel and/or the
Associate Vice President for Legal Affairs.
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C. General
Responsibilities
The committee shall have the general responsibility
of:
- Reviewing Invention disclosures submitted to the University for
patenting consideration;
- Evaluating Inventions for patentability, as well as scientific
merit and practical application;
- Appointing ad hoc technical subcommittees to assist the committee
in evaluating Inventions;
- Seeking University approval of outside technical assistance in
evaluating Inventions;
- Determining patent or related property rights or equities held
by the University in an Invention or Work;
- Providing scientific and technical assistance to approved patent
management organizations to achieve the realization of full benefits
of University Inventions that have commercial potential;
- Seeking initial resolution of campus disputes relating to rights
in Inventions and Works; and
- Reviewing Works (including computer software) submitted for copyright
consideration.
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D.
Committee Procedure
Normally within thirty (30) days of the receipt
of an Invention disclosure, the committee will submit to the Chancellor
or other chief executive officer or the Vice President for Agriculture
its recommendation regarding the disposition of an Invention. Such
recommendation shall be forwarded within ten (10) days of receipt to
the President. In most instances, the recommendation will consist of
one of the following:
- University should proceed to secure a patent or register a copyright
or a trademark;
- The matter should be submitted to a patent management organization
with which the University has a contract for review, report, and
possible management by the patent management organization;
- Negotiations should be entered into with industry whereby continued
research and development within the University will be funded pursuant
to contract with a corporation or firm which would receive certain
rights regarding the Invention in return for Revenue or, under limited
circumstances, an assignment in return for payment of additional
sums;
- Commercial or education values involved are so slight and/or incompatible
with the interests of the University as to indicate that the University
should relinquish any property interest to the Inventor or Author
or his/her assigns.
October 2, 2001 (Revised)
June 13, 1986 (Revised)
June 18, 1982 (Revised)
November 18, 1977 (Revised)
May 18, 1973 (Revised)
September 29, 1967 (Revised)
October 7, 1996 (Revised)
May 17, 1945
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