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(http://ozone.ohsu.edu/policy/)
INTELLECTUAL
PROPERTY AND ROYALTY DISTRIBUTION
No.
04-50-001
Effective
Date: Oct. 25, 1996; Revised July 8, 1999; June 5, 2002
1.
General Policy
OHSU
encourages creation of intellectual property by its employees and
agents consistent with their employment or other role for the University.
In its role as steward over the use of public resources, it seeks
to prudently manage such property for the benefit of the public.
In this policy, OHSU outlines the responsibilities, rights and privileges
of employees and agents, while conserving University benefits which
may flow from intellectual property development.
2.
Responsibilities of Employees and Agents
A.
As a condition of employment or service to OHSU, all OHSU employees
and agents (including volunteers) shall assign to OHSU all right,
title and interest to intellectual property, including but not
limited to:
Any
invention or improvement in technology conceived or developed
using OHSU facilities, personnel, information, or other resources;
Educational,
professional or tangible materials, whether or not registered
for copyright or trademark, that result from the instructional,
research, or public service activities of OHSU; and
Data
developed using OHSU facilities, personnel, or other resources
or resulting from the instructional, research, patient care or
other missions and activities of OHSU.
B.
Notwithstanding the requirements of paragraph A and as further
defined, developed, and limited by the Vice President for Research,
the ownership rights to educational and professional material
in the form of books or other scholarly works developed by an
employee, either in conjunction with or aside from the employee's
employment, shall accrue to the author, unless the material is
prepared in compliance with contractual provisions or as a specific
work assignment, or institutional resources were utilized. An
employee's obligation to produce scholarly works shall not be
considered a specific institution assignment.
3.
Employee Rights and Privileges
A.
Employees and agents shall be eligible to share in Net Royalty
Income, if any, from intellectual property pursuant to section
4 of this policy.
B.
Following a request by an affected employee or agent that the
University waive all or part of it's rights to ownership of any
intellectual property where the University has insufficient interests
in or resources to pursue development of the property, the Director
of Technology and Research Collaborations (Director) shall conduct
an evaluation of the technology to determine if a waiver is in
the University's interest. Whether the evaluation reveals it is
or is not in the University's interest to waive all or part of
its rights, the Director shall make the evaluation report to the
affected employee or agent and to the Vice President for Research
(Vice President). Within sixty (60) days of receipt of the Director's
report, the Vice President shall determine whether or not to waive
all or part of the University's rights. In determining the University's
interests, the Vice President shall ordinarily confer with the
employees' or agent's department chair or equivalent and the Unit
Leader in charge of the employees' or agent's unit. If the Vice
President determines that waiving the University's rights is appropriate,
the Vice President shall ordinarily condition the waiver so as
to retain for the University a royalty-free, worldwide, non-exclusive
license to use and to make derivatives of the property for any
and all University purposes. The Vice President may also provide
other conditions to the waiver.
4.
Royalty Income
A.
(1)
Royalty Income is money or other valuable consideration, received
in exchange for the transfer of OHSU intellectual property and
reimbursement of out-of-pocket expenses for intellectual property
protection, marketing and licensing.
(2)
Royalty income shall not be interpreted to include income accepted
by OHSU, at its discretion, in the form of gifts or funding
for research, teaching or service.
(3)
OHSU shall deduct from Royalty Income any external/out-of-pocket
expenses for development of a particular intellectual property.
"Development" for purposes of this provision includes
all activities surrounding exploitation of the intellectual
property including but not limited to the repayment of the direct
expenses paid by the University to attorneys for the filing
and prosecution of any patent application. The remaining funds
are "Net Royalty Income."
B.
Net Royalty Income shall be distributed as follows:
(1)
The creator(s) of intellectual property receive(s) 40% of the
first $50,000, 35% of the next $50,000 and 30% of everything
thereafter. Where there are multiple creators of intellectual
property, each individual will share the income in accordance
with their creative contribution as shown on the face page of
the Invention and Technology Disclosure, or as otherwise agreed
by the creators in writing. In the absence of either of the
above and in the absence of a dispute as to each creator's contribution,
the creator share shall be divided equally among the creators.
(2)
The remaining Net Royalty Income shall be divided equally between
the unit within which the creator(s) of intellectual property
works at the time of the creation and the University. For purposes
of this policy, "unit" means an OHSU school, institute
or other division which is headed by a Unit Leader.
(3)
Where there is more than one creator of intellectual property
and they are affiliated with different units, each unit's share
shall be divided between the units in accordance with the percentage
each creator of intellectual property contributed to the intellectual
property as determined in subsection (1) above.
(4)
The unit share shall be used at the direction and discretion
of the Unit Leader in charge of the unit within which the creator
works. However, the Unit Leader shall solicit and consider the
views of the employees of the unit who created the intellectual
property and their department chairs or equivalents.
(5)
The University's share normally will be used to support the
operational costs of the Office of Technology and Research Collaborations
and OHSU's research mission as determined by the Vice President
for Research.
(6)
Unless otherwise directed by the Vice President for Research,
under normal circumstances, when the creator of intellectual
property changes his or her employment base to a different unit
within OHSU, half of the unit share will continue to be directed
to the unit where the creator previously was employed and half
shall be directed to the unit into which he or she has transferred.
5.
Special Situations
A.
Where there is more than one creator of intellectual property
and one or more independent legal organizations besides OHSU involved
in the development of a technology, negotiation shall take place
to determine the equity share of each organization. Normally,
each organization will distribute its share in accordance with
its policies, including the distribution to its intellectual property
creator(s).
B.
Where a creator of intellectual property is supported by more
than one unit, the unit share shall be appropriately pro-rated
by the Vice President for Research.
C.
Once a creator of intellectual property leaves the employ of the
University, the unit's share shall remain with the unit.
D.
The Vice President for Research may recognize special circumstances
associated with a specific creator (such as where the creator
has outstanding account debts) and require a distribution for
purposes other than as identified in Section 4. B.(4). Any person
aggrieved by the Vice President's decision may appeal the decision
to the President within ten (10) days of notice of the Vice President's
decision. The University Unclassified Employee Grievance Policy,
No. 03-50-001, shall not apply and the President's decision shall
be final.
E.
Except as may be otherwise provided by the Vice President for
Research, the creator(s) of OHSU intellectual property to be licensed
to a third party shall not seek nor receive from the licensee
any additional consideration (equity or otherwise) beyond what
they are entitled to under this policy for the intellectual property
as it exists at the time of licensing. However, this provision
shall not be construed to preclude a creator(s) from participating
with the licensee in further developing the intellectual property
and receiving consideration for that participation so long as
the creator(s) is in compliance with the university's outside
activities and conflict of interest policies.
F.
Where income in exchange for the transfer of OHSU intellectual
property is to be in the form of equity or its equivalent, the
University shall instruct the licensee to transfer, as soon as
reasonably practicable, to the creator(s) the portion of the University
shares to which the creator is entitled under this policy.
G.
OHSU supports the formation of new, locally based companies using
intellectual property licensed by OHSU. While each new company
formation is unique, where OHSU creators receive equity in return
for their participation as founders in a new company, ordinarily
the University will require the creator(s) to waive their rights
under this policy as a condition of the start-up arrangements.
6.
Vice President for Research
The
Vice President for Research may develop guidelines, protocols and
other procedures consistent with this policy to carry out it's purposes.
Background:
- OAR
580-43-011
- OAR
580-43-016
- OHSU
Policy No. 04-90-005, repealed 6/5/02
- Formerly
Policy No. 04-90-001, renumbered 3/9/05
Related policies, procedures and forms:
Responsible
office: Technology and Research Collaborations; Research Development
and Administration
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