Brigham Young University
Intellectual Property Policy
Brigham Young University
faculty, administrative, staff, and student personnel are regularly involved in
scholarly activities that include teaching, research, and other creative
activities. Although the primary focus of such efforts is the advancement of
the central purposes of the university, the products of scholarship often have
implications for wider and differing applications. Thus, these
products—intellectual properties—may be of benefit to the individuals involved
as well as to the university. This policy is intended to support faculty,
staff, and students in identifying, protecting, and administering intellectual
property matters; defining the rights and responsibilities of all involved; and
establishing support offices to provide the required assistance. It also
stipulates how income generated should be distributed to the developers and to
the university. All administrators, faculty, staff, and employed students are
defined as university personnel. Administrative title substitutions,
such as director for dean and supervisor for chair,
will apply in appropriate sections of this policy statement.
I.
TYPES OF INTELLECTUAL PROPERTY
II.
MANAGEMENT OF INTELLECTUAL PROPERTY
III.
COUNCIL ON RESEARCH AND CREATIVE ACTIVITIES
IV.A. Substantial Use
of University Resources
IV.B. Nominal Use of
University Resources
IV.C. Repayment of
University Support Funds
IV.D. Consulting and
Intellectual Properties
IV.E. Student
Ownership of Intellectual Properties
IV.F. Assignment of
Intellectual Properties to the University
IV.G. Release of University
Ownership
IV.H. University Use of Technologies
and Properties Created by University Personnel
V.B. Approval of Transfer Agreements
VI.A.1.
Intellectual Property Developed by Departments
VI.A.2. Income
Distribution Among Multiple Academic Developers
VI.A.3. Developers in
Support Areas (Nonacademic Units)
VI.B.2. Compensation
for University Personnel
VI.E. University
Scholarly Support Fund
VI.F.
Administrative Discretion
VII. PUBLICATION AND DISCLOSURE
VIII. REQUIRED TEXTS AND
INSTRUCTIONAL MATERIALS
IX. UNIVERSITY-COMMISSIONED COURSE
DEVELOPMENT
XI.
CREATIVE WORKS OWNERSHIP EXAMPLES
I. TYPES OF INTELLECTUAL PROPERTY
Intellectual properties are
divided into two categories: technical works and creative works.
Technical works include intellectual properties that are generally of a
scientific, engineering, or technical nature—such as patentable or unpatentable
inventions, devices, machines, processes, methods, and compositions; computer
software; and university collections. Creative works include all intellectual
properties not covered in technical works that are of an artistic, scholarly,
instructional, assessment, or entertainment nature. Examples of creative works
might include creative productions, such as works of art or design; musical
scores; books, poems, and other types of scholarly or creative writings; films;
video and audio recordings; and instructional materials, such as textbooks and
multimedia programs. All computer software is included in technical works
except that which is clearly developed for entertainment or for instructional
purposes, e.g., electronic textbooks and textbook supplements, classroom and
self-study tutorials.
Creative works do not
include those productions of drama, music, athletics, and similar events that
are managed by appropriate academic departments, colleges, or academic support
units and are expressly approved by the President’s Council as not being
subject to this policy. Traditional academic publications that are produced as
a normal outcome of scholarly work and have only minor commercial possibilities
are not included except under specific and unusual circumstances. These
publications would include professional papers published in scholarly journals,
monographs of an academic nature, scholarly books of limited use, or
supplementary texts and similar materials. Likewise, juried artistic creations
or performances that are the academic, noncommercial equivalents of such
scholarly publications are not included.
II. MANAGEMENT OF INTELLECTUAL PROPERTY
The business aspects of
commercializing intellectual properties and the management of copyright issues
for the university are the responsibility of Intellectual Property Services,
which includes the Technology Transfer Office, the Creative Works Office, and the
Copyright Management Office. These units report to the academic vice president
through the associate academic vice president for research. The director of
each office has the responsibility of working closely with faculty, other
university employees, and academic administrators in managing intellectual
properties within the university, including their development, protection,
acquisition, and commercialization.
The directors are also to
work closely with existing department, college, and university offices and
programs, as well as the Council on Research and Creative Activities, to effect
the appropriate academic and financial returns for the developer(s) and the
university, while properly protecting the interests of all parties. This
management includes educating university personnel, soliciting and reviewing
disclosures, obtaining intellectual property protection, licensing and
marketing the properties, monitoring licensee performance, and collecting and
distributing revenues. Where appropriate, the directors will assist the Office
of Research and Creative Activities in negotiating intellectual property
aspects of sponsored research contracts.
University personnel may
consult for commercial entities, and the university solicits industry-sponsored
research contracts and collaborates closely with companies when transferring a
technology or creative work to the private sector; however, the university does
not generally engage in product manufacturing, company support functions,
customer service, technology maintenance, or work for hire for the private
sector. In general, it is not appropriate for academic units to produce,
market, or sell products or to establish organizations or companies to do so.
Instead, the Technology
Transfer and Creative Works Offices have the responsibility to license or sell
the technology or work; or they may sell university-developed products to end
users when sales and support do not interfere with the normal activities of
campus personnel, and when the sale is consistent with the educational mission
of the university. However, if a commercial activity such as manufacturing
products, selling products to end users or distributors, and/or providing
customer support other than through Intellectual Property Services is deemed
consistent with the educational mission and academic programs of the
university, an approved “Enterprise Center” may be authorized (see section
V.C).
Both the Technology Transfer
Office and the Creative Works Office may use their allotted portions of the net
income received to employ individuals to fulfill specific functions, such as
licensing specialists, clerical support personnel, or media specialists to
assist with producing and distributing products. (Expenses such as mailing,
copying, and other support consistent with marketing the product will be
deducted from income generated before distributions are made pursuant to this
policy.)
The University Copyright
Management Office is the university’s primary resource on fair use and other
copyright issues related to university publications and library collections and
services, digital reformatting, in-licensing, distance education, and course
packet creation. This office develops and advises the university community
regarding copyright policy, coordinates with the university Office of General
Counsel regarding related legal issues, and assists the Creative Works Office,
the Center for Instructional Design, and university personnel in their efforts
to create, protect, and market instructional courseware and similar products.
It is the responsibility of
deans, chairs, and faculty, in harmony with the guidelines that follow, to act
so that university resources—including faculty time—are used appropriately, and
to work with Intellectual Property Services to promote proper fulfillment of
the objectives of this policy.
III. COUNCIL ON RESEARCH AND CREATIVE ACTIVITIES
The Council on Research and
Creative Activities will advise and coordinate activities with Intellectual
Property Services and review current procedures and practices to make
recommendations for policy development. The council has responsibility for
resolving conflicts of interest that involve intellectual properties or any
commercial involvement or consulting arrangements of university personnel. The
council is also responsible for dispute resolution (see section X).
The council is chaired by a
faculty member and includes at-large faculty members, with ex-officio members
from the Office of Research and Creative Activities and from Intellectual
Property Services (see the Electronic Handbook). The council may also empanel
advisory subcommittees composed of faculty members and/or administrative
personnel with particular background or experience to assist in investigating
and resolving conflicts.
IV. OWNERSHIP
IV.A. Substantial Use
of University Resources
IV.B. Nominal Use of
University Resources
IV.C. Repayment of
University Support Funds
IV.D. Consulting and
Intellectual Properties
IV.E. Student
Ownership of Intellectual Properties
IV.F. Assignment of
Intellectual Properties to the University
IV.G. Release of University
Ownership
IV.H. University Use of
Technologies and Properties Created by University Personnel
Pursuant to law and
university policy, and without an express agreement specifying otherwise, any
work (whether a technical work or a creative work) prepared by university
personnel within the scope of their employment is work for hire owned by the
university. When works are commissioned to an individual who is not an employee
of the university or when the commissioned individual is an employee but the
work to be created falls outside that person’s scope of employment, the
university will proceed with a written agreement, signed by the university and
the individual, stating that the resulting intellectual property is owned by
the university and assigning to the university all intellectual property rights
to the work held by the individual.
The university retains
ownership rights to all technical works but relinquishes ownership rights to
the developer(s) of creative works when “nominal” use of university resources
are involved in the production of the intellectual property. When “substantial”
university resources are used in the production of creative works, however, the
university will retain its ownership position, and income from the project will
be shared with the developers. The conditions that differentiate between
nominal and substantial use of university resources are discussed below (see
sections IV.A and IV.B). Decisions based upon the extent of the utilization of
university resources are to be negotiated with developers by the deans, in
consultation with the appropriate Intellectual Property Services support office
and within these general guidelines prior to approval by the academic vice
president’s office.
IV.A. Substantial Use of University Resources
Substantial use of
university resources in generating creative works is defined as use of
university facilities, equipment, personnel, and one’s time in excess of that
needed to fulfill the required activity of one’s appointment at BYU (see, for
example, Expectations of a Faculty Appointment). Substantial use of resources
results when the creation of the work requires use of university resources
beyond those allocated to the faculty in support of their academic work within
their respective department or college. Such usage may occur as a result of
actions of the university personnel involved or when specific assignments are
given to university personnel or where contracts or other obligations are
involved. The university will retain title to all creative works that make
substantial use of university resources.
The following examples
generally define such use when they are applied, singly or in combination, in support
of a revenue-producing work. Although it is the responsibility of the dean or
equivalent supervisor to evaluate situations and determine if substantial use
of resources has occurred, faculty members or other employees have an
obligation to notify their supervisor and dean when they believe that their
work involves more than nominal use. The following are examples of criteria for
establishment of substantial use:
1. Extended
use of time and energy by the developer(s) in creating or promoting the work
that results in reducing the levels of teaching, scholarship, or citizenship
activities, so that anticipated performance in these areas is at a level
significantly less than normal.
2. Substantial
use of university facilities such as laboratories, studios, equipment,
production facilities, or specialized computing resources.
3. University
funding in support of the work’s creation.
4. Release
time to develop or complete a work.
5. Paid
professional development leave to develop or complete a work.
6. Direct
assignment or commission from the university to undertake a creative project as
a part of the developer’s regular appointment.
7. Substantial
use of funding from gifts to the university to support creation of the works
involved.
8. Production
of the work under specific terms of a sponsored research grant or contract.
9. Substantial
subvention by the university in the publication of a scholarly book or creative
work.
10. Use of
specifically designated university funds or extensive use of the services of a support unit financed by the
university (e.g., Center for Instructional Design) for production of a creative
work.
11. Use of
university computers and servers for Web-based activities such as a
distance-learning course.
IV.B. Nominal Use of University Resources
Nominal use of university
resources is use that is within the required activity of one’s appointment at
BYU (see, for example, Expectations of a Faculty Appointment). University
personnel may make such nominal use of university resources and devote office
time in carrying out a range of professional activities, some of which may
involve income-generating projects. The university relinquishes (to the developers)
ownership of creative works and its rights to any income generated as long as
university resources are used in this nominal fashion, and the time involvement
of the developer(s) of the project does not compromise their core
responsibilities in teaching, scholarly work, and university citizenship.
The following examples
generally define such use:
1. Minimal use
of time and energy by the developer(s) in creating or promoting the creative work
while maintaining assigned levels of teaching, scholarship, and citizenship
activities, so that anticipated performance in these areas is at the expected
level.
a. Student
employees or technicians may not be used to do income-producing work or make up
the slack in a faculty member’s assignment so he or she can do income-producing
work.
b. Developers
may not receive additional released time to develop a work, other than that
assigned to normal faculty scholarship.
2. Minimal use
of university resources in the ordinary support of the developer’s teaching,
scholarly, and service activities.
a. Use of
photocopying equipment, long distance telephone costs, postage, faxes, etc.,
specifically for a creative work may not exceed incidental use.
b. Office
supplies or software may not be purchased specifically for a creative work.
c. Secretarial
help, such as typing manuscripts, may not be used to generate income-producing
products. Incidental help, such as formatting tables, is allowed.
d. Course or
instructional materials may not be generated with the use of support units
financed by the university (e.g., the Center for Instructional Design). Courses
or instructional materials generated in the normal course of teaching, without
such support, are allowed.
e. Works may
not be funded by outside grants or gifts nor produced under a sponsored
research grant or contract.
IV.C. Repayment of University Support Funds
In certain situations of
substantial use of university funds and other resources, it may be more
appropriate for the developer(s) to repay such funds to the university and thus
fall under the nominal rather than substantial use provisions of this policy.
The dean, in consultation with the developer(s) and the appropriate
Intellectual Property Services office, will determine the appropriate level of
repayment.
IV.D. Consulting and Intellectual Properties
University personnel who
plan to engage in off-campus consulting, research, or product development
within the scope of their professional expertise, and in which university
personnel or a third party may claim an ownership interest, must communicate
the scope of such off-campus endeavors to their department chair and dean and
obtain written approval prior to commencing the endeavors. The form “Approval
for Professional Activities in Addition to Regular University Assignments, B:
Consulting” (which should be completed for all consulting activities) is for
this purpose. If university personnel are to be engaged as consultants or
otherwise employed by a company that is either anticipating or has executed a
license agreement with the university, or the proposed work is not independent
of the university personnel’s campus endeavors, the consulting or other
agreement shall be submitted to the appropriate Intellectual Property Services
office for review prior to its execution.
The university does not
assert ownership to works produced by those involved with consulting except in
cases where substantial use of university resources occurs to support the
consulting activity. In such cases there should be prior negotiation between
the consultant and the chair and dean to determine disposition of the
intellectual property. Generally, activities are more properly carried out as
sponsored projects when there is a substantial use of university resources, and
they must be sponsored projects when students are employed.
IV.E. Student Ownership of Intellectual Properties
Students who independently
develop intellectual property arising out of their participation in programs of
study at the university will retain the ownership rights to such property when
the intellectual property does not result from their employment at BYU and when
the use of university facilities is nominal. Students using substantial
university resources or those employed by the university will be treated in the
same manner as similarly situated university personnel. However, any student
not employed by the university but engaging in research or development of
intellectual property under the supervision and direction of a faculty member
in connection with a program or activity subject to this policy shall have no
ownership interest in the resulting property but may be eligible to participate
in the income distribution (see section VI). Faculty using such volunteer,
nonemployed students in their scholarly work projects should have the students
sign a “Student Assignment of Ownership and Nondisclosure Agreement” form,
available from Intellectual Property Services.
IV.F. Assignment of Intellectual Properties to the University
Students, university personnel,
or individuals not affiliated with the university who own intellectual property
may elect to voluntarily disclose and submit their properties to the Technology
Transfer or Creative Works Offices for the purpose of facilitating commercial
development. In the event that either of the offices agrees to accept
management of the property, the property shall be assigned to BYU and the
assignor shall be entitled to the same distribution of revenues and other
rights and responsibilities as the academic developers of university-owned
property, as specified in this policy.
IV.G. Release of University Ownership
The university may, at its sole
discretion, determine to release to the developer(s) its ownership rights to
any intellectual property upon such conditions as the university deems
beneficial and fair to all parties. Upon the recommendation of Intellectual
Property Services, the transfer of rights must be approved and secured by an
assignment agreement.
IV.H. University Use of Technologies and Properties Created by University Personnel
University personnel who
have received and retained title (copyright or patent) to an intellectual
property, or students who utilize university resources but retain ownership of
an intellectual property pursuant to this policy, shall, as a condition of
employment and/or such use, grant to the university a royalty-free, paid-up
license to use the property for internal, noncommercial purposes. The
university may, at its sole discretion, sublicense the property to The Church
of Jesus Christ of Latter-day Saints.
V. ADMINISTRATIVE PROCESSES
V.B. Approval of Transfer
Agreements
V.A. Disclosure
Prior to public disclosure
such as a presentation or submission for publication, the developer(s) of
technical or creative works shall disclose to their chair and dean any such
property or work that has potential for commercial development. All technical
works and those creative works involving substantial use of university
resources shall also be disclosed to the Technology Transfer Office or the
Creative Works Office, respectively. Ownership of creative works will be
negotiated with the developer(s) by the dean in consultation with the Creative
Works Office. Upon disclosure, Intellectual Property Services will make a
determination within 30 days to either pursue intellectual property protection
and/or commercialization or release the rights to the developer(s) (see section
IV. G). Intellectual Property Services will work closely with the developer(s)
and the department and college to develop a plan to manage the intellectual
property.
All developers of works that
may fall under university ownership shall fully disclose to the university any
financial and/or other relationships they have that might affect or encumber
the transfer of intellectual property to any off-campus individual or entity.
Examples of such required disclosures are consulting agreements, publisher
agreements, distribution and sales agreements, stock equity arrangements,
employment outside the university (including director status), sponsored
research agreements, or use of gifts to the university.
Prior to or in conjunction
with disclosure of university-owned intellectual property, the developer(s)
shall obtain from all students working on its development the signed standard
form “Student Assignment of Ownership and Nondisclosure Agreement.” The
developer(s) shall also sign the standard form “Assignment and Royalty
Agreement” with the university. These forms will be kept in the Intellectual
Property Services offices.
V.B. Approval of Transfer Agreements
Any proposed transfer of intellectual
property from the university will be reviewed by the developer(s), chair, dean,
director of Technology Transfer or Creative Works, Office of General Counsel,
associate academic vice president for research, and the administrative vice
president. The final decision concerning transfer will be made by the
administrative vice president’s office.
V.C. Enterprise Centers
If a commercial activity
such as manufacturing products, selling products or services to end users or
distributors, and/or providing customer support other than through Intellectual
Property Services is deemed consistent with the educational mission and
academic programs of the university, an enterprise center may be authorized by
petition through the chair and dean to the associate academic vice president
for research. The proposal shall identify a center director and shall detail
the involvement of university personnel, facilities and equipment requirements,
operation plans, and justification of the program within the academic mission
of the university. The proposal shall also contain a detailed description of
the types of expenses that will be charged against the income of the enterprise
center. At the conclusion of each fiscal year the center shall submit an annual
report to the dean and Intellectual Property Services. The report shall contain
a summary of the center’s operations, plans for the coming year, and an accounting
of the center’s financial affairs.
All expenses and an
appropriate operating reserve for the coming year shall be approved by the
dean, and the remaining funds shall be transferred to Intellectual Property
Services for distribution (see section VI.A.1). University personnel will not
receive any personal distribution of income, and supplemental research
compensation for university personnel will not be permitted in the operating
expenses of the center. The charter of each center must be renewed annually by
the dean, who may consult with the associate academic vice president for
research.
VI. DISTRIBUTIONS
VI.A.1.
Intellectual Property Developed by Departments
VI.A.2. Income
Distribution Among Multiple Academic Developers
VI.A.3. Developers in
Support Areas (Nonacademic Units)
VI.B.2. Compensation
for University Personnel
VI.E. University
Scholarly Support Fund
VI.F.
Administrative Discretion
VI.A. Academic Developers
Developers are individuals or
groups of individuals who make a significant original, creative contribution to
the conception and/or commercialization of a technology or work. Others who are
directed in the performance of their work, utilizing the skills expected of
their position, are not developers. Academic developers include professorial,
professional, and research faculty; administrative and staff employees working
in academic units under the direction of faculty, such as research associates,
postdoctoral fellows, and research technicians; students; and individuals who
may not be employed by the university but who have assigned rights to the
university.
VI.A.1. Intellectual Property Developed by Departments
If a university unit, such
as an academic department, fully sponsors the development of an intellectual
property, the unit shall be considered the developer and will receive the
developer’s portion of the distributed income.
VI.A.2. Income Distribution Among Multiple Academic Developers
If there are multiple
developers, the developers will devise an appropriate formula to share the
developer’s portion of the distributed income. An “Income Distribution
Agreement” must be signed by the developers and the distribution approved by
the chair and dean. Such agreements should be reviewed by the chair for current
applicability every three years or when major changes in personnel or efforts
occur. The chair will submit recommendations for any changes in distribution to
Intellectual Property Services for approval.
VI.A.3. Developers in Support Areas (Nonacademic Units)
Intellectual property or
creative works developed by administrative and staff personnel in fulfillment
of employment objectives usually will not result in technology revenue sharing
with the developer(s). All net income derived from such works shall be
distributed equally between the Technology Transfer Office or the Creative
Works Office and the University Scholarly Support Fund (described under VI.E).
Independent creative efforts beyond usual employment expectations that result
in the development of intellectual property may be approved for revenue sharing
with the developer(s) when approved in advance by supervisors and the
administrative vice president (with appeal rights to the Human Resource
Committee).
VI.B. Income Distribution
All revenues derived from university-owned intellectual property
or creative works will be received and administered by the Technology Transfer
and Creative Works Offices. Costs incurred in the process of perfecting,
transferring, and protecting university rights to the property or works will be
paid by the university and, together with interest costs, will first be
deducted from the gross income available for distribution. An accurate
accounting of all such costs shall be made available to the developer(s) upon
request. The net income (gross income minus university expenses) from
university-owned intellectual properties will be distributed to academic
developers and to developers in support areas as follows:
a. Developer(s)—45%
b. College(s)
of the developer(s)—27.5%
c. Technology
Transfer or Creative Works Office—27.5%
Academic faculty developers
may designate all or a portion of their allocated income to fund their
scholarly activities (including equipment and supplies purchases; student,
postdoctoral, and assistant wages or support; and research-related travel). If
this election is made, the college(s) will contribute to the developer’s
research fund an amount equal to one-half of the designated portion, not to
exceed the full amount of the college distribution. In addition, the applicable
Technology Transfer or Creative Works office will contribute to the developer’s
research fund an amount equal to the college contribution, not to exceed 17.5%
of the total distribution.
VI.B.1 Example
An example of how the
allocation formula works for funds received from university-owned intellectual
properties developed by faculty follows:
Professors Smith and Jones
participated in a research program that resulted in an invention that was
patented through the Technology Transfer Office at a cost to the university of
$13,000. Professors Smith and Jones, with the approval of the department chair
and the dean, executed an 80%/20%, respectively, income-sharing agreement. The
patent was licensed to XYZ, Inc. for an initial license fee of $15,000 and a 5%
royalty. The royalty revenues received from XYZ, Inc. during the initial
calendar quarter were $8,000.
Funds to be distributed at
the end of the quarter were as follows:
| Total Revenues ($15,000 +$8,000) | $23,000 | |
| Reimburse Legal Fees | 13,000 | |
| Available for Distribution | $10,000 | |
| Distribution to Developers (45% of $10,000=$4,500) | ||
| To Smith (80% of $4,500) | $3,600 | |
| To Jones (20% of $4,500) | 900 | |
| Distribution to College of Smith and Jones (27.5% of $10,000) | 2,750 | |
| Technology Transfer Office (27.5% of $10,000) | 2,750 | |
| $10,000 | ||
However, Professor Smith
elected to transfer $1,500 into a research account, which was matched by his
college and the Technology Transfer Office. Therefore, the following
distribution was actually made:
| To Smith ($3,600 - $1,500 to research account) | $ 2,100 | |
| To Jones | 900 | |
| To Smith's Research Account | ||
| ($1,500 +$750 from college +$750 from Technology Transfer) | 3,000 | |
| To College of Smith and Jones ($2,750 - $750) | 2,000 | |
| To Technology Transfer Office ($2,750 - $750) | 2,000 | |
| $10,000 | ||
VI.B.2. Compensation for University Personnel
Revenue distributed to the college
or to faculty research accounts from Intellectual Property Services must be
used in accordance with university policies and cannot be used to pay bonuses
or other types of compensation to university personnel over and above that
approved by the job classification. Likewise, the developer’s share taken as
personal income may not be used to compensate university personnel for work
performed within the scope of their employment.
VI.C. Schedule
Net income distributions
will be made quarterly when the accumulated total exceeds $1,000, or annually
if less than $1,000.
VI.D. Equity Position
The university and/or
developer(s) may, in appropriate circumstances, take equity positions in
companies licensed to market BYU’s intellectual property. The appropriate
Intellectual Property Services office will negotiate with the developer(s), as
a part of the final plan for disposition of the property, the income
distribution from royalties relative to the developer’s involvement, including
equity, consulting, or other relationships with the company. Such income
distribution will be negotiated only upon full disclosure of all relationships
between the developer(s) and the licensing company and in such a manner that
the developer(s) normally will obtain financial benefits from their overall
relationship with the licensing company and the university approximately
equivalent to that which they otherwise would have received from participation
only in income sharing. If a developer is a principal in a company that
licenses the developer’s technology or creative work, the developer will not
participate in the distribution of any funds or equity received by the
university under the license agreement.
If the developer does not receive a share of the distributed income because of the developer’s involvement with the licensing company or because the developer is part of an enterprise center (see section V.C), the income will be distributed equally between Intellectual Property Services and the college(s) (or Scholarly Support Fund if the center is a nonacademic unit (see section VI.A.3).
VI.E. University Scholarly Support Fund
Revenue distributed to Intellectual
Property Services will first be used to support its operations, including
expenditures for personnel as described previously, office supplies, travel,
unrecovered patent costs, etc. After the close of each fiscal year, the
directors of the Technology Transfer Office, the Creative Works Office, and the
associate academic vice president for research will determine the amount of
excess funds available. All excess funds will be transferred to the University
Scholarly Support Fund. This fund will be used at the discretion of the
associate academic vice president for research, working under the direction of
the academic vice president, to encourage new scholarly projects and to assist
scholarly activity in areas where funding is less available or where commercial
success has not yet been achieved. Examples of the use of the fund include
initial funding for establishing interdisciplinary and intradisciplinary
research centers; funding technology transfer and creative works development
projects; funding special creative work projects, such as art exhibits,
lectures, performances, demonstrations, films, videos, etc.; providing seed
money for promising but unfunded projects that could lead to later grants and
contracts; paying for short-term key staff and student support on projects;
bridging gaps or unexpected problems in funding existing projects; funding
travel (especially international) related to a project; supporting needs
related to publishing scholarly papers or books, monographs, creative books, etc.;
and subsidizing conferences or workshops related to research and creative work.
VI.F. Administrative Discretion
When total income, before
distribution, exceeds $1,000,000 from any single intellectual property in any
fiscal year, an administrative review of this source of income will be
activated. The academic vice president and the administrative vice president shall
have discretion to evaluate the allocation of the funds in excess of this
threshold to the college(s) and to Intellectual Property Services. They may
require an alternative distribution within the university of this portion of
the income, such as a larger distribution to the Scholarly Support Fund. The
distribution to the developer(s) will not be affected.
VII. PUBLICATION AND DISCLOSURE
Early peer-reviewed
publication of results is a major objective of academic research. However, the
developer(s) of technical works must defer all public disclosure and
publication of patentable discoveries, including software, that are suitable
for commercial development until evaluation by the Technology Transfer Office
in order to preserve intellectual property rights. In some instances the
university may require the developer(s) to defer such disclosure for a period
of up to 90 days after informing the Technology Transfer Office, during which
time the Technology Transfer Office may take appropriate action to protect the
rights of the developer(s) and the university in the discovery.
VIII. REQUIRED TEXTS AND INSTRUCTIONAL MATERIALS
Required texts and
instructional materials prepared by BYU faculty members for use in BYU courses
should be provided royalty-free to students, whether sold through the Bookstore
or by an external source. Exceptions are textbooks or other instructional
materials that are appropriately peer-reviewed, published, and distributed
nationally by a major publishing company external to BYU, and have total sales
to customers external to BYU that exceed sales to BYU students.
IX. UNIVERSITY-COMMISSIONED COURSE DEVELOPMENT
University courses include
entire courses or portions of courses, including instructional materials in
electronic or traditional media, that are commissioned by the university or
developed within the scope of an individual’s employment at the university with
substantial use of university resources. These materials will usually be
developed by the Center for Instructional Design and will be owned and
administered by the university even though a college or department may have
originated the course concept and participated in its development. Academic
departments may elect to compensate faculty developers through reduced faculty
load, supplemental compensation, or a combination thereof. These developers
shall not receive any additional compensation (e.g., royalty distributions)
unless these courses are licensed through the Creative Works Office. The
Creative Works Office will have responsibility for licensing university courses
to entities outside BYU and the Church Educational System and for distributing
the licensing revenues and royalties received (see section VI). The 55% of the
distribution normally allocated to the university and the college will be
divided, in proportion to their contributions, among the university units that
participated creatively or financially in developing of the work.
University courses developed
for and offered by the Division of Continuing Education prior to the adoption
of this policy that continue to be offered will be administered under the
preexisting policies and procedures, and developers will be compensated under
their original agreements. Revisions of existing university courses will be
governed by the preceding paragraph of this policy.
The Division of Continuing
Education may pay a fee to developers for services such as grading papers,
assignments, and examinations on any appropriate course. Students who wish to
enroll in Web Internet courses as part of their paid tuition must use
Semester-Online courses. All courses taken through Independent Study, including
those taken by matriculated BYU students, require Independent Study tuition
payment.
X. DISPUTE RESOLUTION
Any dispute involving the
developer(s), a department, a college, or Intellectual Property Services that
cannot be settled through informal discussions or mediation shall be submitted
to the Council on Research and Creative Activities. The council then will
appoint a subcommittee to investigate the dispute and make a recommendation for
resolution to the associate academic vice president for research, who will make
the final determination in consultation with the academic vice president.
Council members or administrators who are directly involved with the property
in question should withdraw from the process at such times as necessary to
avoid conflicts of interest.
XI. CREATIVE WORKS OWNERSHIP EXAMPLES
Below are examples that may
be used as guides in implementing the policy as applied to Creative Works
intellectual property.
Case one: A faculty member
in the College of Humanities writes a royalty-producing book of poems. Some of
the work is done during the week as part of his scholarly activity and some is
done on weekends. The faculty member teaches at a level the department chair
feels is appropriate, serves on a college committee, and is involved in other
citizenship activities. Furthermore, he makes no substantial use of university
resources apart from his office, computer, and the library.
Disposition: The faculty
member consults with the chair and dean and they decide that nominal use of
university resources is involved. The faculty member owns the intellectual
property and all royalty income and is responsible for negotiating and
administering the contract with the publisher.
Case two: A faculty member
is granted a half-time teaching load winter semester to prepare for publication
materials she developed in connection with a course she teaches; the university
also pays her a salary for spring term to work full-time on the project. One
student assistant paid by the university helps edit the book while another
verifies sources and notes. This arrangement permits her to write the book over
the winter, spring, and summer so that she is prepared to return to full-time
classroom work in the fall.
Disposition: The faculty
member, dean, and chair jointly determine that the support provided the faculty
member exceeds the nominal level in the department, thus the university may
assert ownership or seek repayment of costs. In this case, the dean and faculty
member agree that repayment of certain costs is the appropriate way to deal
with the situation. Once the costs have been determined, in consultation with
the Creative Works Office, and repaid by the faculty member, the property is
treated under the terms for nominal use of resources (IV.B).
Case three: A faculty member
in the Visual Arts Department arranges for a leave of absence, without pay but
with full benefits, so that he can complete a series of watercolor paintings
featuring the scenic country of southern Utah. All work is done off campus
using no university facilities.
Disposition: The payment of
benefits would not ordinarily be considered as a substantial source of
university support. Since the leave of absence has no other university support,
the creative work belongs to the faculty member, and no income resulting from
the sale of the paintings is shared with the university.
Case four: Several faculty
members working under the direction of the Music Department produce a concert
that is shown nationally on PBS and sold on compact discs and videotapes
through the Creative Works Office. The project is funded by the university and
produced on campus with university equipment.
Disposition: Substantial
university resources were used; therefore, the intellectual property is owned
by the university, and the licensing is administered by the Creative Works
Office. The faculty members producing the compact discs and video tapes share
45% of the royalty income, with 55% going to the university. The university
portion is distributed equally between the College of Fine Arts and
Communications and the Creative Works Office.
Case five: A faculty member
in the Zoology Department is released from teaching and assigned full-time to
the research and writing of a textbook to be used in all sections of a required
survey course. The author relies on materials developed by all the faculty
members presently teaching the course and is given substantial amounts of
student and secretarial help. By agreement, any royalties received from the
sale of the textbook outside the university will go to support the research and
writing of all departmental faculty.
Disposition: Since
substantial university support is involved, as determined by the faculty
members, in consultation with the department chair and the dean, the university
owns the rights to the book, and the BYU Intellectual Property Policy, section
VI.A, will apply. Royalties received from the sale of the textbook outside the
university will be distributed according to the formula described in the
policy. The policy specifies that if the developer puts his or her share of the
income into a research account, the university will match the contribution.
Since all agreed to have the income support work in the department, 90% of the
total goes to the College of Biology and Agriculture and 10% goes to the
Creative Works Office.
Case six: A faculty member
is asked to work on a writing project for the Church. Financial support is
provided to support the work, and the faculty member is granted a leave of
absence to do the work but remains in her office to do so. She is provided with
supplemental research compensation to bring the work to completion in a
specified time period.
Disposition: The university
owns the work but assigns it to the Church per the terms of the contract. Since
the Church is the only end user, no distribution of income to the faculty
member occurs.