February 26, 2004
Simplified intellectual property policy includes major changes
Editor’s note: This is one of a series of columns written by the chairs of Faculty Senate councils and committees. Kate O’Neill is chair of the Faculty Council on Faculty Affairs. Asuman Kiyak is chair of the Faculty Council on Research.
On Oct. 27, 2003, President Lee Huntsman signed an Executive Order that makes significant changes in the University’s policies regulating ownership and transfer of intellectual property developed by faculty, staff and students. The policies may be found in Volume Four, Part V, Chapter 7 of the University Handbook: http://www.washington.edu/admin/rules/APS/59.04TOC.html and at Administrative Policy Statements (Section 59.4): http://www.washington.edu/faculty/facsenate/handbook/04-05-07.html#anchor3.
These new policies were developed by a faculty committee, the Intellectual Property Management Advisory Council (IPMAC), after two years of evaluation of previous UW policies and those of other research universities. The new policies were then reviewed by the Faculty Council on Research and the Faculty Council on Faculty Affairs, first in 2001, and again last spring. Both IPMAC and FCR approved the changes last spring. FCFA expressed some reservations, particularly regarding the definition of what types of intellectual property were covered and by changes in the distribution policy.
The changes in the distribution of net royalties, equity and licensing fees (after administrative costs are deducted) are best illustrated by the following chart:
Inventors, Authors | Inventors/Authors | University Research Fund |
1/3 | 1/3 | 1/3 |
The rationales for the changes are basically two. First, the administration argued for the changes to reduce the costs of computing payouts over the life of an invention or copyright. The new system eliminates a tiered payout that depended on the amount of revenue from a given invention and provides a uniform 3-way split of revenues among the inventor/authors, the college or department, and the University’s central research funds, regardless of the amount of revenue, to reduce costs associated with computing payouts over the life of a licensed invention and to acknowledge the fact that licenses are often based on many individual patents or disclosures. The central administration’s share supports the Royalty Research Funds that provide funding for new UW faculty projects.
Second, the new provisions allow the inventor/author to waive receipt of some or all of her portion and direct that to her research program, department or other University research project. The University will then match those redirected monies on a dollar for dollar basis. This waiver/match proposal was strongly supported by FCR and IPMAC. In a letter to the chair of the Faculty Senate last year, the chair of FCR noted that the waiver/match was “both novel and of great benefit to the faculty. It allows faculty inventors to control the fate of most of their distribution, if they choose to funnel the proceeds back to the development of their own work or other intellectual pursuits within the institution.” See Administrative Policy Statement, Part 3, for details.
The new distribution policies apply to inventions, copyrights and other technologies disclosed after the effective date of the revisions, July 1, 2003.
The policy applies to patented and nonpatented innovations (Vol. 4, Part 5, Chapter 7, Section 1, A). In contrast, “faculty, staff, and students retain all rights in copyrightable materials they create, including scholarly works, subject to certain exceptions and limitations.
The most important exceptions apply to works created under grants and contracts where the grant or contract may vest ownership in the sponsor, and to works created for the University under terms that would make the work a “work for hire” as that term is defined under copyright law.
Because both the nature of works subject to copyright, such as Web sites, digital archives, and digital course materials and lectures, are evolving, and may present unanticipated opportunities for commercial exploitation, it proved difficult to define with precision exactly what copyrightable works are covered. The administration has stated its willingness to work with the faculty to revise the Executive Order, as appropriate, to address emerging issues about novel technologies and materials.
FCFA was very concerned that faculty’s traditional ownership rights in scholarly and teaching materials not be abridged by the new policy. The presumption that copyrightable works are owned by the faculty member supports this tradition. In addition, one provision recommends that faculty try to reach agreement in advance in writing in instances where there is any concern about whether ownership vests in the faculty member, in collaborators, or in the University. See Section 2, A, & B.
Faculty should be aware that they are under a general duty to disclose innovations, whether potentially subject to patent, copyright, trademark or trade secret law. FCR and FCFA join in urging faculty, particularly faculty who have not previously regarded themselves as inventors, to review the new policies carefully.
