Forms, Policies & Procedures

Here you will find a repository of forms, policies and procedures related to research at the University of Delaware. This repository draws on sources throughout campus to provide quick and easy access to these resources in a variety of formats, such as html, MSWord and Adobe PDF. We encourage you to explore and use the tools provided to narrow your search by word, resource type or category in order to learn more about the content that governs research at UD.

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Forms, Policies and Procedures (14 Entries)
Policy: Intellectual Property
Bayh-Dole Act
Policy

Bayh-Dole Act

UD Requirements

In 1980, Congress enacted the Bayh-Dole Act, permitting the University to own inventions and patents made on federal grants.

The University must report its inventions and may elect to own and promote them.

The University has the right to license and commercialize inventions and intellectual property, subject to certain retained government purpose rights.

The University has all new faculty sign a “reminder letter” confirming obligations.

Bayh-Dole Act Background

To report an invention, see these policies and forms and contact the Intellectual Property Office within the Office of Economic Innovation and Partnerships for more information.

When the U.S. Congress passed P. L. 96-517, the Patent and Trademark Law Amendments Act, more commonly known as the “Bayh-Dole Act,” in 1980, a uniform federal patent policy was established, clearly stating that small businesses and non-profit organizations, including universities, could retain ownership of inventions made under federally sponsored research.

In return, the University of Delaware is expected to file for patent protection on inventions and then promote the licensing of those patents by the commercial sector, ensuring the outflow of UD discoveries and technologies from our labs to the marketplace.

Named after the senators who cosponsored it, Birch Bayh of Indiana and Robert Dole of Kansas, the Bayh-Dole Act and its subsequent amendments provide the basis for current university technology transfer practices. The landmark legislation has led to a more rapid transformation of university research into marketable products and technologies of use by and of benefit to society, as well as the launching of new industries and start-up companies to pursue the development of novel university inventions.

At the University of Delaware, the chief goal of the Office of Economic Innovation and Partnerships is to encourage and enable innovation and entrepreneurship; grow, utilize and leverage the University’s knowledge-based assets; and create and capture new economic and community benefits.

If you are a UD researcher with an invention to report, please review these policies and forms and contact Intellectual Property and Compliance within the Office of Economic Innovation and Partnerships for more information.

 

Policy Details:

OWNER: National Institutes of Health

RESPONSIBLE OFFICE: Research Office

Policy Source Open Policy



Policy: Intellectual Property
Computer Software
Policy

Computer Software

  1. PURPOSE
    The objectives of this policy and the associated administrative procedures are:
    1. to preserve traditional University practices and privileges with respect to the publication of scholarly works;
    2. to encourage faculty, staff, and students to develop software;
    3. to foster the free and creative expression and exchange of ideas and comments;
    4. to establish principles and procedures for equitably sharing income derived from computer software produced at the University in those cases where the University has an interest in the material; and
    5. to protect the University’s assets and imprimatur.
  2. POLICY
    1. Policy Statement

      It is the policy of the University that all rights in computer software shall remain with the creator of a work except where

      1. the work is a work made for hire and the copyright vests in the University under copyright law (Title 17, USC, Copyrights, sections 101 and 201); or
      2. the work is commissioned by the University; or
      3. creation of the work entailed significant use of University personnel, funds, or facilities; or
      4. other arrangements are required by the University’s contractual obligations; or
      5. it is otherwise agreed upon in writing between the University and the creator of the work.

        INDENT TO THE LEFT
        Exceptions to this policy may be granted by the Provost of the University or by his designees.

    2. Explanation of Terms
      1.  Copyright
        1. Copyrightable works

          Under the federal copyright law, copyright subsists in “original works of authorship” which have been fixed in any tangible medium of expression from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Among others, these works include, but are not limited to, software, computer programs, programmed instructional material, and the like.

        2. Scope of copyright protection
          1. Definition of material protected by copyright laws – Copyright protection does not extend to any idea, process, concept, discovery, or the like but only to the work in which it may be embodied, illustrated, or explained. For example, a written description of a manufacturing process is copyrightable, but the copyright prevents only unauthorized copying of the description; the process described can be freely copied unless it enjoys some other protection, such as a patent.
          2. Rights of copyright owner – Subject to various exceptions and limitations provided for in the copyright law, the copyright owner has the exclusive right to reproduce the work, prepare derivative works, distribute copies by sale or otherwise, and display or perform the work publicly. Ownership of copyright is distinct from the ownership of any material object in which the work may be embodied. For example, if one purchases a videotape, one does not necessarily obtain the right to make a public showing for profit.
      2. Works made for hire

        Under the Copyright Act, “a work prepared by an employee within the scope of his or her employment” is a work for hire. This is a broad definition. Also, certain commissioned works are works for hire if the parties so agree in writing. The employer by law is the “author,” and hence the owner, of the works for hire for copyright purposes. University ownership in a work for hire may be relinquished only through written agreement signed by an authorized official of the University. Such written release shall be granted upon request if the University clearly has no basis for claiming rights.

        In interpreting the work-made-for-hire clause, the University shall recognize the obligation of faculty members to publish scholarly works and shall follow the University’s long- standing practices regarding copyrights and royalties (or other income) pertaining to works which result from author-initiated, individual effort. The copyright policy (Policy Manual, Policy No. 6-7, II, Section B.1.) states that “In accordance with established custom at institutions of higher learning, copyright ownership of textbooks, manuscripts, nonprint materials, produced by the individual effort of the author, as well as any royalties therefrom, accrue to the benefit of the author.” There are some exceptions and qualifications to this general rule, which are given in the copyright and software policies respectively.

      3. Computer software

        “Computer software” means a set of computer programs and the manuals or documents associated with these programs. “Program” is defined in the copyright law as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result” (Copyright Act, 94 Stat. 3015, 3028, amending 70 U.S.C. sections 101, 117).

    3. Originator’s Responsibility

      Much of the software generated at the University is of interest only to the originator or may be of wider interest for reasons of scholarship only. In such cases, the material may have no market potential, and a formal determination of rights is not required. Where there is a possibility of producing income from the software, the originator must notify the Senior Vice Provost for Research (or other delegated University official) when the commercial potential becomes apparent. Such timely notice preserves the rights of the individual to the software in cases where the University has no equity. If further development of a computer program materially changes the circumstances governing the University’s equity in software, the Senior Vice Provost for Research must be notified.

      To safeguard the individual’s and the University’s interests in the software, a copyright notice must be placed on the software when it is distributed to others, whether or not the software seems to be marketable at that time.

    4. Administrative Responsibility

      The administration of the policy set forth in this document is the responsibility of the Provost of the University. The Provost, however, has delegated day-to-day administration to the Vice Provost for Research, with the understanding that no departures from the stated principles of this policy will be made without the Provost’s prior concurrence.

    5. Establishment of Procedures

      Procedures to implement this policy shall be established and, as necessary, modified from time to time by the Provost or his designee. Sufficient time will be allowed for public comment and review before any material modifications to these procedures are implemented. Such procedures and modifications shall be issued as (a) separate document(s) attached to the policy.

  3. PROCEDURES
    1. General Principles

      In keeping with the general aims and charter requirements of the University, the generation of computer software by faculty, staff, and students is strongly encouraged. Whenever possible, property rights in such material shall vest in the originator of the work. In some cases, such rights shall reside in the University. In either case, income derived from the work may be shared by the University and the originator depending on the circumstances.

      It is now widely recognized that the University resources employed in the production of software may not be limited to the use of some job time, an office, a library, and a secretary. Computer facilities and other special equipment owned or leased by the University are often involved in the modern multimedia publication, and such work frequently requires release time, special funding, and the assistance of University-employed specialists. For such material, prepared with substantial or special University support, exclusive ownership of the product by the originator may be inequitable. There is a need at this time to establish both procedures and a policy that go beyond protection of the traditional faculty interests in scholarly production and that takes account of the current U.S. copyright law. The procedures presented in this document will be followed in determining ownership and income rights related to software developed at the University.

    2. Definitions

      The following definitions apply to terms used in these procedures:

      1. “Computer” means a device capable of accepting information, applying prescribed processes to the information, and supplying the results of those processes.
      2. “Computer software” means a set of computer programs and the manuals or documents associated with the programs. “Program” is defined in the copyright law as “a set of statements to be used directly or indirectly in a computer in order to bring about a certain result.”
      3. “University personnel” means University faculty, staff, and students.
      4. “Originator” means one or more persons contributing to the creation of computer software.
    3. Determination of Rights

      A large volume of software is being generated at the University, and a larger volume is expected in the future. Much of this material is of interest only to the originator or may be of wider interest for reasons of scholarship only. In either case, the material may have no market potential, and a formal determination of rights is not required. If any such material is to be supplied to others, it must be marked with a copyright notice before distribution to protect the interests of the originator and the University. Such marking will facilitate billing the recipients for nominal packaging and shipping costs, and will also preserve rights if the material later has market value. In the latter case, rights will be determined according to these procedures.

      Rights in marketable software will be determined by the circumstances surrounding its creation. Generally the originator will be most familiar with these circumstances, and for that reason he or she should notify the Vice Provost for Research as early as possible, with particular attention to

      1. identifying the sponsor, if any, of the project or program;
      2. stating whether the activity resulting in development of the software is within the originator’s normal activities and responsibilities with respect to his or her University employment;
      3. indicating the extent to which personnel support, software, equipment, or physical facilities provided by the University were used in the work which led to the software;
      4. indicating whether the software was developed under terms of a consulting agreement between the originator and a client; and
      5. noting the existence of any agreement between the originator and the University with respect to the software.

        INDENT TO THE LEFT

        Based on the information supplied by the originator and such other relevant information as may be available, the Vice Provost for Research shall determine the extent to which the University has rights to the material by applying the procedures of section D, below.

        INDENT

        If it is determined by the Vice Provost for Research that the University has rights in the software, the originator agrees to assign all right to, title to, and interest in said software to the University in consideration of the Policy on Computer Software and the compensation provided by his or her employment remuneration. The Vice Provost for Research will promptly determine whether it is appropriate to file either a patent or a copyright application on the software and will initiate such action as required.

        INDENT

        Software developed by University personnel under terms of consulting contracts fall within the provisions of this section C. University personnel may not use University facilities for work related to consulting agreements without prior written approval from the appropriate dean or director. It is the responsibility of University personnel to advise potential consultation clients of their University obligations prior to entering into consulting agreements. (See Faculty Handbook, Sect. III-H, Outside Employment.)

    4. Rights based on Categories of Work
      1. Work Conducted Independently by University Personnel

        Software that is created wholly at the expense of the originator and without use of University facilities, equipment, materials, or specialists is the property of the originator unless section D5 applies. The originator of such work shall grant the University royalty-free rights to copy and use the work for its normal nonprofit research and teaching activities. At the originator’s request, the Provost will state in writing that the University has no interest in the software.

        At the sole option of the originator and with the University’s prior assent, such software may be assigned to the University.

      2. Work Financed with Funds Administered by the University or Which has Involved the Significant Use of University Facilities, Equipment, Materials, or Specialists and in Which the University and the Originator are the Sole Parties in Interest

        Such software shall be promptly evaluated by the Vice Provost for Research for copyrightability or patentability and then

        1. released to the originator if found not to be of interest to the University; or
        2. if of interest, covered by patent in the name of the inventor or by statutory copyright in the name of the University by the Vice Provost for Research. The Vice Provost for Research shall thereafter attempt to bring the software into appropriate use internally, externally, or both to derive maximum benefits therefrom for all parties in interest and shall have sole responsibility for marketing the software. This responsibility may be delegated to or shared with the originator or other member of University personnel when appropriate. (See also section D5 for treatment of works within the scope of the originator’s employment.)
        3. Work Financed Wholly or in Part by Government Funds

          The University is obligated to report to the appropriate government agency all software derived from work which has had any financial support from the government of the United States, for determination of the government’s rights and interests. This determination may result in

          1. the government deciding that the public interest requires that the software be disclosed in the open literature; or
          2. the government acquiring and reserving to itself principal or exclusive rights, in which case exploitation of the software rests with the government; or
          3. the government releasing the software to the University, in which case the University shall follow the procedures of paragraph D2, above.

            INDENT

            Irrespective of which of these alternatives is elected by the government, the government usually retains rights to a royalty-free, nonexclusive, irrevocable license throughout the world under any copyright or patent which may be issued on the software, or to free use of the software for government purposes; and rights to the software granted by the University are subject to prior retained government rights. If the University releases the software to the originator, the release shall specify that the originator agrees to convey to the University such rights as the University may need to fulfill its obligation to the government.

        4. Work Financed Wholly or in Part by Industrial, Philanthropic, or Other Organizations, or by Individuals, Under Contracts or Written Agreements with the University

          Rights with respect to software in this category are governed by the terms of the individual contracts or agreements, and the principal investigator is responsible for informing co-workers of their rights and obligations under such contracts or agreements before initiation of the work. Software which is not required to be assigned by contractual terms shall be processed by the University under the procedures of section D2, above.

        5. Work Made for Hire

          Public Law 94-553 (Oct. 19, 1976) Appendix I defines a “work made for hire” “a work prepared by an employee within the scope of his or her employment,” or as certain specially ordered or commissioned works covered by a written agreement. The law further states that such works are the property of the employer. It is clear that many works considered under sections D1 and D2, above, will fall within the scope of the originator’s employment and will therefore be the property of the University unless released to the originator by a written document.Such written release shall be granted upon request if the University clearly has no basis for claiming rights. In such cases the University retains the royalty-free right to copy and use the work for its normal nonprofit research and teaching activities.In interpreting the “work made for hire” clause, the University shall recognize the obligation of faculty members to publish scholarly works and shall follow the University’s long-standing practices regarding copyrights and royalties (or other income) pertaining to works which result from author- initiated, individual effort: “In accordance with established custom at institutions of higher learning, copyright ownership of textbooks, manuscripts, nonprint materials, produced by the individual effort of the author, as well as any royalties therefrom, accrue to the benefit of the author.” (Policy Manual, Legacy Policy No. 6-7).

    5. Arbitration of Disputes

      If the University and the originator cannot agree with respect to any of their respective rights or obligations hereunder, such dispute shall be submitted for determination to an arbitration panel of three members chosen from the University community and consisting of a member named by the originator, a member named for the University by the Provost, and a chair selected by mutual agreement of these two nominees. The decision of a majority of this panel shall be final and binding upon both the originator and the University.

    6. Distribution of Income

      Income which is received by the University from the sale or licensing (leasing) of software in which the University has an interest (see section D above) shall be shared with the originator unless the University retains the entire right to and interest in the software.Sharing of income shall be governed by the following considerations:

      1. Income received by the University from software covered by the policy shall be used first to reimburse the University for all copyrighting, patenting, and marketing costs. Income which exceeds reimbursable expenses shall be divided one-third to the originator, one-third to the unit, and one-third to the University, unless some other arrangement has been made by the parties in interest. Such an arrangement should be made as soon as commercial potential becomes apparent.
      2. When software is developed under contract with an outside agency as provided in sections D3 and D4, the distribution of income shall be in accordance with the terms of the contract. In the event that any contract with an outside agency provides for the University to receive unrestricted funds from developed software, such funds shall be distributed as provided in F1, above.
      3. If royalties or other income accrue under an agreement granting licenses for software developed independently by two or more originators, the distribution of income among the originators shall be determined by a University committee, using the procedure of F1 as a guide. This committee, which is composed of the Provost, the Vice Provost for Research and the appropriate dean or director, shall utilize legal, accounting, and scientific consultants as deemed necessary in making decisions. If one or more of the originators involved disagrees with the decision of the committee, the matter shall be resolved by arbitration as provided in section E.
      4. The originator’s share of income generated by software developed by the joint efforts of two or more originators shall be divided equally among them unless an agreement specifying a different distribution is filed with the Senir Vice Provost for Research before work is started.
      5. The University’s and units’ shares of income received under section D2 and D5 shall be used for research or educational purposes.
    7. Other Procedures
      1. Whenever software that is determined to be the property of the University is released to the originator, the University
        1. shall retain the royalty-free right to copy and use the software for its normal nonprofit teaching and research purposes and
        2. may claim a share in any income received by the originator, after the deduction of his or her expenses, as a condition of such release. Under this provision the University shall not be entitled to a share of income which would reduce the originator’s share to an amount less than that provided for under section F.
      2. Whenever the University determines that it has no proprietary interest in software covered by the policy, or whenever the University releases software to an originator, the originator agrees not to use the University, or the University’s name, in the exploitation of such software without prior written approval by the University.
      3. The originator agrees to execute all documents, including assignment of the software to the University or its designee, required for legal disposition of rights relative to such materials.
      4. It is the originator’s responsibility to provide the University with a mailing address through which he or she can be reached. This address, as well as any other communications made according to the procedures stated in this document, must be sent to the Senior Vice Provost for Research. If the University is unable to reach the originator through this address and no forwarding address is provided, the originator waives the right to be notified.
      5. The originator is required to affix the words “Copyright 19– by the University of Delaware. All rights reserved.” to all copyrightable software to which the University has rights.
      6. The originator warrants that all software he or she develops is his or her original work and is free from infringement of existing copyright. If the originator incorporates copyrighted materials in such software, he or she shall provide proof of release from the copyright holder prior to such inclusion. Further, the originator agrees to take no action or enter into any agreements or arrangements under which any other person or organization may develop rights in such software without the prior written approval of the University.
      7. When rights to software are vested in the University, the University has the right to modify the software either for internal use or for licensing purposes when such modification shall be deemed necessary and when the originator is for any reason unable or unwilling to make such modifications within 90 (ninety) days of notification that modifications are necessary. In this event, the originator may request that one copy of the unmodified software be retained in the University’s archival files.
      8. When rights to software are vested in the University, the University has the right to have foreign-language versions prepared and copyrighted.
      9. When two or more originators working at two or more institutions (one being the University of Delaware) contribute to a work, ownership and income distribution shall be determined by the terms of the agreement between the institutions, or if no agreement exists, by the procedures of section H.
    8. Other SituationsApplications for computers and requirements for software are steadily evolving and increasing. It is probable that not all situations which may arise are adequately covered in the foregoing procedures. In such cases the Vice Provost for Research, in consultation with the originator of the work in question and the appropriate dean or director, shall establish any required new or modified procedures. Such procedures shall become effective and shall be incorporated in this document upon approval by the Provost. (See section E, “Establishment of Procedures,” above).Some cases not clearly covered by these procedures may require ad hoc treatment. (In these situations adding the procedures to this document may not be necessary.) As an example, books which include software will clearly have to be treated as special cases. Determination of copyright ownership and income distribution will depend on such factors as the nature of the work, i.e., textbooks, research, etc; the relative significance of text vs. software; the originality of the software; and the utility of the software independent of the text.Other works or systems which include software may require similar ad hoc treatment. In all such cases the ownership and income distribution factors shall be determined by the Vice Provost for Research in consultation with the originator and the appropriate dean or director.

Related Links

General Counsel Page for this Policy

 

Policy Details:

OWNER: Provost

SECTION: Research, Sponsored Program, Technology Transfer and Intellectual Property Policies

RESPONSIBLE OFFICE: UD Research Office

POLICY NUMBER (Legacy): 6-09

ORIGINATION DATE: July 15, 1986

REVISION DATE(S):

June 5, 1989; March 1, 1996; January 18, 2008; August 11, 2008

Policy Source Open Policy



Policy: Intellectual Property
Copyright and Fair Use Policy
Policy

Copyright and Fair Use Policy

  1. SCOPE OF POLICY
    This policy addresses the use of copyrighted material for instructional purposes and applies to all university departments, faculty, staff and students.
  2. DEFINITIONS
    1. “Copyright” shall be defined as a collection of rights granted authors and creators for a limited time. The U.S. Constitution granted Congress “the Power …to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors exclusive Right to their respective Writings and Discoveries.”Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly or to display the copyrighted work publicly. In the case of sound recordings, the copyright owner has the right to perform the work publicly by means of a digital audio transmission. These exclusive rights are freely transferable and may be licensed, sold, donated to charity or bequeathed to the copyright owner’s heirs. It is illegal for anyone to violate any of the exclusive rights of the copyright owner.

      The exclusive rights of the copyright owner are limited. The Copyright Act contains a number of statutory limitations covering specific uses for educational, religious and charitable purposes. The best known of these is fair use.

    2. “Copyright Author” is defined as either the person who creates the work, the person or business that pays another to create the work in an employment context, or the person or business that commissions the work under a valid work-for-hire contract.
    3. “Copyright Owner” is defined as either  the person or entity listed as the owner in the U.S. Copyright Office, usually the original author or developer or a person or entity to which an exclusive part of the copyright has been transferred in writing. (See Policy Standards & Procedures section for an enumeration of these four statutory factors.)
    4. “Fair Use” shall be defined as an exemption under the Copyright Act which permits the fair use exemption (Section 107, U.S. Copyright Law) limited reproduction of copyrighted works for purposes such as criticism, comment, news reporting, teaching or research without the permission of the copyright owner. While many cases of instructional use are permitted by the fair use exemption, the law does not provide clear directives for what is and what is not fair use. Each case must be decided on its own merits.  Four statutory factors must be weighed in making a fair use analysis.
  3. POLICY STATEMENT
    The University of Delaware expects all members of the University community to respect copyright law (Title 17, U.S. Code). Except as allowed by law, it is a violation of this policy and law for University of Delaware faculty, staff or students to reproduce, distribute, display publicly, perform, digitally transmit (i.e. in the case of sound recordings) or prepare derivative works based upon a copyrighted work without permission of the copyright owner.Recognizing that copyright law provides certain exemptions that limit the right of the copyright holder (www.copyright.gov/title17/92chap1.html#107), this policy provides guidance to University authors using copyrighted material for educational purposes.
  4. POLICY STANDARDS AND PROCEDURES
    1. The doctrine of “fair use” is one of the more important limitations to copyright law. The doctrine of fair use has been developed through a substantial number of court decisions over the years and has been codified in section 107 of the copyright law. Section 107 also sets out four factors to be considered in determining whether or not a particular use is fair.
      1. The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes
      2. The nature of the copyrighted work
      3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole
      4. The effect of the use upon the potential market for, or value of, the copyrighted work
    2. Thoughtful analysis of these four factors in relationship to the need for the copy must be made in order to arrive at a good faith determination of fair use for a specific situation. Authors are encouraged to use the Fair Use Worksheet attached to this document and to file the completed worksheet with the product. When relying on fair use, proper attribution should be included and material should be marked to indicate copyright protection.
    3. Applications of Fair Use: The University Library has developed guidelines to provide assistance to individuals determining if fair use applies to their particular case. These guidelines may be found on the Library Copyright Research Guide (guides.lib.udel.edu/copyright). The University encourages use of the four factors delineated in the law (and listed above in section IV A) to guide decision making and provides a Fair Use Worksheet with this document (Appendix A).

Related Links

General Counsel Page for this Policy

 

Policy Details:

OWNER: Provost

SECTION: Research, Sponsored Program, Technology Transfer and Intellectual Property Policies

RESPONSIBLE OFFICE: University of Delaware Library

POLICY NUMBER (Legacy): 6-15

ORIGINATION DATE: July 1, 2005

REVISION DATE(S):

1-Jul-15

Policy Source Open Policy



Policy: Intellectual Property
Copyright Processing and Funding
Policy

Copyright Processing and Funding

  1. PURPOSE
    To outline the University’s policy on processing and funding copyrightable material.
  2. POLICY
    1. ForewordThe University of Delaware, hereinafter referred to as the University, recognizes that its faculty and staff, as part of their normal research and other scholarly activities, may develop materials which, in the interest of the author and the University, should be protected by copyrights. Accordingly, it is considered desirable to provide policies and procedures that:
      1. assist faculty and staff in realizing tangible benefits from their creative efforts;
      2. establish guidelines for defining the rights of ownership to materials produced by faculty or staff;
      3. insure control of use, within the University structure, of curriculum material developed at the University by a faculty or staff member;
      4. insure the author against loss of rights of reproduction for non-commercial use of material in which proprietary rights rest with the University; and
      5. provide guidance for safeguarding against loss of proprietary rights through inadvertent public disclosure.
    2. General Principles
      1. In accordance with established custom at institutions of higher learning, copyright ownership of textbooks, manuscript, nonprint materials, etc., produced by the individual effort of the author, as well as any royalties therefrom, accrue to the benefit of the author. If during the preparation of the material, the University incurs some incremental costs as defined in Section D.1a, the author must reimburse the University for these costs in order to obtain full equity in the copyright.
      2. When material has been prepared under a specific written contract, grant, or assigned project agreement, the ownership of the copyright will be determined by the terms of the contract, grant, or assigned project agreement. Assigned project is used herein to refer to a University project covered by a written assignment under which the assignee is allocated time to carry out the work.

        These two statements represent the basic principles of the policy. The balance of the policy only expands upon these principles and presents administrative procedures.

    3. Administrative Responsibility and Procedures

      The copyright policy is administered by the Office of the Provost. The responsibility for the everyday administration of the policy has been delegated to the Vice Provost for Research.

      Any member of the University faculty or staff who produces material intended for publication or release shall notify his/her departmental chairperson or division head of intent to publish, and shall provide sufficient information to determine the equity interests of the University where it is appropriate. The chairperson shall review this material, considering the contractual obligations of the University and the possible copyright value of the material. When in doubt the counsel in the Research Office should be consulted. In the event that the University is judged to have rights or obligations, the author shall give copyright protection to the material in the name of the University. A copy shall then be sent to the Vice Provost for Research Office, who will register the copyright. Any decision on rights or equity in the copyright will be made by the Vice Provost for Research after consultation with the author.

    4. Rights and Obligations Of University and Author
      1. Works Resulting from Activities Funded within the University.
        1. Where there are incremental costs to the University associated with the production of creative works by a member of the University community–for example, overtime typing costs, hiring of extra secretarial help, costs of tape, film, or other expendable materials–the author shall reimburse the University for such out-of-pocket costs if he/she is to own the copyright. Under these circumstances, the University will not ordinarily charge rental on University facilities, including equipment or space, when its use does not interfere with other University uses.
        2. The University provides support facilities to assist faculty and staff in strengthening existing educational programs or in creating new ones. Unless specifically covered by an agreement, assignment, contract, or grant entered into before initiation of the work, title to such materials remains with the author; but, in recognition of the services provided, the author must grant the University a royalty-free right to reproduce and use such works within the University.

          In the case of works that result in very substantial income to the author, it is the custom of some universities that the author makes a gift to the University in recognition of the contribution to the work made by the availability of University facilities. It is hoped that this custom will be followed at this University, but this decision is left to the judgment and good will of the author and is not stated as a requirement or even an expectation.

      2. Works Resulting from Activities Sponsored by an Outside Agency.

        Ownership of works in this category is controlled by the terms of the grant or contract which provides the funds in support of the work. In the case of government contracts or grants, the government always retains the right to duplicate and use the works for government purposes. Where no obligation to convey to the sponsor exists, all rights revert to the author with the reservation to the University of the right of reproduction and use in the furtherance of its educational responsibilities.

      3. Works Resulting from Activities Sponsored by the University.

        Works in this category may be divided into two classes, (a) those resulting from partial funding by the University, and (b) those resulting from an assigned project with total funding by the University. Rights in these cases are as follows:

        1. For materials developed with partial University funding as defined in Section D.1a, and when the author does not reimburse the University for out-of-pocket costs, joint rights to ownership and disposition of these materials, and sharing of any royalty income as provided in Section F will be negotiated between the University and the author as stated in Section C.
        2. For materials developed as the result of an assigned project with total funding by the University, rights of ownership abide with the University, although title to such materials may be assigned to the author at the option of the University with sharing of any royalty income as provided in Section F.

          The word “funding” as used in this section means funds from the University’s resources and also funds from outside sources administered by the University.In instances where title to the copyright rests with the University, the University, in recognition of the author’s input, will provide to the author, upon written request, a copy of the material and the right of duplication for the author’s own use.

    5. Settlement of Disputes

      In accordance with existing University regulations, unreconcilable differences shall be referred for final disposition to a three-member panel consisting of the author or his/her representative, the Provost or his/her representative, and a third member to be selected from the University community by the first two members.

    6. Division of Income

      In situations where the University has an equity, and income accrues either to the University or to the author as a result of sales or merchandising of a work, the income shall accrue to the University, until the University has recovered its out-of-pocket costs for securing the copyright, advertising, printing, etc. Thereafter, the author shall receive 75% of the income and the University 25% of the income unless, before royalty payments begin, some other arrangement has been agreed upon by the parties in interest. In computing University costs, not only incremental costs but rental value of any major equipment shall be included.

    7. Limitations

      No part of this document shall abridge in any way the rights of any interested party to remedy an alleged breach or ruling under this policy statement through legal action.

Related Links

General Counsel Page for this Policy

 

Policy Details:

OWNER: Provost

SECTION: Research, Sponsored Program, Technology Transfer and Intellectual Property Policies

RESPONSIBLE OFFICE: UD Research Office

POLICY NUMBER (Legacy): 6-07

ORIGINATION DATE: October 1, 1981

REVISION DATE(S):

June 5, 1989; March 1, 1996; July 1, 2005; January 18, 2008; August 11, 2008

Policy Source Open Policy



Form: Intellectual Property
FIN Proposal Approval Summary Form
Form

FIN Proposal Approval Summary Form

This intellectual property form helps to manage, record and protect the intellectual property generated by research done at the University of Delaware. For more information regarding intellectual property and research, please refer to the Regulatory Affairs page. If there are specific questions, please contact Regulatory Affairs at 302-831-2136.

 

Form Details:

OWNER: Research Office

RESPONSIBLE OFFICE: Research Office

Download Form Open Form

Policy: Human Subjects in Research, Intellectual Property
Guide to Intellectual Property
Policy

Guide to Intellectual Property

The Ratner Prestia Document gives an overview of the different aspects of patents, trademarks, copyrights, and trade secrets such as how protection is gained, the duration of that protection, who is entitled to the rights, and more.

 

Policy Details:

OWNER: Ratner Prestia

RESPONSIBLE OFFICE: Research Office: UD Research Regulatory Affairs

ORIGINATION DATE: July 20, 2007

Policy Source Open Policy



Policy: Intellectual Property
Instructional TV/Media Materials Contracts
Policy

Instructional TV/Media Materials Contracts

  1. PRINCIPLES AND OBJECTIVES
    The educational and research activities of the University of Delaware can be enhanced by employing modern audiovisual technology. The goal will be to produce audiovisual works of the highest quality through the joint effort of University of Delaware faculty, professional staff, and technical specialists.

    The objectives of this policy are as follows:

    1. to extend University educational and research opportunities outside and within the traditional campus setting through audiovisual means;
    2. to serve the best interests of the University, instructors, and the public by producing, using, and distributing only audiovisual works of the highest possible quality;
    3. to foster a high level of cooperation between participating instructors and the audiovisual works production staff;
    4. to encourage participation by instructors with professional qualifications most appropriate for each specific audiovisual work;
    5. to preserve traditional University practices and privileges with respect to the generation and publication of scholarly works and the right of instructors to determine course content;
    6. to foster the free and creative expression and exchange of ideas and comments;
    7. to establish principles and procedures for equitably sharing income derived from audiovisual works produced at the University; and
    8. to protect the University’s assets and imprimatur.
  2. POLICY STATEMENT
    It is the policy of the University to provide the necessary facilities and technical staff to create audiovisual works in cooperation with participating instructors and to release and distribute such works in accordance with the foregoing objectives and the following provisions.
  3. RELATION TO OTHER UNIVERSITY POLICIES
    This policy shall be consistent with the fundamental educational and research missions of the University and with all policies related to those missions, including the policies governing academic professionalism, academic freedom, copyrights, software, patents, and consulting.
  4. DEFINITIONS
    The following definitions apply to terms used in these procedures:

    1. “Audiovisual works” are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied. This definition shall not be construed as including software or audiovisual works that are substantially based upon software.
    2. A “device,” “machine,” or “process” is one now known or later developed.
  5. ADMINISTRATIVE RESPONSIBILITY
    The administration of the policy set forth in this document is the responsibility of the Provost of the University. The Provost, however, may delegate day-to-day administration to an appropriate University official with the understanding that no departures from the stated principles of this policy will be made.

    The Provost or her/his designee is responsible for application of the principles of this policy to all activities involving the making of audiovisual works, for making independent assessment of commercial potential of audiovisual works projects where appropriate, and for promptly reporting perceived potential to the Associate Provost for Research & Patents.

    The Provost or her/his designee of the structure established by the University to produce, distribute, and market audiovisual works shall be advised by the University Faculty Senate Committee on Instructional, Computing and Research Support Services (or its successor). The committee shall advise the Provost or her/his designee on a regular basis on the merit of proposed audiovisual works projects.

  6. FACULTY PARTICIPATION
    All participation by faculty in the creation of audiovisual works shall be fully voluntary, and participation by full-time faculty shall not be a condition of employment.
  7. USE OF AUDIOVISUAL WORKS IN FACULTY EVALUATION
    1. On request, a copy of an audiovisual work shall be loaned by the University to each faculty member who has been a primary participant in the making of that work for her/his use in faculty evaluation (e.g., promotion, tenure, and merit increase). Faculty members wishing to purchase a copy of the work shall reimburse the University for the direct costs of duplication of the work or parts thereof.
    2. In no circumstance may an audiovisual work be used in faculty evaluation without the written permission of the faculty member who has participated in the making of that work.
  8. OWNERSHIP OF INTELLECTUAL PROPERTY
    All intellectual property rights in audiovisual works produced in accordance with this policy by University staff and with University facilities, including rights to copy, use, and distribute, shall reside in the University. (See XIX Independently Produced Works.) Administration of the University’s intellectual property rights shall be governed by the following:

    1. In all circumstances, the instructor participating in the making of an audiovisual work will determine the content of the production, and with respect to content shall have the right of approval prior to initial use or distribution and thereafter at the time of periodic reviews of the material. (See Section XVIII.)
    2. With respect to production standards and quality, these approvals shall be by mutual consent of the instructor and the appropriate University administrative officer. When mutual consent is not reached a three-member panel of peers shall arbitrate the disputed issues. (See Section XXII.)
    3. The University shall seek approval before use or release of a credit course from the head administrator(s) or chair(s) of the relevant academic unit(s) or department(s) (1) for the employment of any outside instructional personnel for the making of audiovisual works and (2) for the works made using outside instructional personnel.
    4. Use of an audiovisual work for a substantial part of the content of a course giving academic credit at the University and taught by an instructor other than the primary participant in the making of the work shall require approval by both the creator of that work and by the administrator or chair of her/his unit or department (see also Section XIIA3 concerning compensation). No such approvals shall be required in instances of “fair use” of an audiovisual work, i.e., the use of the work for an insubstantial part of the course content.
    5. If the University employment of the participating instructor terminates, the University retains the right to distribute and use the audiovisual work for whatever part there may remain of a period of three years from the latest of the dates on which the work was released, reviewed, or revised. However, prior to the end of the three-year period, one of the following actions shall be initiated by the University:
      1. Acting jointly, the University and the former instructor or a person rightfully representing her/him or her/his estate shall undertake periodic reviews of the audiovisual work to determine if it should continue in release (as per procedures in Section XVIII).
      2. The University shall negotiate a contract with the participating (now former) instructor or with her/his estate stipulating the conditions for subsequent use of the audiovisual work and the procedures for its review or revision.
  9. ASSIGNMENT AND WARRANTY
    The participating instructor agrees to execute all documents, including assignment of the works to the University or its designees, required for legal disposition of rights relative to such materials.

    The participating instructor shall warrant that the material she or he supplies in course content does not to the best of her/his knowledge in any way infringe the property rights of others.

  10. CONTRACT PROCEDURES
    Each audiovisual works project shall be governed by a written agreement (contract) signed by the participating instructor or off-campus personnel and the University. The terms of such an agreement shall be consistent with sections of this policy that are applicable to either University instructors or to off-campus personnel.
  11. COST RECOVERY
    All costs of studio operation related to an audiovisual work shall be recovered by the University from the project income before income distribution provided for in Section XII, Compensation for Audiovisual Works Services. A schedule of costs based on the hourly use of University facilities and personnel shall be published and updated by a designated University administrator and the University Treasurer.
  12. COMPENSATION FOR AUDIOVISUAL WORKS SERVICES
    Compensation shall be paid as provided in Sections XII and XIII to an instructor participating in the production of an audiovisual work in all instances in which the work results in income accruing to the University from the audiovisual work. “Income” for this purpose does not include that tuition paid to the University by students enrolled in a regularly scheduled credit course which is the subject of the audiovisual work in which the instructor is participating as part of her/his workload.

    Compensation paid in accordance with Sections XII and XIII shall be in either one or both of the following forms: 1) The form and amount of the compensation shall be according to the current published schedule upon completion of the work or, where applicable, at the time the University has received the corresponding tuition income; 2) Payment in increments based on income other than tuition received by the University from distribution of the work by live broadcast, delayed broadcast, rebroadcast, sale, lease, or use of the work in an instruction program managed by a public or private party other than the University.

    For purposes of this Section XII, an audiovisual work shall be deemed “complete” when the participating instructor and the production head agree it is ready for release, except that live broadcast works shall be deemed complete at the conclusion of the last broadcast session. “Release” means any method of distribution including but not limited to rebroadcast, sale, lease, or use of the work in an instruction program managed by a public or private party other than the University.

    1. Full Course Audiovisual Works Project: Compensation Paid in the Manner Customary for Overload Payments
      1. Regularly Scheduled Course Taught Also as Audiovisual CourseWhen an instructor teaches a full course that is regularly scheduled as part of her/his workload, the course forms the primary basis of an audiovisual works project, and the University realizes tuition income from the broadcast or external use of the work, the instructor shall be compensated in recognition of the additional work and special considerations required to make the course into an audiovisual course. The form and amount of the compensation shall be according to the current published schedule.
      2. Course Not Regularly Scheduled Taught Specifically for Audiovisual Works ProjectWhen an instructor teaches a full course that is beyond her/his regular teaching load, the instructor shall be compensated. The form and amount of the compensation shall be according to the current published schedule.
      3. Use of Audiovisual Work as Substantial Part of an Academic Credit Course at the University When Taught by an Instructor other than Original Instructor of Audiovisual WorkThe use of an audiovisual work for the substantial content of a course that (a) results in income for the University through the payment of tuition or other fees and (b) is taught by an instructor other than the instructor who was the primary participant in producing the work shall require compensation to the instructor who participated in the making of the work.The form and amount of the compensation shall be according to the current published schedule. In no case shall the compensation be greater than the income realized by the University.
    2. Short Course Audiovisual Works Projects and Special Projects: Compensation Upon Date of Completion of the Project

      When an instructor is a primary participant in a short course, the instructor shall be compensated. The form and amount of the compensation shall be according to the current published schedule.

  13. DISTRIBUTION OF INCOME: COMPENSATION AFTER RELEASE OR USE OF AN AUDIOVISUAL WORK OF A NOT-FOR-CREDIT COURSE
    Income received from use or distribution of audiovisual works of not-for-credit courses shall be distributed through one of two optional methods, one to be selected by the instructor involved:

    Option 1: Income in excess of costs shall be distributed one-third to the instructor, one-third to the production facility, and one-third to the instructor’s academic unit. If Option one is selected, one or more of the published schedules discussed in Section XIIA and B constitute(s) the basis of compensation of the instructor in addition to the distribution defined in this option.

    Option 2: All compensation of the instructor shall be derived under this option; the instructor shall receive no compensation under the terms of Sections XIIA or B. Gross income received from use or distribution of audiovisual works until the production facility has recovered all costs shall be distributed in the following manner: one-sixth to the instructor and five-sixths to the University. The five-sixths shall be shared with the instructor’s academic unit. Upon recovery of costs the instructor’s academic unit’s share shall not be less than one-third of the gross income.

    Distribution of income is to continue under the terms of this section in the event the instructor retires or leaves the employment of the University. Should the instructor die, the income due her/him shall be distributed to her/his heirs.

  14. STUDENT STIPENDS
    Normal rate stipends shall be paid to students for time spent developing or producing audiovisual works under instructor or University direction. Such payments shall be recoverable as costs.
  15. OFF-CAMPUS PERSONNEL
    Persons not University employees may be engaged to develop course materials, to provide instruction, or to provide other services related to the production of audiovisual materials.

    1. Employment of Off-Campus Personnel as Instructors in Audiovisual Works

      The employment of off-campus personnel under contract as instructors in the production of audiovisual works of credit courses shall be subject to the approval of the unit administrator or department chair concerned with the subject matter of the production. Procedures similar to those used to employ off-campus personnel for continuing education shall apply.

    2. Compensation of Off-Campus Instructional Personnel

      Compensation of off-campus instructional personnel shall be under contract negotiated on merit. Royalty payments may be made under such contracts but shall not exceed comparable payments to University instructors participating in the making of audiovisual works.

    3. Compensation of Non-Instructional Off-Campus Personnel

      Compensation of non-instructional personnel shall be set by negotiation but shall in no case include payments based on project income (i.e., royalties).

  16. PAYMENTS TO PROFESSIONAL STAFF AND OTHERS
    No audiovisual production staff person, professional or non-professional, shall be eligible to receive distributions of income. Their efforts shall be considered “work made for hire.”
  17. INSTRUCTIONAL SUPPORT
    At the time of contract preparation (see Section X, Contract Procedures) the participating instructor may request an instructional assistant (e.g., teaching assistant) at the remote site of a broadcast credit course and/or within the University campus. If the request is approved by the unit head, the expense of the instructional assistant(s) shall be paid by the production unit. The form and amount of compensation shall be according to the current published schedule.
  18. POST-RELEASE REVIEW OF AUDIOVISUAL WORKS
    1. Frequency of Periodic Reviews

      Following the release of an audiovisual work, it shall be reviewed at least once every three years. Reviews may take place annually at the request of either the University or the participating instructor.

    2. Participants in Reviews

      Participants in reviews shall include the University’s designated representative and the instructor who was the primary participant in the making of the work or the designated representative of her/his estate. (See Section VIIIA.)

    3. Review Decisions

      Decisions regarding continued use or revision of a work shall be made by the same procedure as in Section VIII, Ownership of Intellectual Property.

  19. INDEPENDENTLY PRODUCED WORKS
    Nothing in this policy shall be construed as limiting instructor or professional staff use of personal recording equipment (e.g., cameras, camcorders, tape decks) for non-profit applications as teaching aids, research tools, or educational purposes, or for personal use for hobbies, entertainment, documentation, or similar applications not related to University academic activities.

    If use of personal equipment results in production of audiovisual works that are related to University academic activities and have (or may later be found to have) possible commercial potential, such use shall be brought to the attention of the Associate Provost for Research as soon as the possible commercial potential is perceived. The Associate Provost for Research will review the circumstances surrounding the creation of the work and, after consultation with the originator of the work, the appropriate dean, and the appropriate chair, will determine the University’s interest in the work.

    If it is found that the University has a substantial interest in the work, the terms of this policy will apply to it. To safeguard the interests of the originator and the University, a copyright notice should be placed on the work before it is displayed or distributed to others.

    Use of such personal equipment for production of audiovisual works having commercial potential shall require approval of the designated administrator. Such approval shall not be unreasonably withheld and shall be based on the relationship of the proposed work to the normal University activities and duties of the faculty or professional staff person seeking approval and on University’s interest in the audiovisual work as measured by the extent of the University’s prior material or staff support of the creation of the work. If the designated administrator determines that the University’s interest in the work is substantial, the work shall be covered under sections VIII and XII of this policy.

  20. CONTRACT PRODUCTION OF AUDIOVISUAL WORKS
    1. Audiovisual Works Financed Wholly or in Part by Government Funds

      The University is obligated to report to the appropriate government agency all audiovisual works derived from work which has had any financial support from the government of the United States, for determination of the government’s rights and interests. This determination may result in

      1. the government deciding that the public interest requires that the works be disclosed in the open literature; or
      2. the government acquiring and reserving to itself principal or exclusive rights, in which case exploitation of the audiovisual work rests with the government; or
      3. the government releasing the audiovisual work to the University.Irrespective of which of these alternatives is elected by the government, the government usually retains rights to a royalty free, nonexclusive, irrevocable license throughout the world under any copyright or patent which may be issued on the work, or to free use of the work for government purposes; and rights to the work granted by the University are subject to prior retained government rights.
    2. Audiovisual Works Financed by Contracts with other Organizations or Individuals

      Rights with respect to audiovisual works in this category are governed by the terms of the individual agreements. Section XXB shall be consistent with the basic underlying principles of this document.

      Any use of professional actors, musicians, or other performing artists in an audiovisual work must comply with the standard contractual procedures of the labor unions or professional associations to which the artists belong. Any use of copyrighted music or recordings in an audiovisual work must comply with the copyright law and the standard procedures of the national licensing agencies.

  21. OTHER SITUATIONS
    Applications of audiovisual materials are steadily evolving and increasing. It is probable that not all situations which may arise are adequately covered in this policy. In such cases, the designated administrator, in consultation with the participating instructor, the appropriate dean/director, and the designated Senate Committee, shall establish any required new or modified procedures. Such procedures shall become effective and shall be incorporated in this document upon approval by the Provost.

    Some cases not clearly covered by this policy may require ad hoc treatment. (In these situations adding the procedures to this document may not be necessary.)

  22. ARBITRATION OF DISPUTES
    If the University and the participating instructor cannot agree with respect to any of their respective rights or obligations hereunder, such dispute shall be submitted for determination to an arbitration panel of three members chosen from the University community and consisting of a member named by the participating instructor, a member named for the University by the Provost, and a member selected by mutual agreement of these two nominees, who will serve as chair. The decision of a majority of this panel shall be final and binding upon both the participating instructor and the University.
  23. EFFECTIVE DATE
    The Board of Trustees of the University of Delaware approved this policy May 1988.

 

Policy Details:

OWNER: Provost

SECTION: Research, Sponsored Program, technology Transfer and Intellectual Property Policies

RESPONSIBLE OFFICE: Office of Graduate and Professional Education

POLICY NUMBER (Legacy): 4-15

ORIGINATION DATE: June 5, 1989

Policy Source Open Policy



Policy: Conflict of Interest, Intellectual Property
Intellectual Property Protection, Ownership and Commercialization
Policy

Intellectual Property Protection, Ownership and Commercialization

  1. PURPOSES
    1. to provide a mechanism for placing in the public realm the fruits of research, while safeguarding the interests of the University, the inventor(s), and the sponsor;
    2. to provide procedures to evaluate the significance of inventions, discoveries, research materials, and works, and the opportunities by which such creative advances may be brought to the point of commercial viability;
    3. to provide adequate legal protection for intellectual property including patent, trademark, and copyright protection for inventions and works falling within the scope of this policy, through the collaboration of University faculty, staff, and students with the assigned attorney(s) and Research Office staff;
    4. to establish principles for determining the rights of the University, the inventor(s), or developer(s) or author(s), and the sponsor;
    5. to provide greater incentives for pursuing and commercializing intellectual property by University personnel;
    6. to assist the inventor(s) or developer(s) or author(s) in realizing tangible benefits from the intellectual property;
    7. to satisfy requirements of certain research grants and contracts; and
    8. to provide a basis for establishment of institutional patent, copyright, and trademark agreements with the federal government and other agencies.
  2. POLICY
    1. General policy statementThe University of Delaware strives to support its faculty, staff, and students by pursuing the commercial development of intellectual and tangible research property resulting from University research. The early transfer of such knowledge and rights is consistent with the University’s mission of creating new knowledge and facilitating its application to the benefit of the public. The University has established policies and guidelines that provide incentives for faculty, staff, and students while protecting the integrity of research (also see Legacy Policy 6-11 related to avoidance of conflicts of interest). The University provides a number of administrative and legal services to inventors and authors to effectively and efficiently pursue intellectual property rights and technology transfer.It is policy of the University that all inventions and discoveries, together with any tangible research materials, know-how and the scientific data and other records of research including any related government protections (collectively “Intellectual Property”), which are conceived or reduced to practice or developed by University faculty, staff, or students in the course of employment at the University, or result from work directly related to professional or employment responsibilities at the University, or from work carried out on University time, or at University expense, or with the substantial use of University resources, shall be the property of the University. An invention shall constitute any discovery, machine, new and useful process, article of manufacture, composition of matter, life form, design, algorithm, software program, or concept that may have commercial value. University faculty, staff, or students employed by the University who discover or invent or develop a device, product, plant variety, method, or work while associated with the University must cooperate with the University in defining and establishing the rights to such inventions, works, materials, and data. This obligation extends to any Intellectual Property, whether or not made on University time with or without use of University facilities.When an invention is made, the inventor shall promptly provide, via the appropriate Department Chair and Dean, and the University Senior Vice Provost for Research, or his/her designee, an invention disclosure statement describing the circumstances under which the invention was conceived and reduced to practice, with particular attention to:
      1. describing the invention, including how the invention is made and used (i.e., its utility or applications), and including the results of a patent search establishing the novelty of the invention;
      2. indicating whether the invention was made under terms of a consulting or other personal agreement between the inventor(s) and client;
      3. indentifying in a business plan the anticipated business/societal value of the invention, and indicating those countries in which patent protection may be desirable;
      4. identifying the sponsor, if any, of the project or program;
      5. stating whether the invention is within the inventor’s normal activities and responsibilities with respect to his/her University employment; and
      6. indicating the extent to which equipment or physical facilities provided by the University were used in the work which led to the invention.

      To implement University Legacy Policy 6-7 on Copyright Processing and Funding, an author or developer who may wish to pursue copyright or trademark protection for a work or development would file a memorandum with the Research Office requesting review of the material and opportunities for intellectual property protection.

    2. Administrative Responsibility
      The administration of the principles and policies set forth in succeeding sections of this document is the responsibility of the Provost of the University. The Provost, however, has delegated routine administration to the Senior Vice Provost for Research, with the understanding that no departures from the stated principles and policies will be made without his/her prior concurrence.Inventions, developments, and works in which the University and the inventor(s)/developer(s) are the sole parties in interest shall be promptly evaluated for filing by the Chair(s) of the Department(s) involved and the Dean(s) of the College(s) involved, and a recommendation regarding how to proceed with patent filing (simple provisional patent application, fully developed provisional patent application, no provisional patent application) shall then be forwarded for review and appropriate action by Office of the Senior Vice Provost for Research and patent counsel for patentability or novelty for registration. Should the Dean(s) of the College(s) involved decide not to proceed with the patent filing, that decision may be appealed to the University Research Council. Following this review and evaluation, the inventions, developments, or works will then:

      1. be referred to counsel, who shall work with the full cooperation of the University inventor(s), to draft, file, and prosecute a patent application or to file a trademark or copyright application, or;
      2. be considered by the University (or the UD Technology Corporation if the Intellectual Property has been assigned to the University’s commercialization affiliate, see Section C-5, below), in collaboration with the inventor(s), for opportunities to commercialize the invention;
      3. be offered to the Federal funding agency when the University initially elected to retain title under the Bayh-Dole statue but the invention and associated patent application(s) are no longer of interest to the University;
      4. be released to the inventor if found not to be of interest to the University or any Federal agency which may have funded the research leading to the invention; or
      5. in certain cases referred to brokers or outside entities with whom the University has contracts to assess commercial potential and interest in their filing and attempting commercial development.
    3. Rights and Obligations of the University, Faculty, Staff, and StudentsThe respective rights and obligations of the University, faculty, staff, and students in various situations are as follows:
      1. University-funded researchIntellectual Property resulting from efforts conducted by faculty, staff, or students, that have been financed wholly by the University or have involved the use of University facilities, equipment, or materials, are covered by section B, above.
      2. Government-funded researchInventions or discoveries that result from efforts financed wholly or in part by Federal funds will be treated in accordance with the provisions of Public Law 96-517, “The Patent and Trademark Amendments of 1980” known as the Bayh-Dole Act. This act provides that the contractor (University of Delaware) may retain full title, right, and interest in inventions made under contract with the government, with certain exceptions for unusual circumstances. Except as specifically superseded by provisions of a specific funding agreement, inventions and discoveries covered by this section will be treated as outlined in section B, above.
      3. Research funded by grants or other contractsIntellectual Property resulting from research conducted by faculty, staff, or students, which research has been financed wholly or partially by industrial, philanthropic or other organizations, or by individuals, under contracts or written agreements are governed by the terms of such contracts or agreements, and the principal investigator is responsible for informing co- workers of their rights under such contracts or agreements before initiation of the research. Intellectual Property not required to be assigned by contractual terms may be processed or disposed of by the University as provided in section B, above.
      4. Intellectual Property resulting from research conducted wholly at the expense of the individual, without use of University facilities, equipment, or materials, and are outside the individual’s normal field of activities and employment responsibilities are the property of the individual, and the University undertakes no responsibility with respect to such Intellectual Property. In all such cases the Provost will confirm the individual’s ownership rights to the Intellectual Property to the inventor(s) or developer(s) to dispose of as the inventor(s) or developers see(s) fit. At the sole option of the inventor(s) or developer(s) and with the University’s prior assent, such Intellectual Property may be conveyed by assignment to the University.
      5. It is the policy of the University, with reference to all creative work of faculty, staff, and students, to recognize the interests of all parties involved, to provide a mechanism for the identification of commercial opportunities, to provide guidelines for making a proper and equitable distribution of benefits, and to assist the inventor(s) or developer(s) in benefiting from his or her creative efforts. It is important to realize, however, that under U.S. law the parties identified as possible joint inventors are those who have contributed to the conception of an invention and sign a declaration attesting to their role. The decision on inventorship is a legal decision and different from the guidelines used to establish co-authorship. In situations where the University pursues commercialization through the licensing or transfer of rights in the Intellectual Property to another entity, the University normally elects to do so by assigning its rights to the UD Technology Corporation, a University affiliate established to facilitate such commercialization.
    4. Roles and Responsibilities in Patent ProcurementThe patent procurement system involves technical and legal efforts over a number of years to obtain meaningful, enforeceable patents to protect valuable intellectual property developed through research programs at the University. After a University inventor files an Invention Disclosure to initiate the patenting process with the Research Office, there are four stages of patent prosecution over a 3-5 year period. The most critical decisions in this process, however, occur within the first 30 months and carry with them significant costs. This policy defines the critical elements and procedures of the process and allocates technical, legal, and financial responsibilities attendant with each element.
      1. Invention Disclosures, prepared by University research personnel, are submitted to the Research Office via the Department Chair(s) and the Dean(s) of the College(s) involved for review, approval, and action as described in Section B above. If approved, the Research Office will arrange for an appropriate U.S. provisional patent application to be prepared and filed with the USPTO through outside counsel. In the case of industry-supported research agreements, the costs associated with the preparation and filing of the provisional application will be borne by the industrial collaborator.
      2. Costs incurred for patenting inventions from research not supported by an industrial partner will be shared as follows.
          1. for the simple form of the provisional patent application, costs will be paid by the Research Office; or
          2. if the fully developed form of the provisional patent application is selected as appropriate and filed, the costs will be shared one-third by the Research Office; one-third by the department(s) of the inventor(s); and one-third by college(s) of the inventor(s).

        If the University determines it will not file, the inventor(s) shall have the right to appeal such a decision to the University Research Council.

      3. If agreed by the inventor(s), the Department Chair(s), and the Dean(s) of the College(s), the provisional patent application will be converted to a non-provisional, utility application and a global foreign application under the Patent Cooperation Treaty (“PCT”) will be filed within one year of the original filing of the provisional application. Costs associated with this industry-supported research agreements, or as follows for all others:
        1. one-third of the costs by the Research Office;
        2. one-third of the costs by the Department(s) of the inventor(s);
        3. one-third of the costs by the College(s) of the inventor(s).If the University determines it does not wish to continue, the inventor(s) shall have the right to appeal such a decision to the University Research Council. If the Dean(s) of the College(s) elect(s) not to proceed and the University does not wish to continue, the invention and associated patent application(s) shall be offered to the inventor(s) as per Paragraph II.B.4 above. If accepted by the inventor(s), they shall be fully responsible for all future costs, governmental notifications, and other obligations. No conversion to a utility application, or filing of a PCT application, will be made until the inventor(s) have developed a detailed plan and/or identified an industrial partner to further develop the invention. The University Intellectual Property Committee will be asked to assist in evaluating the intellectual property for future marketing and utilization and to identify potential industrial partners to further develop the invention.
      4. At 30 months after the original filing of the provisional application, a decision regarding in which foreign countries to pursue a patent (enter the PCT National Phase) by the inventor(s), the Department Chair(s), and the Dean(s) must be made. Costs associated with this selection of countries in which to pursue foreign patents will be borne by the industrial collaborator for industry-supported research agreements, or as follows for all others:
        1. one-third of the costs by the Research Office;
        2. one-third of the costs by the Department(s) of the inventor(s);
        3. one-third of the costs by the College(s) of the inventor(s).If the University determines it does not wish to continue, the inventor(s) shall have the right to appeal such a decision to the University Research Council. If the Dean of the College elects not to proceed and the University does not wish to continue, the invention and associated patent application(s) shall be offered to the inventor(s) per Paragraph II.B.4 above. If accepted by the inventor(s), they shall be fully responsible for all future costs, governmental notifications, and other obligations.
      5. The decision to continue prosecution of the U.S. utility patent application and any associated foreign patent applications shall be reviewed periodically among the inventor(s), the Department Chair(s) of the appropriate Department(s), the Dean(s) of the appropriate College(s), and the University. Costs associated with continued patent prosecution will be borne by the industrial collaborator for industry-supported research agreements, or as follows for all others:
          1. one-third of the costs by the Research Office;
          2. one-third of the costs by the Department(s) of the inventor(s);
          3. one-third of the costs by the College(s) of the inventor(s).

        If the University determines it does not wish to continue, the inventor(s) shall have the right to appeal such a decision to the University Research Council. If the Dean of the College elects not to proceed and the University does not wish to continue, the invention and associated patent application(s) shall be offered to the inventor(s) as per Paragraph II.B.4 above. If accepted by the inventor(s), they shall be fully responsible for all future costs, governmental notifications, and other obligations. NOTE: In the event the patent application has been licensed or is subject to other legal obligations, prosecution of such applications shall continue until expiration or release of such obligation(s).

      6. The Research Office will operate to manage the patent prosecution effort and oversee the activities of outside counsel. The Research Office shall communicate information and coordinate decisions with the inventor(s), Department Chair(s), and the Dean(s) of the appropriate College(s) involved to ensure the implementation of academic directives.
      7. If the patent(s) are successfully licensed, for the purpose of recovering patent prosecution costs, Net Revenues from the licenses will be allocated in accord with the allocation formulas of Section F, below.
      8. Appeals of any decision not to file an application or to discontinue patent prosecution of a pending patent application shall be taken to the University Research Council.
    5. Arbitration of DisputesIn the event the University and the inventor(s) or developer(s) cannot agree with respect to any of their respective rights or obligations hereunder regarding a non-patent procurement matter, such dispute shall be submitted for determination to an arbitration panel of three members chosen from the University community and having a member named by the inventor(s), or developer(s), a member named for the University by the Provost, and a chair selected by mutual agreement of these two nominees. The decision of a majority of such panel shall be final and binding upon both the inventor(s) and the University.
    6. Division of Income
      1. Income received by the University or the UD Technology Corporation from the commercialization of Intellectual Property, including but not limited to upfront technology access fees, royalties, approvals to assign rights, equity interests, compensatory damages for infringement and other direct damages awards (“Revenue”) shall be used first to reimburse the parties (the University, UD Technology Corporation and other University units as appropriate) that shared in the costs for direct assignable or foreseeable future expenses arising in connection with obtaining or litigating the Intellectual Property (“Expenses”). An additional 15 percent of the net Revenue remaining after recovery of expenses shall be retained by the University or UD Technology Corporation for management expenses to cover overhead.
      2. For the case where income is coming from all sources except litigation, the remaining balance, “Net Revenue” shall be distributed quarterly and divided one-third to the inventor(s), one-sixth to the department(s) of the inventor, one-sixth to the College(s) of the inventor(s), and one-third to the University or UD Technology Corporation.
      3. For the case where income is coming from litigation, “Net Revenue” up to $3 million dollars shall be distributed quarterly and divided one-third to the inventor, one-third to the College(s) of the inventor(s), and one-third to the University or UD Technology Corporation. Above $3 million dollars, “Net Revenue” shall be distributed quarterly and divided one-fifth to the inventor, two-fifths to the College, and two-fifths to the University or UD Technology Corporation. Punitive damages and/or treble damage awards obtained in litigation of IP matters shall be retained solely by the University.
      4. If two or more inventors or developers are entitled to share in the portion of “Net Revenue” earned by them under Section II.F(i), the inventors and developers must sign, have notarized, and present to the University an agreement stipulating how such income will be shared among themselves before the University will distribute any “Net Revenue” to such inventors and/or developers. In the absence of an agreement among the inventors providing specific guidance regarding the distribution of their shares of “Net Revenue”, the University (or UD Technology Corporation) shall distribute the inventors’ share of “Net Revenue” in equal shares to each University inventor.
      5. In the event that compensation from the Intellectual Property is in the form of restricted or unrestricted common or preferred stock, such stock will be distributed in accordance with Section II.F(i) as soon as practical after receipt by the University, or the appropriate portion of shares may be registered directly with the inventor(s) or developer(s). It shall be the sole responsibility of the inventor(s) or developer(s) to satisfy any personal tax obligations related to stock distributed to them under Section II.F(i).
      6. When Intellectual Property is created under contract with an outside agency as provided in Sections II.C-2 and II.C-3, the division of income shall be in accordance with the terms of the contract. In the event that any contract with an outside agency provides for the University to receive unrestricted funds from the Intellectual Property, such funds shall be divided as provided in Section II.F(i).
      7. In the event that Revenue is received under an agreement granting licenses for two or more patents or works, the prorating of income among the patents or works shall be determined by the University Patent Committee(see Section II.F(i), above) using the procedure of Section B as a guide. This Committee shall utilize legal, accounting, and scientific consultants as it deems necessary in making its decisions. If one or more of the inventors named in the patents or works involved disagrees with the decision of the committee, the matter shall be resolved by arbitration as provided in Section II.E.
      8. Revenues less than $100.00 received by the University or UD Technology Corporation shall be retained by the University or UD Technology Corporation and not distributed.

 

Policy Details:

OWNER: Provost

SECTION: Research, Sponsored Program, Technology Transfer and Intellectual Property Policies

RESPONSIBLE OFFICE: UD Research Office

POLICY NUMBER (Legacy): 6-06

ORIGINATION DATE: October 1, 1981

REVISION DATE(S):

June 5, 1989; March 1, 1996; March 6, 2002; March 3, 2005; September 6, 2005; May 22, 2007; January 18, 2008; February 28, 2008; August 11, 2008

Policy Source Open Policy



Procedure: Intellectual Property
NIH Manuscript Submission Portal
Procedure

NIH Manuscript Submission Portal

This procedure has been developed to assist in protecting the intellectual property generated by research. Please review the material carefully and if there are any questions, please refer to the Regulatory Affairs page.

PROCEDURE STATEMENT:

  1. Deposit Files: Anyone can submit; however, an author or PI should serve as the reviewer. Reviewers are notified of submissions via e-mail.
  2. Initial Approval: Reviewer associates funding and approves the material for processing.
  3. NIHMS Conversion: NIHMS converts complete deposits to PMC-ready documents and notifies the reviewer via e-mail when they’re available. (approx. two to three weeks)
  4. Final Approval: Reviewer requests corrections to, or approves, PMC-ready documents for inclusion in PMC.
  5. PMCID Assigned: A PMCID is assigned when Final approval is complete and the manuscript is matched to a PubMed Record.

The NIH Manuscript Submission (NIHMS) system supports the deposit of manuscripts into PubMed Central (PMC), as required by the public access policies of NIH and other participating funders.

 

Procedure Details:

OWNER: National Institutes of Health

RESPONSIBLE OFFICE: Research Office

Procedure Source Open Procedure



Form: Intellectual Property
NIH Manuscript Submission Requirement Addendum
Form

NIH Manuscript Submission Requirement Addendum

This intellectual property form helps to manage, record and protect the intellectual property generated by research done at the University of Delaware. For more information regarding intellectual property and research, please refer to the Regulatory Affairs page. If there are specific questions, please contact Regulatory Affairs at 302-831-2136.

 

Form Details:

OWNER: Research Office

RESPONSIBLE OFFICE: Research Office

ORIGINATION DATE: April 2, 2008

Download Form Open Form

ASSISTANCE

Compliance Hotline
Phone: (302) 831-2792

UD Research Office
210 Hullihen Hall
Newark, DE 19716
Phone: (302) 831-2136
Fax: (302) 831-2828
Contact us

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