The University of Memphis

Intellectual Property

POLICIES

All faculty, staff, student employees, graduate students and postdoctoral fellows, as well as non-employees who participate or intend to participate in teaching and/or research or scholarship projects at The University of Memphis are bound by this policy.

• To foster the free and creative expression and exchange of ideas and comment;
• to preserve traditional University practices and privileges with respect to the publication of scholarly works;
• to establish principles and procedures for sharing income derived from copyrightable materials, patentable inventions, and other intellectual property produced at the University; and
• to protect the University's assets and imprimatur.

• Copyrightable Materials
• Inventions and Patents
• Responsibility to Disclose Inventions and Creation of Copyrightable Works
• Application of Intellectual Property Policies
• Administration of Policy
• Licensing and Income Sharing
• Tangible Research Property
• Other Intellectual Property

• Distance Education and Intellectual Property

Copyright is the ownership and control of the intellectual property in original works of authorship that are subject to copyright law. It is the policy of the University that all rights in copyright shall remain with the creator unless the work is a work-for-hire (and copyright vests in the University under copyright law), is supported by a direct allocation of funds through the University for the pursuit of a specific project, is commissioned by the University, or was made or created with significant use of University resources, including personnel, or is otherwise subject to contractual obligations.

A.    BOOKS, ARTICLES, AND SIMILAR WORKS

Except as otherwise stated in this policy, the University of Memphis does not claim ownership to pedagogical, scholarly, or artistic works, regardless of their form of expression. Such works include those of students created in the course of their education, such as dissertations, papers and articles. The University claims no ownership of popular nonfiction, novels, textbooks, poems, musical compositions, or other works of artistic imagination that are not “Institutional Works” as defined in Section 1.B. and were not made or created with significant use of University resources or the services of University non-faculty employees working within the scope of their employment.

B.    INSTITUTIONAL WORKS

The University shall retain ownership of works created as institutional works. Institutional works include works that are supported by a specific allocation of University funds, that are created at the direction of the University for a specific University purpose or that are developed in the course of a project arranged, administered or controlled by the Institution and sponsored by person, agencies or organizations external to the University, absent written agreement to the contrary. Institutional works also include works whose authorship cannot be attributed to one or a discrete number of authors but rather result from simultaneous or sequential contributions over time by multiple faculty and students. For example, software tools developed and improved over time by multiple faculty and students where authorship is not appropriately attributed to a single or defined group of authors would constitute an institutional work. The mere fact that multiple individuals have contributed to the creation of a work shall not cause the work to constitute an institutional work.

C.   USE OF UNIVERSITY RESOURCES

University resources are to be used solely for University purposes and not for personal gain or personal commercial advantage, nor for any other non-University purposes except on a limited and incidental basis. Therefore, if the creator or author of a copyrightable work makes significant use of University resources or of non-faculty University employees in creating the work, the creator must disclose the work to the Office of the Vice Provost for Research and assign title to the University.

The University shall share royalties from copyrighted works assigned to the University with the creator(s) and/or author(s). In accordance with Tennessee Board of Regents Policy, the creator(s) and/or author(s) share shall not be less than forty percent (40%) of the annual net income from the copyrighted work. (See Section 6 "Licensing and Income Sharing" )

E.   RECONVEYANCE OF COPYRIGHT TO CREATOR

When copyright is assigned to the University because of the provisions of this policy, the creator of the copyrighted material may make a request to the Vice Provost for Research that ownership be reconveyed back to the creator. Such a request may, at the discretion of the Vice Provost, be granted if it does not: (i) violate any legal obligations of or to the University, (ii) limit appropriate University uses of the copyrighted material, (iii) create a real or potential conflict of interest for the creator, or (iv) otherwise conflict with University policies or its mission.

F.   CONTRACTUAL OBLIGATIONS OF THE UNIVERSITY

This Copyright Policy shall not be interpreted to limit the University's ability to meet its obligations for deliverables under any contract, grant, or other arrangement with third parties, including sponsored research agreements, license agreements and the like. Copyrightable works that are subject to sponsored research agreements or other contractual obligations of the University shall be owned by the University, unless otherwise provided in the contract, so that the University may satisfy its contractual obligations.

G.   WORKS OF NON-EMPLOYEES

Under the Copyright Act, works of non-employees such as consultants, independent contractors, etc. generally are owned by the creator and not by the University, unless there is a written agreement to the contrary. As it is the University's policy that the University shall retain ownership of such works (created as institutional rather than personal efforts, as described in Section 1.B., above), the University will generally require a written agreement from non-employees that ownership of such works will be assigned to the University.

Examples of works which the University may retain non-employees to prepare are:              

• Reports by consultants or subcontractors
• Computer software
• Architectural or engineering drawings
• Illustrations or designs
• Artistic works

H.   VIDEOTAPING AND RELATED CLASSROOM TECHNOLOGY

 Any courses that are videotaped or recorded using any media are University property, and may not be further distributed without permission from the Provost.  Blanket permission is provided for evanescent video or other copies for the use of students, or for other University purposes. Prior to videotaping, permission should be obtained from anyone who will appear in the final program.

I.    USE OF THE UNIVERSITY'S NAME IN COPYRIGHT NOTICES

The following notice should be placed on University-owned materials in order to protect the copyright:

                  Copyright © [year] The University of Memphis. All Rights Reserved.

No other institutional or departmental name is to be used in the copyright notice, although the name and address of the department to which readers can direct inquiries may be listed below the copyright notice. The date in the notice should be the year in which the work is first published, i.e. distributed to the public or any sizable audience.
Additionally, works may be registered with the United States Copyright Office using its official forms. Forms may be obtained from and questions concerning copyright notices and registration may be addressed to the Office of the Vice Provost for Research.

The University of Memphis desires to promote the transfer of the University's technology for society's use and benefit while generating income to support research and education and to reward the University's researchers. 

All potentially patentable inventions conceived or first reduced to practice in whole or in part by members of the faculty or staff (including student employees) of the University in the course of their University responsibilities or with significant use of University resources must be disclosed on a timely basis to the University as required by Tennessee Board of Regents Policy 5:01:06:00 "Intellectual Property." Title to such inventions shall be assigned to the University, regardless of the source of funding, if any.

A.  APPLICATION 

       The provisions of this section apply to:

• all University faculty and staff, including student workers
• all graduate students and postdoctoral fellows
• non-employees, including students, who participate or intend to participate in research projects at The University of Memphis (including visiting faculty, industrial personnel, fellows, etc.)
• non-employees, including students, who create or discover potentially patentable inventions through or with significant use of University resources

In the case of non-employees, all potentially patentable inventions conceived or first reduced to practice in whole or in part in the course of their participation in research projects at the University of Memphis, or with significant use of University resources, shall be disclosed as required in Section 3 herein, on a timely basis to the University, and title shall be assigned to the University, unless a waiver has been approved.

B.   INSTITUTIONAL WORKS

The University shall retain ownership of inventions created as institutional works. Institutional works include inventions that are supported by a specific allocation of University funds, that are created at the direction of the University for a specific University purpose or that are developed in the course of a project arranged, administered or controlled by the Institution and sponsored by person, agencies or organizations external to the University, absent written agreement to the contrary. Institutional works also include inventions whose inventorship cannot be attributed to one or a discrete number of inventors but rather result from simultaneous or sequential contributions over time by multiple faculty and students. For example, software tools developed and improved over time by multiple faculty and students where inventorship is not appropriately attributed to a single or defined group of inventors would constitute an institutional work. The mere fact that multiple individuals have contributed to the invention shall not cause the invention to constitute an institutional work.
For ownership rights related to distance education and the Regents Online Degree Program, please see TBR Guideline A-075.

C.  USE OF UNIVERSITY RESOURCES

Inventions discovered through or created with significant use of University resources shall be owned by the University.

"Significant use of University resources" includes, but is not limited to:

• the use of specialized, research-related facilities, equipment or supplies, provided by the University for academic purposes
• more than incidental use of University nonfaculty personnel, including, but not limited to Graduate Assistants
• more than incidental use of researcher's own "on-the-job" time

The occasional and infrequent use of the following would typically not constitute “significant use” of University resources:

• routinely available, office-type equipment, including desktop computers and commercially-available software
• reference materials or other resources collected on the University campus, and which are generally available in non-University locations.

Individuals may not make significant use of University resources, including facilities, personnel, equipment, for any non-University purposes, including outside consulting activities or other activities in pursuit of personal gain. (see also UofM Policy 1490, Extra Compensation and Outside Employment) 

The University shall share royalties from inventions assigned to the University with the inventor(s).  In accordance with Tennessee Board of Regents Policy, the inventor(s) share shall not be less than forty percent (40%) of the annual net income from the invention.  (See Section 6 "Licensing and Income Sharing" of this policy.)

E.  RELEASE OF INVENTION

If the University cannot, or decides not to, proceed in a timely manner to patent and/or license an invention, upon request of the inventor(s), it may reassign ownership to the inventor(s) to the extent possible under the terms of any agreements that supported or otherwise related to the work.

F.  ALTERNATIVE DISPOSITION OF RIGHTS
 
In the case of an invention resulting from a government-sponsored project, where the Office of the Vice Provost for Research (OVPR) cannot or chooses not to retain ownership, rights would then typically be retained by the government. In such cases, the inventor may request and be granted rights by the sponsoring agency to an invention made under such an award, provided that a well-conceived and detailed plan for commercial development accompanies the request.

G.  CONTRACT OBLIGATIONS

This policy shall not be interpreted to limit the University's ability to meet its obligations for deliverables under any contract, grant, or other arrangement with third parties, including sponsored research agreements, license agreements and the like. Inventions and/or patentable works that are subject to sponsored research agreements or other contractual obligations of the University shall be owned by the University, unless otherwise provided in the contract, so that the University may satisfy its contractual obligations.

All new faculty must sign a Notice of Temporary Appointment and Agreement of Employment for Faculty, in which they acknowledge and agree to abide by TBR’s and the University’s Intellectual Property policies. In addition, existing faculty, staff, student employees, graduate students and postdoctoral fellows also must abide by both TBR’s and the University’s Intellectual Property policies. Non-employees who participate or intend to participate in research projects at the University are also governed by these same policies. 

The Office of the Vice Provost for Research (OVPR) is responsible administration of this policy and for reviewing terms and conditions of the University's grants and contracts for compliance with University policies on intellectual property rights and openness in research. OVPR also is responsible for the administration of the University's invention reporting and licensing program, the commercial evaluation of inventions, patent filing decisions, petitions to agencies for greater rights in inventions, and negotiation of licensing agreements with industry.

A.  SPONSORED RESEARCH AGREEMENTS

Contracts and grants frequently contain complex provisions relating to intellectual property rights, including copyright, rights in data, royalties, publication and various categories of material including proprietary data, computer software, licenses, etc. Questions regarding the specific terms and conditions of individual contracts and grants, or regarding rules, regulations and statutes applicable to the various government agencies, should be addressed to the OVPR. 

The OVPR and the University's Office of Legal Counsel are available to advise on questions arising under this policy, and to assist with the negotiation and interpretation of the provisions of proposed formal agreements with third parties.

B.  DETERMINATIONS OF OWNERSHIP AND POLICY IN UNCLEAR CASES

Questions of ownership or other matters pertaining to materials covered by this policy shall be resolved by the Vice Provost for Research (or his or her designee) in consultation with the President, the Provost and the Office of Legal Counsel.

C.  ASSIGNMENTS

No assignment, license or other agreement may be entered into or will be considered valid with respect to patents, inventions or copyrighted works owned by the University unless entered into by a University official specifically authorized to do so.

Questions regarding assignment of intellectual property rights should be addressed to the OVPR.

D.  WAIVER OF POLICY PROVISIONS

Waivers of the provisions of this policy may be granted by the President or the President's designee on a case-by-case basis, giving consideration, among other things, to whether the waiver would be in the best interest of the University, the University obligations to any sponsors, and/or whether the waiver would result in a conflict of interest.  

E.  COOPERATION OF FACULTY AND STAFF

Faculty and staff must cooperate with the University, including but not limited to the Office of Legal Counsel, the OVPR and any outside University counsel or other University representatives, in the administration of this policy, including any activities related to the preparation, filing, prosecution or maintenance of any patent application.

A.  LICENSING

The OVPR seeks the most effective means of technology transfer for public use and benefit and, toward that end, handles the evaluation, marketing, negotiations and licensing of University-owned inventions or copyrightable materials with commercial potential.

Computer databases, software and firmware, and other copyrightable works owned by the University, are licensed through the OVPR. Exceptions to this procedure must be approved in advance by the Vice Provost for Research.

The University encourages the development by industry of inventions and technology resulting from University research for public use and benefit. It recognizes that protection of proprietary rights in the form of a patent or copyright are often necessary - particularly with inventions derived from basic research - to encourage a company to risk the investment of its personnel and financial resources to develop the invention. In some cases an exclusive license may be necessary to provide an incentive for a company to undertake commercial development and production. Nonexclusive licenses allow several companies to exploit an invention.

B.  INCOME SHARING

The OVPR handles the evaluation, marketing, negotiations and licensing of University-owned inventions with commercial potential. Royalty distribution is as follows:

Patents: A deduction of 15% to cover the administrative overhead of OVPR is taken from gross royalty income, followed by a deduction for any directly assignable expenses, typically patent filing fees, including attorney’s fees. After these deductions, the remaining revenue (known as “net revenue”) shall be distributed as follows:

When Research Centers, Institutes or Bureaus designated by the Vice Provost for Research to receive Facilities and Administration revenue are involved in the creation of the intellectual property, the inventor(s) or author(s) may assign 5% of net revenues to the Center, Institute or Bureau. This share will be taken equally from the Department and College shares. When more than one department is involved, the inventor(s) shall designate the distribution of the department and college percentages based upon the relative level of a particular department's support of the work leading to the invention. Disagreements involving royalty distribution will be reviewed and resolved by the OVPR; involved parties may appeal the OVPR resolution to the Provost.

Copyrighted Works: Royalty income will normally be allocated in accordance with this section. If copyright   protection alone is claimed, royalties will be allocated in a similar manner, with the "inventor's share" allocated among individuals identified by the investigator (or department head, or the Vice Provost for Research if the individuals are from different departments and/or if the work was not created under a sponsored agreement), based on their relative contributions to the work. Where royalty distribution to individuals would be impracticable or inequitable (for example, when the copyrightable material has been developed as a laboratory project, or where individual royalty distribution could distort academic priorities), the "inventor's share" may be allocated to a research or educational account in the laboratory where the copyrightable material was developed. Such determination will be made on a case-by-case basis by the Vice Provost for Research after consultation with the principal investigator or department head, and is subject to the approval of the Provost.

Tangible Research Property (TRP) is defined for purposes of this Policy as tangible (or corporeal) items produced in the course of research projects supported by the University or by external sponsors. TRP includes such items as: biological materials, engineering drawings, computer software, integrated circuit chips, computer databases, prototype devices, circuit diagrams, equipment.

TRP is separate and distinct from intangible (or intellectual) property such as inventions, patents, copyright and trademarks.  Individual items of TRP may be associated with one or more intangible properties such as copyright or patents.

TRP normally is either owned by the University or is subject to the ownership and other provisions of contracts and grants. For example, items such as microorganisms produced under a government grant or contract usually belong to the University as expendable property, subject to the terms and conditions of the grant or contract. Equipment that is fabricated at the University for subsequent off-campus use by a research sponsor is usually owned exclusively by the sponsor.

A.  TRADE AND SERVICE MARKS

Trade and service marks are distinctive words or graphic symbols identifying the sources, product, producer, or distributor of goods or services. Trade or service marks relating to goods or services distributed by the University shall be owned by the University. Examples include names and symbols used in conjunction with computer programs or University activities and events.

B.  PROPRIETARY INFORMATION

Proprietary information arising out of University work (e.g., actual and proposed terms of research agreements, financial arrangements, or confidential business information) shall be owned by the University. "Trade secret" is a legal term referring to any information, whether or not copyrightable or patentable, which is not generally known or accessible, and which gives competitive advantage to its owner. Trade secrets are proprietary information, and all University employees shall take all necessary steps to protect trade secrets from disclosure.

NOTE: All research involving proprietary information owned by others is subject to the provisions of the sponsored research agreement between the owner of the proprietary information and the University. Contact the Office of the Vice Provost for Research for further information.