Intellectual Property Policy - Northern Michigan University

Purpose:
To provide guidance and background regarding the development and ownership of intellectual property.

Applicability:
Faculty, staff, students, and research associates of Northern Michigan University.

Policy:
Northern Michigan University (hereinafter the University) encourages the creative works of faculty, staff and students. These both enrich the academic life of the University as well as provide the foundation for cultural and economic development in our region, state and nation. It is the purpose of this policy to delineate the personal and University ownership rights to these creative works.

The rights to creative works are covered under two broad categories of authority – works that might be copyrighted and works that might be patented. These are treated in sections one and two of this policy, respectively.

For the purpose of this policy, “Intellectual Property” will mean creative works that could be copyrighted or patented.

The determination of ownership of intellectual property requires timely communication between the creators of the work and the University.

The University is committed to sharing revenue from creative works with the originator in those instances when it retains a right to the material.

The Provost and Vice President for Academic Affairs is responsible for implementing the Intellectual Property Policy.

Overview

The products of human imagination are intellectual property. For example, these may take the form of a journal publication, a laboratory manual, a text, a machine, an invention, a computer program, a work of art, music, a theatrical work, course materials, a poem, a photograph, a chemical process, a movie, a documentary, a web site, or a recruitment view book. Intellectual property is given great weight within higher education because intellectual property is the foundation of our collective and individual economic security.

The principles of control of intellectual property are set out in the United States Constitution in Section 8 which reads in part,

The Congress shall have power to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

The rights given to authors and inventors are codified in our copyright and patent laws, respectively. Copyrights and patent rights provide two perspectives on the ownership of intellectual property. A copyright grants to the creator of an original work an exclusive right to control the dissemination and use of that work. A patent grants an exclusive right to an inventor to control the economic development or use of a new invention. Neither Copyrights nor patents confer ownership; instead they provide to the author or inventor rights over the distribution, use or development of the creative work or invention. These rights do not exist in perpetuity, but are instead given for a legally specified and limited period of time.

The phrase ‘by security for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries,” would seem to confer control to individual persons. While this is often the case, it is also possible that the right to control the publication of an original work of authorship, or the development of an invention, is given to a corporate body. A company or university may hold the copyright or patent for a creative work or invention that was created by an employee.

Copyright has been interpreted to mean that control of materials arising from “work made for hire” belongs to the employer and not the employee. This could mean in principle that the University holds the copyright to the works of all its employees, including faculty. There is a contrary view regarding faculty which holds that their works of authorship are not done at the behest of the University, per se, but are rather spontaneous acts of their own creation and do not represent “work made for hire.” The University accepts the latter view with this exception: if a faculty member accepts a contract with the University to create copyrightable material for additional pay or reduced load, then the University will retain the copyright under the principle of “work made for hire.” Apart from this provision for faculty, the University retains the copyright for materials produced by all other employees for which the principle of “work made for hire” is applicable.

In 1980 Senators Birch Bayh and Robert Dole introduced legislation that attempts to leverage federally funded research for economic growth. Prior to the enactment of the legislation, relatively small number of inventions arising from federally sponsored research were actually the basis for economic development. The Bayh-Dole Act set about to change this state of affairs, and states:

It is the policy and objective of the Congress to sue the patent system to promote the utilization of inventions arising from federally supported research or development; to encourage maximum participation of small business firms in federally supported research and development efforts; to promote collaboration between commercial concerns and nonprofit organizations and small business firms are used in a manner to promote free competition and enterprise without unduly encumbering future research and discovery; to promote the commercialization and public availability of inventions made in the United States by United States industry and labor; to ensure that the Government obtains sufficient rights in federally supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions, and to minimize the costs of administering policies in this area.

The Act achieves its aims in part by 1) permitting universities to retain patent rights to inventions arising from federally funded research; 2) establishing an expectation that universities will actually seek patents on inventions they own; and 3) establishing an expectation that universities will seek to commercialize patents with a preference given to collaborating with small businesses. When these expectations are not met, the Act provides that the government may “march in” and claim the rights from the university.

The University accepts its responsibility to actively support the discovery and development of inventions that bring vigor to our economy. To that end, the University will retain the right to secure patents for inventions that arise under its auspices whatever the source of funding. This right will only be exercised by the University when 1) it intends to seek a patent for the discovery and 2) it believes the invention represents technology that may be transferred to a business for commercial development. Profits, if any, will be shared with the inventor(s) and will be used to support the instructional research, and academic support needs of the University.

Although copyrights and patents provide separate means for securing control over the utilization of intellectual property, they are inter-related. If the owner of an invention chooses to publish the details that underpin the invention, then it will not be possible to secure a patent for the invention. In order to preserve its rights to secure patents for inventions, the University requires the timely and complete disclosure of discoveries made by faculty, staff, student or others operating under the direction of the University.

Section One – Copyright

The United States Copyright office (Circular 1) states:

Copyright protects “original works of authorship” that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device. Copyrightable works include the following categories:

• literary works;
• musical works, including any accompanying words
• dramatic works, including any accompanying music
• pantomimes and choreographic works
• pictorial, graphic, and sculptural works
• motion pictures and other audiovisual works
• sound recordings
• architectural works

These categories should be viewed broadly. For example, computer programs and most “compilations” may be registered as “literary works;” maps and architectural plans may be registered as “pictorial, graphic, and sculptural works.”

Furthermore, Circular 1 clarifies what is not protected by copyright.

Several categories of material are generally not eligible for federal copyright protection. These include among others:

• Works that have not been fixed in a tangible form of expression (for example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded)
• Titles, names short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents
• Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration
• Works consisting entirely of information that is common property and containing no original authorship (for example: standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources)

It is important to note that some of the items not included in copyright are covered within the scope of patents.

Faculty, Students and Copyright

Academic freedom is founded upon the assurance of free and unfettered sharing of ideas. It is not the intention of the University to secure rights for itself that are contrary to the principles of academic freedom. The allocation of copyright is, however, complicated by the notion of “work made for hire.”

The United States Copyright Office (Circular 1) states:

In the case of works made for hire, the employer and not the employee is considered to be the author. Section 101 of the copyright law defines a “work made for hire” as:

• (1) a work prepared by an employee within the scope of his or her employment; or
• (2) a work specially ordered or commissioned for use as:
• • a contribution to a collective work
  • a part of a motion picture or other audiovisual work
  • a translation
  • a supplementary work
  • a compilation
  • an instructional text
  • a test
  • answer materials for a test
  • an atlas

The university will retain copyright to materials produced as “work made for hire.” Notwithstanding that faculty are employees, the University expressly waives its right to copyright instructional materials (such as an instructional text, a test or answer material for a test) or other “original works of authorship” that arise from professional responsibilities as defined in applicable faculty collective bargaining agreements. The University will, however, retain its right to works of faculty authorship under the principle of “work made for hire” if they were created in consideration for additional compensation or reduced workload.

Ownership of intellectual property created by a student as a function of enrollment in University classes or programs will be retained by the student unless the intellectual property is the result of a collaborative effort associated with faculty research. In the latter case, the intellectual property will be subject to the applicable copyright or patent provision set forth in this policy. The University, by virtue of a student’s registration in a class, retains the right to keep or mark on (e.g. correct, grade, or otherwise annotate) students’ works as required by University processes.

Computer Software

Computer Software may be subject to copyright laws or to patent laws. For example, software that accompanies a text and is used to illustrate principles covered in the text might be treated as copyrightable material. Such software is subject to the copyright provisions of this policy.

The University will not retain copyright to computer software developed by faculty that arises from professional responsibilities as defined in applicable faculty collective bargaining agreements. The University will, however, retain its copyright to faculty developed computer software under the principle of “work made for hire” if it is created in consideration for additional compensation or reduced workload.

The University will retain copyright to all other computer software that is developed by employees, students or others under the direction of the University under the principle of “work made for hire.”

Distance Education

Unless otherwise negotiated, the faculty member or faculty body that develops course materials for use in distance education shall exercise control, including intellectual property rights, over the future use, modification, and distribution of such instructional material and shall determine whether the materials should be revised or withdrawn from use.

Section Two – Patents

The University retains patent rights for all inventions by University employees, students or other under University direction.

According to the United States Patent and Trademark Office:

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only in within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is, in the language of the statue and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.

There are three types of patents:

• Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
• Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
• Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

What Can Be Patented

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent, “subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon 42 U.S.C. 2181 (a).

The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

Interpretations of the statue by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Computer Software

As previously stated in Section One of this document, computer software may be subject to copyright laws or to patent laws. For example, software that accompanies a text used to illustrate principles covered in the text might be treated as copyrightable material. Such software is subject to the copyright provisions of this policy.

Software that includes useful or novel algorithms might be patented. Such software is subject to the patent provisions of this policy.