Policy 13000: Intellectual Property

1. Policy 13000: Intellectual Property

2. Overview of Presentation • Current version of Policy 13000 and perceived areas of concern • Specific major areas of textual change and content adjustment within the proposed Policy 13000 • Time for questions and comments

3. Current Policy 13000 • Last date of substantial revisions was in 1991 • Aspects of policy language reflected a time when the Intellectual Property Committee served as the primary review mechanism for IP disclosures (now handled by VTIP) • Concerns about policy language in light of the U.S. Supreme Court decision of Stanford vs. Roche • Ambiguity associated with IP generated by unfunded VT students (“litmus test” of $10,000 use of University resources)

4. Specific updates to Policy 13000 • Updates to Section 2.1 – Organization • Present policy has conflicting language as to how nominees for at-large positions are to be developed • Present policy does not provide for formal student membership on the IPC (students have been “guests” at meetings for some time; other commissions and committees specifically include students as formal members)

5. Specific updates to Policy 13000 • Updates to Section 2.2 – Authority and Responsibility of the IP Committee • Modified as needed to reflect VTIP as the primary reviewer of IP disclosures, with the IPC serving as an appeal mechanism when VTIP and an IP discloser disagree

6. Specific updates to Policy 13000 • Updates to Section 2.3 – IPC Working Groups • Careful consideration of existing Policy 13000 Section 2.3 showed redundancy of effort and general confusion on language • Ownership Review Group vs. Inventorship Review Group (duplicate descriptions) • Evaluation Coordination Board vs. IPC (ECB is made up of entire IPC membership) • Proposed policy allows for appointment of ad hoc Ownership Review Group to make recommendations to full IPC regarding any IP ownership or disclosure disputes (very rare occurrence)

7. Specific updates to Policy 13000 • Updates to Section 2.4 – Policy Guidelines (now Section 2.3 in the proposed policy) • Specific language change in the wording associated with the creation of “novel results of research” (no changes in language associated with the creation of “traditional results of academic scholarship”) • Language change arises from the U.S. Supreme Court case of Stanford vs. Roche, where the Court ruled in Roche’s favor due to very minor wording regarding the expectations of faculty to disclose their IP. • Commonwealth of VA law states that paid employees of the University are required to disclose IP as a condition of their employment

8. Specific updates to Policy 13000 • Current Policy 13000 statement – • “In the second group (novel results of research), the strong presumption of ownership is to the university (with the originator having a right to share in the benefits derived therefrom). Thus unless there is convincing and explicit evidence that the IP was developed without the use of university resources and/or facilities (….) ownership of the IP rests with the university and the originator(s) are obliged to sign the appropriate legal assignment documents upon request.

9. Specific updates to Policy 13000 • Proposed Policy 13000 Statement – • “in the second group (novel results of research), the strong presumption of ownership is to the university (with the originator having a right to share in the benefits derived therefrom). Thus unless there is convincing and explicit evident that the IP was developed without the use of university resources and/or facilities (…..) ownership of the IP rests with the university and the originator(s) do hereby assign ownership, right, title and interest in any IP, discovery or invention to the university.

10. Specific updates to Policy 13000 • Current Policy 13000 statement related to Student Ownership of IP: • Ownership of IP developed by students who are also employees of the university will be determined by the rules which apply to all university employees. IP generated by students not employed by the university and not using university resources of at least $10,000 in their generation will be owned by the student but subject to any applicable prior rights of private sector or government sponsors and to the right of the university to use the IP internally at no cost.

11. Specific updates to Policy 13000 • Current policy on the surface would appear student friendly, but implementation of the policy is for unfunded students is difficult at best • Most laboratories are not set up as cost recovery centers, so no established fee structures for use • Is faculty time included in the cost calculation (no clear answer to that question) • Current policy in some ways becomes de facto quite limiting due to inability to calculate use of university resources

12. Specific updates to Policy 13000 • Proposed Policy 13000 statement – • Students, visiting scholars, and volunteers are required to assign any IP rights to the university when: • Working on a research project funded by VT or an entity outside of VT sponsoring the work through VT from which the IP was created; • Employed or receiving payment from VT related to a project from which the IP was created; or • University resources not typically available to the public are used in the creation of the IP.

13. Specific updates to Policy 13000 • New Section 2.3.A.6 added related to “Commissioned Works” • Felt necessary to have this area addressed formally in policy due to increased number of commissioned activities for VT happening through ICAT and Center for the Arts • Points are negotiable in each contract; language simply sets out typical expectations

14. Specific updates to Policy 13000 • Section 2.3.B. Obligation to Disclose – • Language modified to again reflect obligation to disclose as required of all employees under Commonwealth of VA code (Stanford vs. Roche course decision)

15. Other updates to Policy 13000 • Other textual changes to the current policy reflected changes to associated position titles, minor edits to reflect faculty present in units other than traditional academic departments, etc.

16. Procedural Steps Through University Governance • Home commission for review – Commission on Research (first read on February 13th) • Endorsement of revised Policy 13000 being sought from: • CFA • CAPFA • CUS&P plus CGS&P • Faculty Senate • Staff Senate

17. Summary • Proposed Policy 13000 changes: • Reflect Code of VA requirements of State employees regarding disclosure (Stanford vs. Roche case) • Hopefully provide language about student IP (as well as visiting scholars and volunteers) that can be more effectively implemented as opposed to current vague language on “university resources” • Reflect the operating procedures of the IPC as opposed to its role twenty years ago • Address the issue of “Commissioned Works”