Subject: INTELLECTUAL PROPERTY POLICY

Policy No: 519-C

The Research Foundation of the City University of New York

INTELLECTUAL PROPERTY POLICY

I. PURPOSE

II. Applicability

This policy shall apply to all forms of Intellectual Property created or developed, in whole or in part, by Members of the University (1) making Substantial Use of University Resources, (2) as a direct result of University duties, (3) pursuant to the terms of an agreement to which the University is a party, or (4) in the course of or related to activities on grants or contracts administered by the Research Foundation.

III. Ownership Of Intellectual Property

 

 

IV. Administration of this Policy

Authority and responsibility for this policy shall reside with the Chancellor. The Chancellor may seek the advice and assistance of the Intellectual Property Committee (as described in Section V.E.). The responsibility for administration of the policy at the college level is delegated to the Designated Individual at each College.

V. Management of Intellectual Property

VII. Issues Relating to Ownership of Equity and Conflict of Interest

X. Trademarks

The University owns all right, title and interest in Trademarks related to an item of Intellectual Property owned by the University, or to a program of education, service, public relations, research or training program of the University.

XI. Role of the Research Foundation

The University hereby assigns its ownership rights in Inventions resulting from Sponsored Research to the Research Foundation. The Research Foundation may file patent applications, as named assignee, for such Inventions, subject to the terms of this policy, including the distribution provisions set forth in Section VI, with respect to income earned from the commercialization of such Inventions. Furthermore, nothing in this policy shall prevent the Chancellor from appointing the Research Foundation as the Chancellor's designee for performance of the functions assigned to the University in general or the Chancellor in particular, or to retain distribution of income from commercialization of Intellectual Property.

XII. Effective Date

This policy is effective from the date of approval by the University Board of Trustees with respect to Intellectual Property created after that date and shall remain in effect until modified or revoked.

XIII. Definitions

“Chancellor” shall mean the Chancellor of the University or his or her designee.

“Commissioned Work” shall mean work commissioned by the University in writing from a Member of the University, outside the scope of his or her employment.

“Copyrightable Work” shall mean an original work of authorship, including any Scholarly or Pedagogical Work, which has been fixed in any tangible medium of expression from which it can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device, and may include, but is not limited to, books, journals, musical works, dramatic works, multimedia products, computer programs or codes, videos, films, sound recordings, pictoral and graphical works and sculpture

“Creator” shall mean a Member of the University whose creative activity results in the development of Intellectual Property. As used in this policy, the term “creator” also includes groups of researchers, authors or inventors whose joint efforts produce Intellectual Property

“Designated Individual” shall mean the College officer who has been appointed by the College President to be in charge of Intellectual Property matters.

“Intellectual Property” shall mean all forms of intellectual property, including but not limited to Inventions, Copyrightable Works, Trade Secrets and Know-How, and Tangible Research Property, but excluding Trademarks.

“Invention” shall mean a process, method, machine, manufacture, discovery, device, plant, composition of matter or other invention that reasonably appears to qualify for protection under the United States patent law, whether or not actually patentable. “Invention” shall also include computer programs and codes, but only to the extent they are patentable

The term “Member of the University” shall include full-time and part-time faculty, staff, and graduate students engaged in faculty-directed research, whether paid or unpaid, as well as individuals compensated by grant funds made available to the University by or through the Research Foundation. Any other person who develops Intellectual Property while making extraordinary use of University Resources shall also be deemed a Member of the University, unless there is an agreement providing that such person shall not be subject to this policy.

“OGC” shall mean the Office of the General Counsel and Vice Chancellor for Legal Affairs.

“Scholarly or Pedagogical Works” shall mean Copyrightable Works created for traditional academic purposes. Examples include scholarly books (including text books), instructional materials including lecture notes, classroom presentations, research articles, research monographs, student theses and dissertations, novels, poems, films, videos, musical compositions and performances, dramatic works and performances, visual works of art including paintings, drawings, sculpture, installations and performance art, and other scholarly publications or works of artistic imagination, whether such works are disseminated in print, electronically or through some other tangible medium.

“Significant Interest” shall mean the following:

(1) the position of director, officer, partner, employee, or agent, or other managerial position; or

(2) anything of monetary value, including but not limited to, salary or other payments for services (e.g., consulting fees or honoraria), equity interest (e.g., stock, stock options or other ownership interests), and Intellectual Property rights and royalties from such rights.

The term does not include: (1) income from seminars, lectures or teaching engagements sponsored by public or nonprofit entities; (2) income from service on advisory committees or review panels for public or nonprofit entities; (3) financial interests in business enterprises or entities that, when aggregated for the Member and the Member’s spouse and dependent children, meet both of the following tests: (a) do not exceed $10,000 per year in value, as determined through reference to public prices or other reasonable measures of fair market value and (b) do not represent more than a 5 % percent ownership interest in any single enterprise or entity; or (4), salary, royalties or other continuing payments that, when aggregated for the Member and the Member’s spouse and dependent children, are not expected to exceed $10,000 per year in value.

“Sponsor” shall mean an organization, agency or individual which or who provides funding, equipment, or other support for the University, directly or through the Research Foundation, to carry out a specified project in research, training, or public service pursuant to a written agreement (“Sponsored Research”). Sponsors include Federal, State, local and other governmental entities, as well as private industry, individuals, educational institutions and private foundations.

“Substantial Use of University Resources” shall mean unreimbursed use of University Resources at a level not ordinarily used by or available to, all or virtually all, faculty, staff or graduate students, as the case may be. Ordinarily available University Resources include assigned office, laboratory and studio space and standard office, laboratory and studio equipment, office computer workstations, library and other general use information resources and the means of network access to such resources. The University does not construe the payment of salary in the form of release time or sabbatical as constituting substantial use of University Resources, except in those situations where the release time or sabbatical is granted specifically to support the development of Commissioned Work. Use of ordinarily available University Resources for private, commercial purposes is considered substantial use.

“Tangible Research Property” shall mean tangible items produced in the course of research including, but not limited to, biological materials, research notes and reports, laboratory notebooks, computer databases and software, circuit chips, equipment and engineering drawings.

“Trade Secrets and Know-How” shall mean facts, information, data, designs, business plans, customer lists and other secret knowledge which give the owner a competitive edge.

“Trademark” shall mean a distinctive word, design or graphic symbol, or combination of the same, that distinguishes and identifies the goods and services of one party from those of another. The term “Trademark” shall include service marks.

“University” shall mean The City University of New York.

“University Resources” shall mean any resources available to a Member of the University as a direct result of his or her affiliation with the University and which would not otherwise be available to a non-University-affiliated individual, including but not limited to, funds and financial support, facilities, equipment, supplies, services, non-faculty University personnel, students, release time and sabbaticals.