The fundamental missions of Indiana University are teaching,
research, and service to advance knowledge and serve
the public good. In the pursuit of those missions, new
creations and discoveries often result that are subject
to, or eligible for, intellectual property protection.
The stewardship of such intellectual property, consistent
with the teaching, research, and service missions of
the University, is an important responsibility of both
the University and the Creator. This document sets forth
Indiana University Policy concerning the stewardship
of patents and copyrights.
Definitions
"Applicable
intellectual property" is defined as any invention,
creation, innovation, discovery, or improvement:
 |
Developed
with University resources, other than: |
| |
| - |
traditional
works of scholarship and creativity; |
| - |
instructional
materials; and |
| - |
institutional
works; |
|
|
For
which assignment to the University is required
by law or by a written contract to which the Creator
has previously agreed; or |
|
For
which the Creator seeks the assistance of the
University in developing commercially (including
protecting, marketing, assigning, or licensing).
|
"Creators"
are defined as faculty, staff, and other persons employed
by Indiana University, whether full- or part-time; visiting
faculty and researchers; and any other persons, including
students, who create or discover applicable intellectual
property using University resources.
"Device-like
software" is defined as software that is intended
primarily and is reason ably likely to accomplish
a task or to produce, manage, analyze, or manipulate
a product, such as data text, a physical object, or
more software. Such software acts as a tool or building
block in the accomplishment of such a task or in the
creation or management of such a product or result.
"Direct
expenses" are the costs associated with the protection
and licensing of intellectual property. Such costs
do not include the salaries or other overhead costs
of Indiana University.
"Indiana
University" or the "University" shall refer to
Indiana University and to any foundation associated
with Indiana University, such as the Advanced Research
and Technology Institute.
"Information
software" is defined as software that is intended
primarily and is reason ably likely to provide information
to the user. Such software is akin to a textbook or
encyclopedia.
"Institutional
works" are defined as works created at the instigation
of the University, under the specific direction of
the University, for the University's use, by a person
acting within the scope of his or her employment or
subject to a written contract.
"Instructional
materials" are defined as works, other than institutional
works, the primary use of which is for the instruction
of students. Such works include textbooks, syllabi,
and study guides.
"Material
made available for the use of the University"
is any invention, creation, innovation, discovery,
or improvement, which is the product of a Creator
and the subject of intellectual property protection,
and which the Creator voluntarily makes available
for the University's use without expectation of further
compensation to the Creator. Such material may include
the intellectual property contributions of Creators
to University committee reports, musical or dramatic
performances or productions, and Departmental lecture
note files.
"Net
revenue" is that remaining after deducting all
direct expenses necessary for obtaining protection
for, and licensing, applicable intellectual property.
"Traditional
works of scholarship" are defined as works, other
than institutional works, reflecting research and/or
creativity which, within the University, are considered
as evidence of professional advancement or accomplishment.
Such works include scholarly publications, journal
articles, research bulletins, monographs, books, plays,
poems, and works of art. Such works shall include
"information software," but shall not include "device-like
software."
"University
resources" are defined as all tangible resources
provided by Indiana University to Creators, including
office, lab, and studio space and equipment; computer
hardware, software, and support; secretarial service;
research, teaching, and lab assistants; supplies;
utilities; funding for research and teaching activities,
travel; and other funding or reimbursement. "University
resources" do not include salary, insurance, or retirement
plan contributions paid to, or for the benefit of,
Creators.
Assignment and Protection of Intellectual Property
The University shall not exercise intellectual property
rights in any work created or discovered by a Creator
other than works meeting the definition of "applicable
intellectual property" or "institutional works," unless
such rights are voluntarily transferred by the Creator
or secured through licenses set forth in this Policy.
Applicable Intellectual
Property
Creators shall assign rights in applicable intellectual
property to Indiana University.
Indiana University shall have the sole right to
determine the disposition of applicable intellectual
property under this Policy. That determination shall
take into account the interests of the University,
the public, and the Creator, including the Creator's
professional or ethical convictions concerning the
use of applicable intellectual property. Responsibility
for disposition of applicable intellectual property
resides with the Technology Transfer Office, subject
to the policies developed by the University Research
Policy Committee.
Creators may not assign, or license rights in, applicable
intellectual property to third parties without the
written consent of the University.
All assignments must be in writing and shall conform
with the requirements of this Policy.
Creators of applicable intellectual property shall
assist as reasonably necessary for the University
to obtain statutory protection for the intellectual
property and to perform all obligations to which it
may be subject concerning the intellectual property,
including executing appropriate assignments and other
documents required to set forth effectively the ownership
of, and rights to, applicable intellectual property.
The Creator retains responsibility for intellectual
stewardship of his or her intellectual property. The
Creator shall have the right to be identified, or
to refuse to be identified, as the Creator by the
University and by subsequent licensees and assignees,
except as required by law. The Creator shall retain
the rights to pursue related research and creative
activities, determine methodologies, draw conclusions,
disseminate information, and develop related intellectual
property (including derivative works), except to the
extent that the Creator has voluntarily entered into
contractual arrangements or is required by legal or
professional considerations to do otherwise.
Because premature or inappropriate disclosure may
defeat legal protection of intellectual property,
the University will undertake to inform Creators about
the consequences of potential disclosures. The University
and Creators will work together to facilitate both
scholarly disclosures and the acquisition of appropriate
intellectual property protection.
Institutional Works
The University shall own intellectual property rights
in institutional works, except as provided in prior
written agreements between the University and the
persons who create those works.
The Creator(s) of institutional works shall exercise
no rights in such works and shall receive no proceeds
resulting from the sale, assignment, licensing, or
use of such works, except as provided in prior written
agreements between the University and the persons
who create those works.
Disclosure
Creators shall disclose promptly to the University any
applicable intellectual property.
Disclosure shall be made on an Intellectual Property
Disclosure Form to the Technology Transfer Office, with
copies to the Department Chairperson and School Dean.
The Technology Transfer Office shall routinely report
all disclosures to the Vice President for Research and
Dean of the Graduate School.
Revenue Distribution
Monetary Proceeds‹All monetary proceeds from the
transfer or commercialization of applicable intellectual
property shall be distributed as follows, unless legal
requirements or contractual agreements require otherwise:
Of the first $100,000
of net revenue:
The Creator(s), or Creator's heirs, successors,
and assigns, shall receive one-half (50%) of the net
revenue arising from applicable intellectual property.
The Campus(es) responsible for the applicable intellectual
property shall receive one-quarter (25%) of the net
revenue arising from the applicable intellectual property
to support research activities.
The University shall receive one-quarter (25%) of
the net revenue arising from the applicable intellectual
property to support research and technology transfer
activities.
Of the next $300,000
of net revenue:
The Creator(s), or Creator's heirs, successors,
and assigns, shall receive forty percent (40%) of
the net revenue arising from applicable intellectual
property.
The Campus(es) responsible for the applicable intellectual
property shall receive one-quarter (25%) of the net
revenue arising from the applicable intellectual property
to support research activities.
The University shall receive thirty-five percent
(35%) of the net revenue arising from the applicable
intellectual property to support research and technology
transfer activities.
Of the next $600,000
of net revenue:
The Creator(s), or Creator's heirs, successors,
and assigns, shall receive thirty percent (30%) of
the net revenue arising from applicable intellectual
property.
The Campus(es) responsible for the applicable intellectual
property shall receive one-quarter (25%) of the net
revenue arising from the applicable intellectual property
to support research activities.
The University shall receive forty-five percent
(45%) of the net revenue arising from the applicable
intellectual property to support research and technology
transfer activities.
Of net revenue in
excess of $1,000,000:
The Creator(s), or Creator's heirs, successors,
and assigns, shall receive twenty-five percent (25%)
of the net revenue arising from applicable intellectual
property.
The Campus(es) responsible for the applicable intellectual
property shall receive one-quarter (25%) of the net
revenue arising from the applicable intellectual property
to support research activities.
The University shall receive one-half (50%) of the
net revenue arising from the applicable intellectual
property to support research and technology transfer
activities.
The University Research and Policy Committee shall
review the dollar thresholds set forth above, and
revise them as necessary in light of inflation and
other economic factors, not less than once every five
years after the effective date of this Policy.
In the absence of a written agreement to the contrary,
multiple Creators shall receive equal portions of
the Creator(s)' share of net revenue. When multiple
Creators are located on different Campuses, each Campus
shall receive the same percentage of the total Campus
share of net revenue as the Creators located on that
Campus receive of the total Creator share of net revenue.
The distribution on each Campus of the Campus(es)'
share of net revenue among Schools and Departments
shall be determined according to written policies
to be developed on each Campus. Those policies shall
ensure that such distributions equitably reflect the
role of Schools and Departments in the development
of applicable intellectual property.
Special facts concerning applicable intellectual
property may warrant a different distribution of net
revenue. Agreements with respect to alternative allocation
of revenues shall be in writing and require the consent
of the Creator(s), the Dean(s) of the Creator(s)'
School(s), the Chancellor(s) of the Creator(s)' Campus(es),
and the Vice President for Research and Dean of the
Graduate School or his or her designee.
Equity Interests
The Technology Transfer Office may negotiate, but
shall not be obligated to negotiate, for equity interests
in lieu of or in addition to monetary consideration
as a part of an agreement between Indiana University
and an external entity relating to applicable intellectual
property. Such negotiations shall comply with federal
and state statutes, and conflict of interest and commitment
and other University policies.
Except as provided below, each Creator shall make
an irrevocable election between subparagraphs (a)
and (b) below as to the distribution of his or her
share of equity interests, or the proceeds from the
sale therefrom, resulting from the transfer or commercialization
of applicable intellectual property, unless legal
requirements or contractual agreements require otherwise:
The University shall own the equity interests. If
and when monetary proceeds are generated by the sale
of equity interests, those proceeds shall be distributed
according to the policies set forth herein for revenue
distribution. The University does not act as a fiduciary
for any Creator concerning equity interests or other
nonmonetary consideration received under the terms
of this Policy and no Creator shall have any interest
in, or legal right to, such equity interests or nonmonetary
consideration.
The University shall distribute to any Creator making
this election that Creator's share of the equity interests
resulting from the transfer or commercialization of
applicable intellectual property. The Creator's share
of the equity interests shall be determined according
to the following formula:
The fair market value of the equity interests shall
be determined as of the next business day after the
day on which the Creator requests the distribution.
The University shall then set aside that portion
of the equity interests which is equal in value to
the direct expenses incurred by the University for
obtaining intellectual property protection of the
applicable intellectual property (unless those expenses
have been covered as part of the distribution of monetary
proceeds).
The University shall then transfer to the Creator
that portion of the remaining equity interests to
which the Creator would be entitled under Section
4(a) (Monetary Proceeds) above, based on the total
value of the remaining equity interests.
The Creator shall not have the right to specify
the distribution of equity interests under Section
4(b)(ii)(b) where such distribution is impossible
or impractical.
Licenses for Use of
Material Made Available for the Use of the University
Many faculty, staff, and students
create material which is the subject of intellectual
property protection and which they voluntarily make
available for the use of the University without expectation
of further compensation.
The University shall retain a non-exclusive,
royalty-free license to use such material made available
for the use of the University, provided that significant
contributions of Creator(s) are acknowledged.
That license shall not include the right to exploit
the work outside of the University or for profit.
Licenses for Non-Commercial Research and Teaching
Within the University
Many faculty,
staff, and students experience high costs and practical
inconvenience in obtaining permission to use material
which is the subject of intellectual property protection
for research and teaching.
Creators are therefore encouraged to seek from publishers
and other persons to whom Creators assign rights in
their intellectual property, a non-exclusive, royalty-free
license for their own non-commercial research and
teaching and, where possible for anyone within the
University to use that intellectual property for non-commercial
research and teaching.
The University Counsel's office, the Copyright Management
Center, and other appropriate units shall work to
develop standard license terms and shall otherwise,
to the extent possible, assist Creators in securing
such licenses.
Assignment
or Licensing of Applicable Intellectual Property by
the Creator(s)
Indiana
University may, at its sole discretion, permit the
Creator(s) to assign or license applicable intellectual
property.
The University
may not withhold consent for assignment or licensing
unreasonably and in no case unless the University
intends to pursue protection for the applicable intellectual
property.
Such assignments
or licenses shall be subject to the following provisions,
unless waived in writing by the University:
Indiana University shall retain for itself a royalty-free
license to use the intellectual property for non-commercial
research and teaching within the University.
Indiana University shall receive a share of all proceeds
generated from commercialization of the intellectual
property after the Creator has recovered documented
out-of-pocket costs for obtaining legal protection
for the intellectual property. The University's share
shall be negotiated on a case-by-case basis.
Creator(s) shall not be entitled to a share of proceeds
received by Indiana University under this subsection.
In the
event the Creator(s) has received a specific request
for assignment or licensing of applicable intellectual
property:
The Creator(s)
must provide the University with sufficient information
to determine the marketability of the applicable intellectual
property.
The University shall notify the Creator in writing
of any objection to the proposed assignment or licensing
no later than 45 business days after receiving the
Creator's request to assign or license and the supporting
information.
Intellectual
Property Transfer/Commercialization Agreements
Indiana
University welcomes agreements with third parties
for the development, use, dissemination, and commercialization
of intellectual property, consistent with the University's
mission and the Principles on Intellectual Property.
Any agreement
to license or transfer ownership of Indiana University's
intellectual property by means of sale, assignment,
or exchange shall be subject to this Policy and shall
include the terms necessary to fulfill the requirements
of this Policy.
Agreements relating to the development and/or commercialization
of intellectual property may provide that the contracting
entity bear the costs of obtaining protection for
intellectual property.
University
Administration of Intellectual Property
Primary
responsibility for identifying, protecting, and managing
applicable intellectual property, resides with the
Technology Transfer Office, under the policies developed
and supervised by the University Research Policy Committee
and the Vice President for Research and Dean of the
Graduate School.
All disclosures
shall be submitted to the Technology Transfer Office.
The Technology Transfer Office will determine whether
Indiana University desires to obtain protection for
the intellectual property, or otherwise make use of
the intellectual property. The Technology Transfer
Office shall consult as it deems necessary with the
Technology Transfer Advisory Committee concerning
such decisions and other matters relating to technology
transfer and the implementation of the Policy. The
Technology Transfer Office or the Technology Transfer
Advisory Committee may request a recommendation from
the University Research Policy Committee regarding
the disposition of the intellectual property.
The Technology
Transfer Office shall notify the Creator promptly
after it has deter mined whether it is in the best
interest of Indiana University to seek protection
for disclosed intellectual property.
If Indiana
University decides to seek protection for intellectual
property, it shall proceed either through its own
efforts or those of an appropriate private firm or
attorney to obtain protection and/or manage the intellectual
property.
In those
instances where delay would jeopardize obtaining the
appropriate protection for the intellectual property
the Creator may request that the Technology Transfer
Office expedite its decision as to whether or not
it shall seek statutory intellectual property protection.
The Creator of intellectual property and the Director
of the Technology Transfer Office may appeal any adverse
determination concerning the identification, protection,
and/or management of such intellectual property to
the University Research Policy Committee, whose determinations
may be appealed to the Vice President for Research
and Dean of the Graduate School. Further appeals are
subject to existing University policy concerning review
of administrative decisions.
Implementation
This
Policy may be implemented or supplemented in any way
consistent with its terms and those of other University
policies.
In the event exceptional circumstances
require any exception to the terms of this Policy,
such exceptions shall require the written consent
of the Vice President for Research and Dean of the
Graduate School or his or her designee, the Creator(s),
and the Chancellor(s) of the Campus(es) and Dean(s)
of the School(s) directly affected.
The Vice President for Research and
Dean of the Graduate School shall, when practical,
seek the advice of the University Research Policy
Committee prior to approving any exception to the
terms of this Policy. When prior consultation is impractical,
the Vice President for Research and Dean of the Graduate
School shall promptly notify the Committee of any
exceptions to the terms of this Policy.
This Policy shall not apply to existing
written agreements:
-
between the University and/or Creator(s) and any
external organization or individual,
-
concerning the development, legal protection, or
commercialization of specific intellectual property,
and
-
entered into prior to the date on which this Policy
is adopted by the Board of Trustees.
If an existing written agreement is renewed, revised,
or amended after the date on which this Policy is
adopted by the Board of Trustees, reasonable attempts
shall be made to conform such agreement with the requirements
of this Policy as of the date on which it is renewed,
revised, or amended.
Notification
The University shall inform all persons subject to this
Policy of its terms as soon as efficiently possible
after its adoption and at regular intervals thereafter.
Effective Date
This Policy shall take effect immediately upon its adoption
by the Board of Trustees.
