Proposed changes in Patent and Copyright policy, March 2001 

The first set of revisions are to Subsection G "Distribution of Financial Benefit And Expenses, and Net Income" and were developed and approved by the University Committee on Patents, Licensing, Copyrights and Technology Transfer. 

The second set of revisions is a nearly complete rewriting of the Subsection H on Copyrights that has been developed by the Provost's Committee on Technology Transfer and reviewed and approved by the University Committee on Patents, Licensing, Copyrights and Technology Transfer.

Revised Section VII

Note: Revisions to Subsection G (as it appears in the Handbook - labeled Revised Section VII - the numbering in the policy originally) "Distribution of Financial Benefit And Expenses, and Net Income" were developed and approved by the University Committee on Patents, Licensing, Copyrights and Technology Transfer. (Changes are highlighted by underlining.) An additional modification has been added to ensure favorable tax treatment of distributions under this policy. (This change is highlighted in bold letters under the heading "Net Receipts.") 

VII. Distribution of Financial Benefit and Expenses, Net Income and Equity

Georgetown University assumes financial responsibility for inventions to which it takes ownership. This responsibility may include, for example, the costs of assessing patentability, filing and maintaining patents, marketing and licensing inventions, maintaining records, and defending infringements and interferences. The University is not, however, obligated to protect or develop any particular technology or invention unless it has made an explicit contractual commitment to do so. Activities related to the protection and marketing of University intellectual properties are intended to be self-supporting. Research & Technology Development Services is required to use the University's resources carefully, with a view to promoting the fiduciary interest of the institution as a whole. 

(a) Distribution of Royalties and Other Income:

Distribution of all royalties and other income from intellectual properties owned by the University shall be as follows: 

Gross Receipts. All direct expenses related to prosecuting and maintaining a patent, including fees for outside legal counsel, shall be reimbursed to Research & Technology Development Services from receipts related to the invention. In addition, 15% of gross receipts from each invention shall be allocated to the budget of Research & Technology Development Services. When the overall revenues from such receipts are sufficient to support the activities of the Office, the percentage amount of the allocation may be reduced so that only the actual costs of the Office's operations are deducted from gross receipts. 

Net Receipts. One-half of Net receipts shall be distributed to the Inventor(s) of the intellectual property. "Net Receipts" are defined as gross receipts minus the deduction of expenses outlined in the preceding section on "Gross Receipts." This amount is to be paid out regardless of whether the Inventor(s) continues employment at the university. In the case of the death of the (an) inventor, payment will be made to that inventor's estate. If the payment is to be made over time, the payments will be made over the life of the patent. At the option of the Inventor(s), the Inventor's share may be returned to the respective laboratory rather than to the Inventor personally. When there are two or more Inventors of a property, allocation of the Inventors' share of net receipts shall be made in accordance with the Inventors' agreement made for that purpose at the time of disclosure of the invention. After the distribution to the Inventor(s), the remainder of the net receipts shall be divided as follows:

10% to the President of the University or his designee for support of research and development throughout the institution; 

30%* to the Executive Vice President of the campus area (Main Campus, Medical Center, or Law Center) in which the Inventor holds a primary academic appointment or staff position (that is, the campus from which the Inventor receives 50% or more of his or her support). These funds are to be used for support of research and development on this campus or in interdisciplinary programs involving two or more campuses. 

10%*^ to the Department, Center, or Institute in which the Inventor holds an academic appointment or staff position and from which the Inventor received his or her support. In the event the Inventor holds multiple academic appointments, the royalties shall be equitably divided on a pro rata basis according to the percentage of support the Inventor received from each Department. In the event the Inventor changes department(s), there is a presumption that the royalty shall be split equally between old and new Department(s) in which the Inventor formerly held and now holds academic appointment(s) for any invention disclosed within a year following the transfer. In the case of a dispute, the Patent Review Committee shall hear appeals from each Department. 

Distributions for license agreements containing equity arrangements will follow the same formula. Such distributions may require stock liquidation. All such distributions will be determined by the University Vice President and Treasurer.

*In any case where there is more than one inventor, noted percentages are shared proportionally by Inventors, their respective schools, or departments/laboratories, as applicable, in accordance with each inventor's share in the invention as specified on the Georgetown University Invention Disclosure Form.

^ Support shall be defined as financial support including without limitation, indirect costs and overhead recovered through grants and funded research (RX accounts), departmental funds (GX, GP or GD accounts), and lab space.

(b) Ownership of Equity by Faculty, Staff, and Students and Members of Their Immediate Family

Ordinarily, faculty, staff, and students should be permitted to hold equity in companies that license or utilize their technologies provided that:

1. the equity relationship has been reviewed and approved by the Department Chair, Dean, and Vice President and Treasurer;

2. caps are placed on the percentage of stock held by University faculty, staff, and students in the start-up company of up to 20% ownership by all University faculty, staff, and students in the aggregate (exceptions may be considered for development stage companies that do not have products in clinical trials);

3. the stock is not traded or otherwise sold until the occurrence of a triggering event or date to be specified by the Committee on Patents, Licensing, Copyrights, and Technology Transfer. Depending on the nature of the company and its products, the Committee may prohibit the trading or purchase of stock or receipt of stock options or warrants by University faculty, staff, and students:

a. during clinical studies, until the results of the studies are published;

b. until two years have elapsed from the first commercial sales of the licensed product;

c. until the company is sold; or 

d. until the stock is publicly traded.

4. the faculty, staff, and students do not hold management or operating positions in the company (exceptions may be considered for development stage companies that do not have products in clinical trials);

5. financial disclosures are provided by faculty, staff, and students annually, and as relationships change, to the Department Chair or Dean and the Committee on Patents, Licensing, Copyrights, and Technology Transfer. These disclosures, which also need to be submitted for grants, contracts, etc., should be in line with the applicable University Conflict of Interest policy forms. Particular attention needs to be paid to accurate reporting of conflicts of interest and commitments;

6. involved faculty/staff/students sign consent forms that certify that they understand applicable policies and agree to cooperate in their implementation.

(c) Institutional Ownership of Equity

The University should be permitted to take stock in licensee
companies that do not have the financial resources to make full license payments in cash, but licensees should be required to pay for out-of-pocket patenting and related expenses. Equity should not be held in sufficient amounts to confer management power, which generally would limit ownership to less than 20% of voting stock. Review and approval of acquiring stock should be provided by the Vice President and Treasurer. The University may wish to invest funds in start-up companies, and this will be implemented through an entity or method selected by the University.

(d) Company-Sponsored Research at the University

Sponsored research related to the business of the start-up company should generally be permitted in the University laboratories of the scientists who developed the technology provided that:

1. research proposals are reviewed by the Dean prior to approval;

2. periodic reports are provided to the Dean on the research methodologies and results;

3. faculty, staff, and students with equity and other potential financial benefits from success of the start-up company (for example, royalties, consulting fees or profit sharing) cannot be the principal investigator on such sponsored research or be the attending physician in clinical trials, nor record patient data. The faculty, staff, and students generally should not be permitted to negotiate a research contract or grant from the start-up company to the University, and faculty, staff, and students are prohibited from purchasing goods or services from the company on behalf of the University;

4. prior approval is obtained from Department Chair and Dean on use of graduate and undergraduate students. In addition, the faculty, staff, and students in carrying out confidential research for the start-up company should not delay or inhibit publication of research findings beyond a reasonable time-frame. 

(e) Faculty Consulting for Companies in Which They Have an Interest

Consulting should normally be permitted, in accordance with University policy contained in the Faculty Handbook, provided that there is prior approval from the Department Chair and Dean. Attention needs to be paid to the use of University resources for purposes other than University business

(f) Other Affiliation Issues Between Faculty, Staff, and Students and Start-up Companies

Board position: Generally prohibited; may be permitted for development stage company.

Scientific Advisory Board: Permitted with disclosure to, and ongoing review by, the Dean and Department Chair.

Honoraria: Permitted, with review by the Dean and Department Chair.

Use of University name: Prior written approval required from Legal Counsel.

Management of multiple funding sources: Proposals for corporate funding through which rights to technology are created in the research sponsor should receive prior review and approval from the Department Chair, Dean, and the Vice President and Treasurer.

Disclosure in publications and consent forms: Corporate funding of the research, equity ownership, or other potential financial benefits to the researcher from the success of the company should be disclosed in all related publications and in patient informed consent forms.
 

Revised Section VIII: Copyright and Collections of Information 

Note: This revision is a nearly complete rewriting of the Subsection H on Copyrights that has been developed by the Provost's Committee on Technology Transfer and reviewed and approved by the University Committee on Patents, Licensing, Copyrights and Technology Transfer. 

A. Purposes. A main goal of Georgetown University, as a student-centered research institution, is the discovery, production, and dissemination of knowledge. The copyright policies of the University are intended to further that goal by providing appropriate incentives to faculty and staff for the production of new knowledge. 

B. Traditional Independent Scholarship. These policies are not intended to disturb the customary relationship between the University and the author of traditional scholarly works. In general, the University does not claim work made for hire status under Title 17 of the U.S. Code for such works. Traditionally, most published works written by members of the faculty and staff have been viewed as the property of the individual authors and have been published under agreements made by those authors without participation of the University.

1. Support for Fair Use. The primary objective of copyright is not to reward the labor of authors, but [t]o promote the Progress of Science and useful Arts. To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art. (Justice Sandra Day O'Connor). The University is concerned about publishers who publish scholarly articles by members of the academic community and then charge those same members and other academics substantial fees to reproduce their articles for use in class, for reserve readings in the library, or for other educational purposes. Accordingly, Georgetown University suggests that members of the faculty and staff, when publishing an article in a scholarly journal, shall request (but not require) that the publisher place a note on the first page of the article giving nonprofit organizations the right to make copies of all or any portion of the article for educational purposes without written permission or payment of an additional fee. The University also is concerned about ensuring fair use access to collections of information for scholarly, research, and educational purposes.

C. Intellectual Property and University Resources. While the University generally has not sought assignment by faculty and staff of the copyrights in their independent scholarship, it has generally required assignment of ownership rights in all other Intellectual Property made or conceived by faculty and staff utilizing the facilities, equipment, funds or other contributions of the University. Consequently, in such instances when the University provides extensive support for the creation of copyrightable material or commercially valuable collections of information -- for example, by subventing publication of scholarship or by committing University resources for the development of digital materials for teaching and learning -- formal arrangements (created at the University office responsible for Intellectual Property Asset Management) must be drafted in order to ensure that rights, responsibilities, and prospective revenues are shared equitably between those who develop the Intellectual Property and the University as the provider of auspices and facilitating resources. 

1. Publication Subvention. In those instances when both (1) the University pays the full or a substantial part of the cost of publication (including such costs as printing, editing, etc., but excluding the salary of the primary author(s) such as printing and editing, etc. , but excluding the salary of primary authors, and (2) the royalties or revenues from the publication are likely to exceed $10,000, formal agreements concerning the ownership of the copyright and the division of those royalties must be made pursuant to the procedure described in Section C4 below. 

2. Software and Digital Resources. Distinctions that once were common between text intended to convey information (and subject to copyright guidelines) and research tools (potentially subject to patent guidelines) become less tenable at a time when software is both copyrightable and potentially patentable and when courseware and digital academic resources are characterized by a high degree of interactivity. Software development by faculty and staff frequently receives extensive support from the University. Similarly, digital resources for teaching and learning -- that is, software (including Web pages programmed in native HTML, XML, or similar protocols, or created using an authoring package or a courseware-development system) and digital content materials designed for display and dissemination over the Internet or over the University s own network frequently are based upon the work of many hands (including instructional designers and technical staff), and they frequently depend upon the University s network and computer systems and the staff who support them. Consequently, the University may require assignment of an ownership interest in software, including courseware and digital academic resources, developed by faculty and staff at the University. Formal agreements for these categories of Intellectual Property must be created in order to spell out the respective rights of the individual developers and the University. However, in order to encourage the development of technology-based instructional materials, the University may choose not to exercise its claim to such resources and instead to consider the copyright to lie with the developer(s). In particular, the University will not require assignment of ownership for basic Web pages that are created and maintained by faculty or staff without substantial assistance, and that simply provide information (including but not limited to reading assignments, other course requirements, and links to relevant external Internet resources) specific to a faculty member s course(s), and/or information about or copies of publications and other professional activities of a member of the faculty or staff.

3. Collections of Information. The creation and maintenance of collections of information also frequently require extensive technical, staff, and systems support from the University. Consequently, the University may require assignment of an ownership interest in collections of information developed by faculty or staff as resources for scholarship and research. Formal agreements for this category of Intellectual Property must be created in order to spell out the respective rights of the individual developers and the University. However, in order to encourage the development and maintenance of such collections of information, the University may choose not to exercise its claim to such materials and instead to consider copyright and other ownership interests to lie with the individual developer(s).

4. Formal Agreements. Formal agreements between the University and faculty or staff who develop software, digital resources, or collections of information will be created by the University office responsible for Intellectual Property Asset Management. Because ownership of Intellectual Property is divisible in many ways, these formal agreements will generally be based upon an unbundling and distribution of ownership rights in order to grant the developers and the University the rights each finds more advantageous and the responsibilities each is best qualified to discharge. For example, if the University has made a substantial contribution (through its systems and support expertise) to the creation of software, digital resources, or collection(s) of information, a formal agreement may assign or license to the University the ability to exercise certain rights, including but not limited to: 

? The right, on a limited, non-exclusive basis for the University to make and distribute copies of the material for use in teaching, scholarship, and research within the University.

? The right to control whether the University s name or logo is displayed in association with the material.

? The right to require an appropriate acknowledgment of University support in the creation of the material.

? The right to reproduce and distribute portions of the material in compilations or other composite works.

? The right to reproduce the material for uses directly related to advancing the mission or maintaining the culture of the University.

? The right to be informed in advance of any licenses or assignments of the material by the author(s) or developer(s).

In addition, the formal agreement may specify certain situations or conditions that would trigger the application of a secondary policy. For example, if software, digital resources, or collection(s) of information are commercialized and they generate revenues, the University may reserve the right to a certain percentage of royalties to recover any investment it may have made in such software, digital resources, or collection(s) of information. As a second example, if the University, as an incentive for development, pays a stipend to a researcher to create the software, digital resources, or collection(s) of information, that stipend must be repaid to the University from any revenues that accrue from the subsequent marketing of the materials.

5. Faculty and Staff Responsibility to Initiate Formal Agreements. In the case of software, digital resources, or collection(s) of information likely to require the use of University resources for creation, expansion, or maintenance, it is the responsibility of the faculty or staff developer(s) to initiate a formal agreement with the University office responsible for Intellectual Property Asset Management . In the absence of an agreement to the contrary, the University will claim all authorship rights in software, digital resources, or collection(s) of information created with University assistance as works made for hire under the Copyright Act, Title 17 of the United States Code. However, a member of the faculty or staff need not report or initiate formal agreements for basic Web pages that are created and maintained by that employee without substantial assistance, and that simply provide information (including but not limited to reading assignments, other course requirements, and links to relevant external Internet resources) specific to a faculty member s course(s), and/or information about or copies of the publications or other professional activities of the member of the faculty or staff. A member of the faculty or staff also need not report or initiate formal agreements for that employee s personal archives of data or of other materials relating to scholarship or research.

D. Consulting. Problems may attend the disposition of intellectual property that results from activities of members of the faculty or staff while engaged in the service or at the direction of a firm or an institution other than the University. In general, the University recognizes the benefits of such activity to members of the faculty and staff, and often to itself. However, the University is concerned about conflicts of interest that may arise from such activity. (Please refer to the Faculty Handbook, Section B3c Consulting Relationships under XIV Financial Conflicts of Interest Policy.) In addition, the University is concerned not only about the potential loss of revenue but also about the imposition of noncompete clauses that may hinder faculty and staff from pursuing the University's mission of teaching and research or prevent faculty and staff from participating in University-sponsored research-and-development projects.

1. Consulting, Intellectual Property, and University Resources. In the cases of consulting activities involving the use of Intellectual Property developed with University resources, the member(s) of the faculty or staff should provide to the University office responsible for Intellectual Property Asset Management a copy of any contract for work sponsored by an entity other than the University when the terms of that contract vest control of any resulting intellectual property in that entity. In such cases, the University may require that a formal agreement be created concerning the ownership of such resulting intellectual property, pursuant to the procedures described in Section C4 above. No consulting contract shall restrain or inordinately delay publication of the results of a researcher s University-related activities.

2. Consulting, Intellectual Property, and Non-print Media. In the cases of consulting activities resulting in the production of non-print analog or digital instructional materials (for example, for distance learning) for an entity other than the University, the member(s) of the faculty or staff should provide to the University office responsible for Intellectual Property Asset Management a copy of any contract for such activity. In such cases, the University may require that a formal agreement be created concerning the ownership of the resulting intellectual property, pursuant to the procedures described in Section C4 above.

E. Resolution of Disputes. Disputes regarding the formal agreements between the University and faculty or staff shall be referred to the University Committee on Patents, Licensing, Copyrights, and Intellectual Property Asset Management. The Committee s decisions will be final.

F. Intellectual Property and Work for Hire

1. Faculty and Staff Pursuant to Specific Assignment. In general, copyrightable material created by a member of the faculty or staff pursuant to a specific direction or assigned duty (other than the teaching of courses) from the University or any of its units shall be considered a work made for hire and shall be the property of the University. However, in the case of software, digital resources, collection(s) of information, or other audio or audiovisual educational materials created by faculty or staff pursuant to specific direction or assignment, the University may choose to share ownership with the individual developer(s). In such cases, formal agreements between the University and the individual employees will be created pursuant to the procedures described in Section C4 above, except that it is the responsibility of the University department or unit overseeing creation of the material to initiate review by the University Office responsible for Intellectual Property Asset Management.

2. Students. In general, the foregoing terms also apply to students at the University. The University makes no claim of ownership to works created by students or other staff members working on their own, outside of an employment relationship with the University. As a condition of matriculation, however, the University reserves the right to make copies of dissertations as needed for the academic and archival purposes of the institution. In addition, as a condition of matriculation, the University requires that students waive any claims against the University, University employees, or fellow students arising out of the reproduction, excerpting, and/or distribution of student-authored postings to University-sponsored courseware Web sites as needed for the academic, research, and archival purposes of the institution. Students working on a project governed by a contract or agreement to which the University is party shall be bound by the terms of that contract or agreement. Students who are hired to perform specific tasks that contribute to a copyrightable work will ordinarily have no authorship or ownership rights in that work unless they have a prior written agreement with the author. 

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