The UNC Policy Manual
500.2
Adopted 06/10/83
Amended 11/10/00
Amended 02/09/01
I. Policy. The University of North
Carolina is dedicated to instruction, research, and extending knowledge to the
public (public service). It is the
policy of the University to carry out its scholarly work in an open and free
atmosphere and to publish results obtained there from freely. Research done primarily in anticipation of
profit is incompatible with the aims of the University. The University recognizes, however, that
patentable inventions sometimes arise in the course of research conducted by
its employees and students using University facilities. The Board of Governors of the University of
North Carolina has determined that patenting and licensing of inventions
resulting from the work of University personnel, including students, is
consistent with the purposes and mission of the University.
The aim
of the patent policies of the University is to promote the progress of science
and the useful arts by utilizing the benefits of the patent system consistent
with the purposes for which it was established by Article I, Section 8, of the
Constitution of the United States:
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.
Patents
provide a means to encourage the development and utilization of discoveries and
inventions. These policies have been established to ensure that those
inventions in which the University has an interest will be utilized in a manner
consistent with the public good through patents, licenses, or otherwise. The University is also aware of the value of
patents in directing attention to individual accomplishment in science and
engineering. Where possible, the
University should make inventions resulting from its research available to
industry and the public on a reasonable and effective basis and at the same
time provide adequate recognition to inventors.
Patents and their exploitation, however, represent only a small part of
the benefits accruing to the public from the research program of the
University.
A portion
of the research conducted by the University is supported by government and a
portion by private industry. Service to
the public, including private industry, is an integral part of the University's
mission. In agreements with private industry or other private organizations,
the constituent institutions of the University must keep the interests of the
general public in view. The rights and
privileges set forth in cooperative agreements or contracts, with respect to
patents developed as a result of research partly or wholly financed by private
parties, must be fair and just to the inventor(s), the sponsor and the
public. Research should be undertaken by
the University under support from private parties only if it is consistent with
and complementary to the University's goals and responsibilities to the public.
II. Objectives. The principal objectives
of the University of North Carolina Patent and Copyright Policies set forth
herein are:
1.
To
provide appropriate incentive to creative intellectual effort by faculty,
staff, students, and others associated with the constituent institutions of the
University;
2.
To
establish principles for determining the interests of the constituent
institutions, inventors, and sponsors in regards to inventions and/or
discoveries;
3.
To
enable the constituent institutions to develop procedures by which the
significance of inventions and/or discoveries may be determined and brought to
the point of commercial utilization;
4.
To
provide the means for placing in the public realm the results of research,
while safeguarding the interests of the University, inventor, and sponsor; and
5.
To
recognize the right of the inventor to financial benefits from the invention or
discovery.
III. Coverage. The University of North
Carolina Patent and Copyright Policies apply to all University employees at
each constituent institution, both full and part time, including faculty, other
professionals exempt from the Personnel Act, staff subject to the Personnel
Act, and students of each constituent institution. Upon prior written agreement between persons
and the constituent institutions, these policies may be applied to persons not
associated with the University who make their inventions available to the
institutions under circumstances where the further development and refinement
of the inventions are compatible with the research programs of the constituent
institutions.
IV. Patent Ownership.
Condition of
Employment and Enrollment. The patent and copyright policies of the University
of North Carolina, as amended from time to time, shall be deemed to be a part
of the conditions of employment of every employee of each constituent
institution, including student employees, and of the conditions of enrollment
and attendance by every student at each constituent institution.
Ownership. With the
exception of "Inventions made on Own Time," hereinafter defined,
every invention or discovery or part thereof that results from research or
other activities carried out at a constituent institution, or that is developed
with the aid of the institution's facilities, staff, or through funds
administered by the constituent institution, shall be the property of the
constituent institution and, as a condition of employment or enrollment and
attendance, shall be assigned by the University inventor to the constituent institution
in a manner determined by the constituent institution in accordance with these
policies.
Patent Application. Patents
on inventions made by University employees or students, may be applied for in
any country by the constituent institution or through an authorized agent(s) or
assignee(s). The constituent institution
shall exercise its rights of ownership of such patent(s), with or without
financial gain, with due regard for the public interest, as well as the
interests of inventors and sponsors concerned.
Inventions Made on
Own Time. Inventions or discoveries made by University personnel or students
entirely on their personal time and not involving the use of University
facilities or materials are the property of the inventor except in case of
conflict with any applicable agreement between the institution and the federal
or state government or agency thereof.
For purposes of this provision, an individual's "personal
time" shall mean time other than that devoted to normal or assigned
functions in teaching, extension, University service, or direction or conduct
of research on University premises or utilizing University facilities. The term
"University facilities" shall mean any facility, including equipment
and material, available to the inventor as a direct result of the inventor's
affiliation with the University, and which would not be available to a
non-University individual on the same basis.
Personnel or students
who claim that inventions are made on personal time have the responsibility to
demonstrate that inventions so claimed are invented on personal time. All such inventions shall be disclosed in
accordance with the institutions’ disclosure procedures applicable to
inventions made on University time or with the use of University facilities,
materials or equipment, and shall demonstrate the basis of the inventor's claim
that only personal time was utilized. In each instance so demonstrated to
conform to the definition of personal time, the institution shall acknowledge
in writing that the invention is the sole property of the inventor in
accordance with the "waiver" provision, below.
If the inventor so
desires, inventions or discoveries made on personal time and utilizing the
inventor's own facilities and materials may be assigned to the
institution. Under this arrangement, the
procedures will be the same as for inventions or discoveries made by University
personnel on University time and/or with the use of University facilities and
materials.
Waiver and Release of
University Rights. Pursuant to these policies and to its patent procedures, a
constituent institution, after consultation with the inventor, shall cause its
rights to subsequent patents, if any, to be waived to the inventor if the
institution is convinced that no University facilities, time, or materials were
used in the development of the discovery or invention, that it was made on
personal time, and that such waiver would not conflict with any pertinent
agreement between the institution and a sponsoring agency or agencies.
Pursuant to these
policies and to its patent procedures, a constituent institution, after
consultation with the inventor, may in its discretion and upon such terms as it
deems appropriate, cause its rights to the discovery or invention, if any, to
be released and waived to the inventor if the institution is convinced that the
discovery or invention is clearly one that is non-patentable, that it does not
warrant further evaluation as to patentability, or if the discovery or
invention has been returned to the institution after negative evaluation by the
institution's agent(s).
V. Income From Patents
The Inventor. The
inventor shall receive not less than fifteen percent (15%) of the gross
royalties derived from licensing or income from assignment or sale of each
patent resulting from his invention and owned by the constituent institution
pursuant to these policies. With this
limitation, the exact proportion shall be determined in accordance with the institution's
patent procedures as approved by the institution's Board of Trustees and the
President.
The Institution. Income
earned by each constituent institution from its patent and licensing activity
shall be held in a separate trust fund by that institution to support
research. The particular unit of the
institution employing the inventor or furnishing the research facilities will
be given preferential consideration, though not necessarily exclusive
consideration, in the allocation of such royalty income by the institution. Allocations from such trust funds shall be
made by the chancellor of each institution after receiving recommendations from
the institutional patent committee.
VI. Specific Conditions Governing
Sponsored Research
Government Sponsored
Research. Patents on inventions arising from research financed by the United
States Government may be controlled by the terms of the grants and contracts
specified by the government agency pursuant to Federal law. In some cases, the government claims rights
to patents resulting from research financed under contracts supported by
government agencies. Except as provided
by Federal law or by government-supported grants or contracts, or when no
patent rights are claimed by the United States Government, or when such rights
are waived by the government, patents arising from government sponsored
research are controlled by these patent and copyright policies. When a patent arising out of research
supported under government grants or contracts is owned by a constituent
institution, that institution will, if requested, agree to a non-exclusive
royalty-free license for use by the government of such patent. If such a patent
is owned by the government, the institution shall be free to use the invention
so covered for its own scientific and educational purposes without payment of
royalty or other charge, consistent with Federal Law.
University Research
Sponsored by Non-Governmental Entities. The University must ensure that its
facilities and the results of the work of its employees are applied in a manner
which best serves the interests of the public. Likewise, the legitimate
interests of a private sponsor who provides financial or other support to
research carried out through the constituent institutions must be considered.
Constituent institutions should normally reserve the right to ownership of
patents on inventions arising out of research supported in whole or in part of
grants or contracts with nongovernmental organizations or firms. Contracts or
agreements which are entered into between institutions and such organizations
or agencies should contain clauses setting forth such a reservation unless
deviations therefrom are requested by the sponsor and approved by the
institution consistent with the public interest. In the interest of fair
treatment to the sponsor in consideration for the sponsor's investment and in
the interest of discharging the institution's obligation to the public in the
application of its facilities and its employees' time and talent, special
provisions may be negotiated by the institution in such non-government
sponsored contracts, upon request, provided that the institution retains the
right to use the invention for its own research, educational, and service
purposes without payments of royalty fees, that the institution requires the
sponsor to use due diligence in the commercial use of the invention, and that
the institution retains the right freely to publish the results of its research
after a reasonable period necessary to protect the right of the parties and to
allow for the filing of a patent application.
VII. Publication. A major function of the
University of North Carolina is the advancement and dissemination of
knowledge. Any practice that
unnecessarily restricts the publication of results of scientific work is to be avoided. However, it is recognized that the full
development of useful inventions or discoveries may be dependent upon the
securing of patent protection that will enable the commercial utilization of
the discoveries or inventions.
Accordingly, under certain circumstances it may be necessary to delay
for a minimum period the publication of results of research.
If a sponsor proposes
to support a research effort that will involve a limited exclusive license to
use of patents resulting therefrom, the agreement with respect to publication
shall include the following. First, the sponsor must agree that the results of
the research may be published if desired by the investigators or research
workers. Second, in order that patent
applications not be jeopardized, the constituent institution, the
investigators, and research workers may agree that any proposed publication
will be submitted to the sponsor with a notice of intent to submit for
publication. If within a period of no
more than 90 days from the date of such notice the sponsor fails to request a
delay, the investigators, research workers and institution shall be free to
proceed immediately with the publication.
However, if the sponsor notifies the institution that a delay is
desired, the submission of the manuscript to the publisher shall be withheld
for the period requested, but in no event shall the total period of delay be
longer than one year from the date of the notice of intent to submit for
publication mentioned above. Such a
period will permit the sponsor to have the necessary patent applications
prepared and filed but will not unduly restrict the dissemination of scientific
knowledge.
VIII. Avoidance of Conflicts. Conflicts
involving patentable inventions and discoveries may arise when a constituent
institution's personnel, including students enter into personal consulting
agreements with outside firms and organizations. The agreements that business firms wish to
have executed by those who are to serve as their consultants frequently contain
provisions as to the licensing or assignment of the consultant's inventions and
patents. Unless such provisions are
narrowly worded, they usually will apply to areas in which the individual's
University work lies and thus come into conflict with the obligations owed by
the individual to the University under these policies, either with respect to
the rights of the constituent institution itself in an invention or with
respect to the rights of a sponsor of research in the same field or subject
matter.
Prior to signing any
consulting agreement that deals with patent rights, trade secrets, or the like,
where any University time, facilities, materials or other resources are
involved, University personnel and students must bring the proposed agreement
to the attention of the appropriate administrators of the constituent
institution in accordance with its patent procedures and either obtain a waiver
of University rights or otherwise modify the consulting agreement to conform
with these policies, as is determined by the institution in its discretion.
The foregoing
requirements are in addition to, and do not eliminate the necessity for, any
approval which may be required by the University of North Carolina Policy on
External Professional Activity of Faculty and Other Professional Staff.
IX. Duty To Disclose Discoveries And
Inventions. All individuals whose discoveries and inventions are covered by
these Polices have a duty to disclose their discoveries and inventions promptly
in accordance with the patent procedures adopted by each constituent
institution pursuant to these policies.
The duty to disclose arises as soon as the individual has reason to
believe, based on his or her own knowledge or upon information supplied by
others, that the discovery or invention may be patentable. Certainty about patentability is not required
before a disclosure is made. Individuals
shall execute such declarations, assignments, or other documents as may be necessary
in the course of invention evaluation, patent prosecution, or protection of
patent rights, to insure that title in such inventions shall be held by the
constituent institution, where these policies indicate the institution shall
hold title, or by such other parties as may be appropriate under the
circumstances.
X. Patent Committees. The chancellor of
each constituent institution of the University of North Carolina shall appoint
a patent committee, consisting of no less than three members, one of whom shall
be designated by the chancellor to serve as chairman. The committee for the institution shall
review and recommend to the chancellor or his delegate the procedures for the
implementation of these policies; shall resolve questions of invention
ownership that may arise between the institution and its faculty, staff, or
students or among individuals; shall recommend to the chancellor the
expenditure of the patent royalty fund; and shall make such recommendations as
are deemed appropriate to encourage disclosure and assure prompt and
expeditious handling, evaluation, and prosecution of patent opportunities.
The chairmen of the
institutional patent committees, or their delegates, shall meet as an
All-University Patent Committee. The
meetings of the All-University Patent Committee shall be at the call of the
President of the University or his delegate who shall serve as its chairman.
XI. Patent Management. The chancellor of
each constituent institution, or any person designated by him, is authorized to
negotiate with reputable agencies or firms to secure for each institution arrangements
for patent management, including competent evaluation of invention disclosures,
expeditious filing of applications on patents, and licensing and administration
of patents.
A constituent
institution is authorized to administer its own patent management and licensing
program without the use of a patent management agent, if it determines that
such arrangement may better serve institutional and public interests. Nothing
in this section shall be construed to permit the reduction of the minimum share
due an inventor as specified in Section V of these policies.
XII. Copyright Use And Ownership[1]
Preamble. The
University of North Carolina, through its constituent institutions, is
committed to complying with all applicable laws regarding copyright and
patents. The University, as an
institution devoted to the creation, discovery, and dissemination of knowledge,
supports (1) the responsible, good faith exercise of full fair use rights, as
codified in 17 U.S.C. § 107, by faculty, librarians, and staff in furtherance
of their teaching, research, and service activities; (2) copyright ownership
for creative, non-directed works by faculty, staff, and students and University
ownership of directed employment-related works; and (3) protection of ownership
rights for creators of works that require a different ownership model.
Copyright Use. To
the foregoing stated ends the University shall:
1.
Inform
and educate the University community about fair use and the application of the
four fair use factors as set forth in 17 U.S.C. § 107 and as interpreted in
applicable case law. The four fair use
factors are:
a.
The
character and purpose of the proposed use.
b.
The
nature of the work to be used.
c.
The
amount and substantiality of the portion to be used.
d.
The
effect on the market or potential market for the work
2.
Develop
and make available resources concerning copyright laws in general and the application
of fair use in specific situations.
3.
Ensure
that faculty, EPA and SPA staff, and students have access to assistance in
making fair use determinations.
Copyright Ownership. With respect to determining ownership
of copyright, the University's policy addresses works by category of
copyrightable work (including traditional or non-directed works, directed work,
and sponsored or externally contracted works) and by category of author (i.e.,
faculty, EPA and SPA staff, or student).
Ownership of copyrighted subject matter, including software, hinges on
which category of work and which category of author pertain to the work at
issue. (In this Policy the term "Institution" means a constituent
institution or component agency of the multi-campus University of North
Carolina at which an author or work's creator is employed or enrolled.)
Copyrightable Works
1.
Works by Faculty and EPA Non-Faculty Employees.
a.
Traditional Works or
Non-Directed Works: A "traditional work or non-directed work"
is a pedagogical, scholarly, literary, or aesthetic (artistic) work originated
by a faculty or other EPA employee resulting from non-directed effort. (Such works may include textbooks,
manuscripts, scholarly works, fixed lecture notes, distance learning materials
not falling into one of the other categories of this policy, works of art or
design, musical scores, poems, films, videos, audio recordings, or other works
of the kind that have historically been deemed in academic communities to be
the property of their creator
Ownership:
Creator of the work, unless it is a directed work, sponsored work
requiring University ownership, or a work for hire described in a written
agreement between the work's creator and the Institution. (See section 2., below, for the definition of
"work for hire;" under
the Copyright Act the Institution is deemed the "Author" of a work for hire.)
If the Institution is to be involved in commercializing a traditional
work or non-directed work, the work's creator shall assign the work to the
Institution under an Assignment Agreement.
The Assignment Agreement shall contain provisions outlining the
commercialization responsibilities of the Institution and a mechanism for the
sharing of commercial proceeds with the Author.
In cases of ownership by the creator of a traditional work, the
Institution, where practical, shall be granted a non-exclusive, non-transferable,
royalty-free license for its own educational or research use (hereinafter
referred to as a "Shop Right").
b.
Traditional Works or Non-Directed Works Involving
Exceptional Use of Institutional Resources:
"Exceptional
use of institutional resources" means institutional support of traditional
works with resources of a degree or nature not routinely made available to
faculty or other EPA employees in a given area.
Ownership: Institution.
However, upon agreement by the appropriate institutional official or
body, the Institution may release or transfer its rights to the work's creator,
with the Institution retaining (a) a Shop Right, and/or (b) the right to
require reimbursement and/or income sharing from the creator to the Institution
if the work produces income for the creator.
The parties may also negotiate for joint ownership of such works, with
the approval of the appropriate institutional official or body.
c.
Directed Works: "Directed works" include works
that are specifically funded or created at the direction of the Institution
(including, but not limited to, works for hire by faculty or other EPA
employees).
Ownership: Institution.
The work's creator, where practical, shall be granted a Shop Right. The Institution may release or transfer its
authorship rights to the work's creator under a written agreement negotiated
between the creator and the Institution, usually with the Institution retaining
(a) a Shop Right, and/or (b) the right to require reimbursement and/or income
sharing from the work's creator to the Institution if the work produces income
for the creator. The parties may also
negotiate for joint ownership of such works, with the approval of the
appropriate institutional official or body.
d.
Sponsored or Externally
Contracted Works: A "sponsored or externally contracted work" is any type of copyrighted
work developed using funds supplied under a contract, grant, or other
arrangement between the Institution and third parties, including sponsored
research agreements.
Ownership: For a
sponsored or externally contracted work created under an agreement that
expressly requires copyright ownership by the Institution, the creator of the
work must disclose the work to the Institution.
Provided there is no conflict with a sponsored agreement, the
Institution may release or transfer its rights to the work's creator under an
agreement negotiated between the creator and the Institution, usually with the
Institution retaining (a) a Shop Right, and/or (b) the right to require
reimbursement and/or income sharing from the work's creator to the Institution
if the work produces income for the creator; or the parties may also negotiate
for joint ownership of such works, with the approval of the appropriate
institutional official or body.
For a sponsored or
externally contracted work created under an agreement that does not expressly
require copyright ownership by the Institution or a third party, the creator of
the work shall own the work, subject to required disclosure to the Institution
where required under institutional policy.
In case of ownership by the work's creator, the Institution, if
practical, shall be assigned a Shop Right.
2.
Works by SPA Staff. Most works by SPA staff members are
considered to be "Works for Hire."
A "work made for hire"
is:
a.
a
work prepared by an employee within the scope of his or her employment; or
b.
a
work specially ordered or commissioned for use as a contribution to a
collective work, as a part of a motion picture or other audiovisual work, as a
translation, as a supplementary work, as a compilation, as an instructional
text, as a test, as answer material for a test, or as an atlas, if the parties
expressly agree in a written instrument signed by them that the work shall be considered
a work made for hire.
Ownership: Works for hire made by SPA staff shall be
owned by the Institution. In special
cases, though, the Institution may enter into an agreement in advance that the
SPA employee shall own the copyright. In addition, a designated institutional
official may waive institutional ownership.
3.
Works by Independent Contractors.
Works
by independent contractors are Works for Hire.
Ownership: Works by independent contractors shall be
owned in accordance with the contract under which the work was created. The Institution shall insure that there is a
written contract for work by an independent contractor specifying institutional
ownership.
4.
Works
by Students. "Student works" are papers,
computer programs, theses, dissertations, artistic and musical works, and other
creative works made by students. (For
purposes of this policy, the term "students"
includes teaching, graduate, and research assistants.)
Ownership: Ownership of the copyright to these works
belongs to the student unless the work falls within one of the exceptions
described below:
a.
Sponsored or Externally
Contracted Works: Ownership shall be in accordance with the section
of this policy on sponsored or externally contracted works made by faculty or
other EPA employees.
b.
Works for Hire: Student works created by students in the
course of their employment with the University shall be considered to fall
within the scope of Work for Hire in accordance with the section of this policy
on works for hire made by SPA staff.
c.
Classroom, laboratory, and other academic materials
generated by students in the instructional process: Students have a limited right to use these
materials for personal, educational purposes.
Students may not use these materials for commercial gain.
As provided by the institutional
policy or as agreed to mutually, rights in student works may be transferred
between the student and the Institution.
In such cases, a written Assignment Agreement shall specify the
respective rights and obligations of the parties. The parties may also negotiate for joint
ownership of such works, with the approval of the appropriate institutional
official or body.
Works Subject
to Protection by Both Copyright and Patent Laws. In cases where an invention or
creation is subject to protection under both patent law and copyright law, if
the Institution elects to retain title to its patent rights, then the
inventor/creator(s) shall assign copyright to the Institution and the
Institution shall be compensated in accordance with the royalty provisions of
the Institution's patent policy and procedures.
Administration. The chief executive officer of each
Institution shall designate an administrative office, officer, or unit
responsible for implementing this policy.
The designated institutional administrative entity shall address various
matters covered by this policy, including developing policies and procedures
designed to supplement and interpret the ownership aspects of this policy,
providing advice regarding ownership of specific works, releasing institutional
rights, and accepting an assignment of rights to the Institution from an author
or creator of a work.
Dispute Resolution. The chief executive officer of each
Institution shall designate a dispute resolution mechanism (such as a Copyright
Committee or Intellectual Property Committee) for resolving any disputes which
may arise among an author, other creator of a work, a third-party sponsor of a
work, and an institutional official or office concerning copyright ownership or
other rights.
XIII. Service Marks, Trademarks and Trade
Secrets. Service marks and trademarks are the property of the constituent
institutions, and without express authorization from the chancellor or his
designee, no steps shall be taken for securing trademarks or service marks by
usage or registration with respect to products resulting from or arising out of
research or other activities carried out at a constituent institution or
developed with the aid of its facilities or staff, or produced through funds
administered by the constituent institution.
The institutions are hereby authorized to register such marks as are
deemed by that institution to be appropriate and to license the use of such
marks, provided that the income from such licensing shall be used to support
the research and educational programs of the institution and not accrue to the
personal benefit of University personnel.
The use of trade
secret agreements to protect discoveries and inventions developed at the
constituent institutions may not be consistent with the aims and purposes of
the University of North Carolina. Special provisions may be required to protect
the free dissemination of students' degree-related work.
XIV. Procedure. The Board of Trustees of each
constituent institution shall adopt patent procedures that are consistent with
and implement these policies, taking into account the nature and scope of the
institution's programs. The
institutional patent procedures shall be reviewed and approved by the President
or his representative prior to approval by the Trustees.
XV. Exceptions. Exceptions to the above
policies are authorized if approved by the President following a favorable
review and recommendation from the pertinent institutional committee or the
All-University Patent Committee. Before
approving an exception, the President must determine that, on the basis of the
evidence available, such exception is in the public interest and is consistent
with the University's responsibilities to the public.
[1] By
resolution, the Board of Governors provides the following:
(1) The provisions of Section XII are
effective at the earlier of the following:
(1) the date as of which the institution adopts a new or amended policy
to conform to the board’s policy; or (2)
(2) Nothing in this policy is intended to
alter the provisions of The Code of the University of North Carolina,
Chapter VI: Academic Freedom and Tenure.
(3) The President is authorized to
establish such supplemental policies or procedures, not inconsistent with the
policy, as the President may deem necessary or desirable to implement or
administer the policy. This may include
provision for review by the Office of the President of policies or procedures
intended by University institutions and agencies to implement the policy.