PSC ARCHIVE: This page was originally posted in October 2002. It reflects the PSC position on a draft of the University's Intellectual Property Policy. On November 18, 2002, the CUNY Board of Trustees passed a policy on intellectual property rights which you can access by clicking here. In July 2003, an administrative judge for the New York State Public Employees Relations Board (PERB) ruled that CUNY must bargain with the PSC on intellectual property policies "relating to compensation and the dispute resolution." For more information about that decision, click here.
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Go to our discussion board on the intellectual property policy. |
PSC INTELLECTUAL
PROPERTY ALERT
Hearing
on CUNY's Intellectual Property Policy Draft, co-hosted
by University Faculty Senate and CUNY Vice Chancellor for Legal
Affairs, Wednesday, October 2, 5:30 pm, room 4102, CUNY Grad Center, 365 Fifth Avenue at 34th Street.
The University has proposed a new Intellectual Property Policy that combines existing Research Foundation and University copyright and patent policies. This new policy directly affects the terms and conditions under which CUNY’s instructional staff work.
The PSC held a meeting with Vice-Chancellor for Legal Affairs Frederick Schaffer on February 22, 2002, pursuant to a Public Employment Relations Board recommendation, to discuss CUNY’s Draft Intellectual Property Policy. We went through the entire document raising substantive problems. Vice-Chancellor Schaffer responded positively to a number of our concerns and we look forward to seeing what changes he makes to the policy. The PSC has identified serious consequences for scholarship and for the rights of faculty to their intellectual property should the draft policy be enacted without changes. CUNY’s draft policy, as revised on January 2, 2002, would :
Adversely impact on the professional work life of the faculty - CUNY’s policy unnecessarily regulates publications and other creative endeavors; it would make it difficult for our members to get book publishing contracts and it would place computer scientists’ Intellectual Property rights in an uncertain limbo.
Create an overly broad "scope of employment" definition - so that CUNY will potentially subject all of our work product to the policy even when away from the University or making incidental use of University resources.
Infringe on academic freedom - raising the possibility of censorship, CUNY’s policy has prior restraint provisions, i.e. requiring prior approval.
Take back certain rights - while granting the creater ownership of copyrighted material, CUNY’s policy goes on to impose a royalty-free license for CUNY’s use.
Create a bureaucratic bottleneck - the rights of copyright holders are not adequately protected by the proposed composition of the Intellectual Property Committee; there is no mechanism to enforce reasonable time limits in the event of disputes.
Threaten commercial development of inventions - creators of patentable inventions would be placed at a commercial disadvantage if they have to wait for 11 months to get determinations of the University’s intentions to claim ownership rights.
Undermine due process protections - arbitrary decision-making and vagueness on duty to disclose rules exacerbate the overly broad definition of scope of employment, no time limits for key decisions, and no right of appeal to a neutral arbiter.
The PSC believes it is in the best interest of its members for CUNY to negotiate the new Intellectual Property policy with the PSC. So far, CUNY has refused to negotiate, but has agreed to discuss. The PSC’s alternative draft policy on Intellectual Property builds in University Faculty Senate and PSC participation, will give greater protection to our members’ rights, and corrects some of the dangerous aspects of CUNY’s proposed policy. The PSC’s Draft Policy on Intellectual Property is reproduced here in its entirety with changes noted from CUNY’s draft 1-2-02 policy.
NOTE: On May 7, 2002, the University issued a new draft after meetings with representatives from the PSC, the Executive Board of the UFS and concerned members of the CUNY community at a public forum. The new draft speaks in part to concerns raised by the PSC and others. The PSC is preparing a response to the May 7 draft. Click HERE for the May 7, 2002 draft which is available from the CUNY Website.
UPDATE: Hearing on CUNY's Intellectual Property Policy Draft, co-hosted by University Faculty Senate and CUNY Vice Chancellor for Legal Affairs, Wednesday, October 2, 5:30 pm, room 4102, CUNY Grad Center, 365 Fifth Avenue at 34th Street.
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Working CUNY Draft
THE CITY UNIVERSITY OF NEW YORK INTELLECTUAL PROPERTY POLICY (NOTE: The 1/02/02 draft is a revision of last year's original 5/16/01 draft. Underlined and bolded text indicates language added by the 1/02/02 draft. Crossed out text indicates language deleted by the 1/02/02 draft.) |
PSC
Draft
THE
CITY UNIVERSITY OF NEW YORK INTELLECTUAL PROPERTY POLICY (NOTE: The PSC draft uses CUNY's 1/02/02 draft as its base document. Changes -- both additions and deletions -- are in brown.) |
Annotations
Changes by the PSC of the CUNY draft policy -- both additions and deletions -- are in brown color. |
| I.
Purpose
• To serve the public good by promoting and facilitating the dissemination of the products of research, authorship and invention by the University community •To recognize and encourage research, authorship and invention by the University community by providing for the sharing of tangible rewards resulting from the commercialization of such research, authorship and invention •To define the ownership, distribution and commercialization rights associated with the products of research, authorship and invention by the University community, and to define the policies and procedures for managing such products |
I.
Purpose • To serve the public good by
promoting and facilitating the dissemination of the products of
research, authorship and invention by the University community •To recognize and encourage
research, authorship and invention by the University community by
providing for the sharing of tangible rewards resulting from the
commercialization of such research, authorship and invention
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No changes |
| 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) using University Resources or (2) as a direct result of University duties.
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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 significant use of University Resources or (2) as otherwise clearly owned by the University as defined in III.B. |
Note the
PSC change to "making
significant use of..." and
as as
otherwise clearly owned by the University as defined in III.B.
Rationale: Using "University Resources" rather than "significant use" gives much to much control to the University. |
| III.
Ownership Of Intellectual Property
A. General Rule: 1. The Creator shall own all rights in Copyrightable Works (1). 2. The University shall own (2) all rights in other Intellectual Property. B. Exceptions and Clarifications to the General Rule: 1. Sponsored Research. Ownership of Intellectual Property resulting from Sponsored Research shall be determined pursuant to the terms of the agreement between the University or the Research Foundation, as the case may be, and the Sponsor, or as otherwise required by law. If ownership is not defined in the agreement, Intellectual Property shall be owned pursuant to the General Rule.
4. Distance Education and
Electronically Published Course Materials. Courses designed to be
delivered over the internet, by computer or through similar technologies
may involve both Copyrightable Works and other Intellectual Property.
Consistent with its intent to recognize the Creator as the owner of
Scholarly or Pedagogical works, the University claims no ownership
rights in either the intellectual content of such courses, or the tools
and technologies used to present them, unless the work was the result of
Sponsored Research or is Commissioned Work, in which case B.1 or B 5. Negotiated Agreements.
A Member of the University who wishes to conduct work using University
Resources under terms different from those set forth in the General Rule
above may enter into an agreement for the use of such resources with the
College(s) where such work shall be conducted. Such agreement shall be
negotiated by the President(s) of the College(s) with the advice of the
C. Creator's
Non-Commercial Use. Where the University owns the Intellectual Property
under this Policy, the Creator is permitted to continue to use the work
for his or her own non-commercial purposes. Any distribution by the
Creator to academic colleagues outside the University beyond the limits
of "fair use", as defined in Section 107 of the Copyright Act
of 1976, shall be permitted pursuant to written agreement from the
University D. License to University. Intellectual Property owned by a Member of the University and created or used by such Member of the University in the course of instruction at the University (including distance education materials under III.B.4) shall be subject to a royalty-free, non-exclusive license to the University to use such Intellectual Property for internal educational and research purposes. Notwithstanding such license, the Member of the University shall retain the right and responsibility for the intellectual stewardship of such Intellectual Property, including correcting errors and keeping content current and relevant. The Member of the University shall have the right to be identified, or to refuse to be identified, as the Creator of such course materials by the University.
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III.
Ownership Of Intellectual Property
A. General Rule: 1. The Creator shall own all rights in Copyrightable Works (1). 2. The Creator shall own (2) all rights in other Intellectual Property. B. Exceptions and Clarifications to the General Rule: 1. Sponsored Research. Ownership of Intellectual Property resulting from Sponsored Research shall be determined pursuant to the terms of the agreement between the University or the Research Foundation, as the case may be, and the Sponsor, or as otherwise required by the applicable law for the research grant in question. If ownership is not defined in the agreement, Intellectual Property shall be owned pursuant to the General Rule. It is understood that faculty participation in sponsored activities is voluntary and cannot be made part of a faculty member’s contractual teaching, research, or service obligation without the faculty member’s consent. The university has an obligation to inform faculty members whenever a university activity results from sponsor-based funding. 2. Commissioned Work. The
University shall normally own Intellectual Property resulting from Work
that is done in the context of a written agreement other than the
labor-management contract. The member shall have the right to
representation by the PSC in negotiating the terms and conditions of the
commissioned work. In all cases of Commissioned Work, ownership and
royalty rights shall be specified in a written agreement, a copy of
which shall be submitted to the O 3. Intellectual Property Created Within the Scope of Employment. Copyrightable Work, other than Scholarly or Pedagogical Work, prepared by an employee of the University or the Research Foundation which is clearly within the scope of his or her employment and there is a written expectation of the work being produced shall be owned by the University or the Research Foundation, as the case may be. Examples of Copyrightable Work subject to this provision include personnel manuals, written policies and administrative handbooks prepared by employees of the University. Sections V.D.6 and V.E. of this Policy do not apply to such works. 4. Distance Education and
Electronically Published Course Materials. Courses designed to be
delivered over the internet, by computer or through similar technologies
may involve both Copyrightable Works and other Intellectual Property.
Consistent with its intent to recognize the Creator as the owner of
Scholarly or Pedagogical works, the University claims no ownership
rights in either the intellectual content of such courses, or the tools
and technologies used to present them, unless the work was the result of
Sponsored Research or is Commissioned Work, in which case B.1 or B 5. Negotiated Agreements. A Member
of the University who wishes to conduct work using University Resources
under terms different from those set forth in the General Rule above may
enter into an agreement, with
the consent of the Professional Staff Congress,
for the use of such resources with the College(s) where such work shall
be conducted. Such agreement shall be negotiated by the President(s) of
the College(s) with the advice of the
Delete section III D |
PSC draft changes "University" to "Creator" shall own ...
Key change: "It is understood that faculty participation in sponsored activities is voluntary and cannot be made part of a faculty member’s contractual teaching, research, or service obligation without the faculty member’s consent.
PSC draft deletes section III D. Rationale: As written, III D would prevent faculty from publishing. No publisher would sign a contract with an author relinquishing any license rights to the university. |
| IV.
Administration of this Policy
Authority and responsibility for this policy shall reside with the University Chancellor. The Chancellor may seek the advice and assistance of the Intellectual Property Committee (as described in Section V.B.). The responsibility for administration of the policy at the college level is delegated to the Designated Individual at each College. |
IV.
Administration of this Policy
Authority for this policy shall reside in the Agreement negotiated between the Professional Staff Congress and the City University of New York. The Chancellor, in administering this policy, may seek the advice and assistance of the Intellectual Property Committee (as described in Section V.B.). The responsibility for administration of the policy at the college level is delegated to the Designated Individual at each College.
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PSC adds "for
this policy shall reside in
the Agreement negotiated between the Professional Staff Congress and the
City University of New York."
Rationale: Recognizes collective bargaining agreement. |
| V.
Management of Intellectual Property
A. Disclosure of Intellectual Property.
2. Form. Disclosure shall be made
on a disclosure form prescribed by the University and available from the
3. Timing. Disclosure shall be made prior to submission of the Intellectual Property for publication, other release to the public domain or attempt to license, distribute or manufacture the Intellectual Property commercially. 4. Multiple creators. Where more than one Member of the University has participated in the creation of Intellectual Property, all participants must sign the disclosure notice. B. Intellectual Property Committee. 1. Purpose. An Intellectual
Property Committee shall be established to regularly review disclosures
made to the 2. Composition. The Intellectual
Property Committee shall consist of at least nine members. The 3. Term. Intellectual Property Committee Members are appointed for three-year terms with non-concurrent expiration dates and may serve successive terms. C. Determination of Ownership Rights. 1. Determination of Rights. The Intellectual Property Committee shall determine whether the University has reason to exercise ownership rights over Intellectual Property disclosed to it, and, if the University has such rights, whether it desires to obtain protection for or pursue licensing of such Intellectual Property. 2. Notice to Creator. The D. Legal Protection and Commercialization. 1. Forms of Protection.
Intellectual Property determined by the Intellectual Policy Committee to
be owned by the University may be patented, registered with the U.S.
Copyright Office or otherwise legally protected by the University
through the 2. Assignments. The Creator of
such Intellectual Property shall cooperate with the University and the
3. Costs of Protection. All costs involved in obtaining and maintaining legal protection of University-owned Intellectual Property shall be borne by the University, unless the University disclaims, releases or waives its ownership rights or unless a licensee agrees to bear such costs pursuant to the terms of a written license agreement.
4. Commercialization. The 5. Progress Reports. The
E. Creator's Additional Rights. 1. Six Month Limit. The University
shall make every reasonable effort to act expeditiously under the
circumstances in arriving at all decisions and taking all actions under
this Part V. If, within six months of disclosure to the Intellectual
Property Committee, the Creator has not received notice from the
Committee or the 2. Release or Proof of Continuing
Effort. Within 90 calendar days of the date of a request from a Creator
for the release of Intellectual Property pursuant to Section E.1, the
University shall either (a) disclaim ownership of the Intellectual
Property 3. University Waiver. The University shall be deemed to have waived its rights in the Intellectual Property if: (a) it fails to meet the deadline specified in Section E.2 above, or a mutually agreeable extended time period; or (b) in the case of a patentable Invention, it fails to file a patent application within 11 months of the date of publication as set forth in the Creator's request for release of the Intellectual Property under Section E.1. 4. Creator's Right to Protect. If
the University, through the Intellectual Property Committee, disclaims or
releases ownership of Intellectual Property F. Sponsored Research
Requirements. The |
V.
Management of Intellectual Property
A. Disclosure of Intellectual Property owned by the University pursuant to III.B.1,2,3, and 5. 1. Disclosure Required. Creators
shall promptly disclose to the
2. Form. Disclosure shall be made
on a disclosure form prescribed by the University and available from the
3. Timing. Disclosure shall be made prior to submission of the Intellectual Property for publication, other release to the public domain or attempt to license, distribute or manufacture the Intellectual Property commercially. 4. Multiple creators. Where more than one Member of the University has participated in the creation of Intellectual Property, all participants must sign the disclosure notice. B. Intellectual Property Committee. 1. Purpose. An Intellectual
Property Committee shall be established to regularly review disclosures
made to the 2. Composition. The Intellectual
Property Committee shall consist of nine members. The 3. Term. Intellectual Property Committee Members are appointed for three-year terms with non-concurrent expiration dates and may serve successive terms. C. Determination of Ownership Rights. 1. Determination of Rights. The Intellectual Property Committee shall determine whether the University has reason to exercise ownership rights over Intellectual Property disclosed to it, and, if the University has such rights, whether it desires to obtain protection for or pursue licensing of such Intellectual Property. 2. Notice to Creator. The D. Legal Protection and Commercialization. 1. Forms of Protection.
Intellectual Property determined by the Intellectual Policy Committee to
be owned by the University may be patented, registered with the U.S.
Copyright Office or otherwise legally protected by the University
through the 2. Assignments. The Creator of
such Intellectual Property shall cooperate
(when there is no
dispute)
with the University and
the 3. Costs of Protection. All costs involved in obtaining and maintaining legal protection of University-owned Intellectual Property shall be borne by the University, unless the University disclaims, releases or waives its ownership rights or unless a licensee accepted by the creator agrees to bear such costs pursuant to the terms of a written license agreement. 4. Commercialization. The 5. Progress Reports. The 6. Grant or Assignment to Creator. If the University elects not to protect or commercialize University-owned Intellectual Property, or decides to abandon protection or commercialization, the University shall, grant the Creator permission to file an application for protection or assign to the Creator some or all of the University's rights in such Intellectual Property, provided however that the University may condition the release of such rights on the assignment to the University of a share, not to exceed 10 %, of net proceeds. For purposes of this section, "net proceeds" shall mean earnings to the Creator from the Intellectual Property over and beyond reasonable costs incurred in the process of legal protection and management. The University shall retain a royalty-free, non-exclusive license to use any Intellectual Property released to the Creator under this Section D.6. for internal educational and research purposes. Pursuant to 37 C.F.R. Part 401, as amended (regulations implementing the Bayh-Dole Act), the U.S. government shall also retain certain rights.
1. Time
Limit. The University
shall make every reasonable effort to act expeditiously under the
circumstances in arriving at all decisions and taking all actions under
this Part V. If, within 45 days of disclosure to the Intellectual
Property Committee, the Creator has not received notice from the
Committee or the
2. Within 30 days of submission of a patentable and not otherwise copywritable intellectual property disclosure, the university must state in writing that it has the funds to pursue a patent. In the absence of such a statement, complete ownership of the intellectual property reverts to the Creator.
3. University Waiver. The University shall be deemed to have waived its rights in the Intellectual Property if, in the case of a patentable Invention, it fails to file a patent application within 3 months of the date of publication as set forth in the Creator's request for release of the Intellectual Property under Section E.1. 4. Creator's Right to Protect. If
the University, through action
of the Intellectual
Property Committee or by
failure to prosecute intellectual property rights in a timely manner
according to Section E. 1, disclaims or releases ownership
of Intellectual Property
F. Sponsored Research
Requirements. The G. Management Organization. The
University or the
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PSC deletes: "any Intellectual Property that is or might be owned by the University under this policy, including improvements and reductions to practice and Intellectual Property created under Sponsored Research."
Note that the PSC drafts changes that broaden faculty representation on Intellectual Property Committee with three members designated by the UFS and three by the PSC.
PSC adds more concrete language about dispute resolution.
PSC draft substitutes "Time Limit" for "Six Month Limit"
PSC Draft deals with issues of timeliness and faculty right to intellectual property.
PSC Draft deals with issues of timeliness and faculty rights to intellectual property.
More on timeliness and faculty rights to intellectual property.
PSC Draft deletes "and/or commercialization"
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| VI.
Distribution of Income from Intellectual Property
A. Policy. A Creator of University-owned Intellectual Property is entitled to share in the income, including royalties, equity interests (subject to any University conflict of interest policy), and dividends, earned from the commercialization of that Intellectual Property. B. Distribution. Subject to the terms of any Sponsored Research agreement and unless otherwise agreed by the University and the Creator, gross income created from commercialization of University-owned Intellectual Property shall be distributed as follows: 1. First, to pay for any out-of-pocket expenses incurred by the University or the Research Foundation in connection with the administration, protection and commercialization of such Intellectual Property, including, but not limited to, fees paid to outside legal, consulting, marketing and licensing organizations and any other out-of-pocket costs incurred by the University or the Research Foundation. 2. Then, 10 % applied to a fund at
the 3. The resulting "Net Proceeds" shall be distributed as follows: - 50 % to the Creator; - 25 % to the University for the support of research and scholarly activity; and - 25 % to the Creator's College(s), with 50 % of such amount going to the Creator's academic or research unit(s) for the support of research and scholarly activity. C. Multiple Creators. Where two or more Members of the University contributed to the creation of Intellectual Property, the Creator's share of revenues shall be divided among them equally, unless the Members of the University agree upon a different distribution among themselves and notify the University in writing of their agreement. |
VI.
Distribution of Income from Intellectual Property
A. Policy. A Creator of University-owned Intellectual Property is entitled to share in the income, including royalties, equity interests (subject to any University conflict of interest policy), and dividends, earned from the commercialization of that Intellectual Property. B. Distribution. Subject to the terms of any Sponsored Research agreement and unless otherwise agreed by the University and the Creator, gross income created from commercialization of University-owned Intellectual Property shall be distributed as follows: 1. First, to pay for any out-of-pocket expenses incurred by the University or the Research Foundation in connection with the administration, protection and commercialization of such Intellectual Property, including, but not limited to, fees paid to outside legal, consulting, marketing and licensing organizations and any other out-of-pocket costs incurred by the University or the Research Foundation. 2. Then, 10 % applied to a fund at
the 3. The resulting "Net Proceeds" shall be distributed as follows: - 50 % to the Creator; - 25 % to the University for the support of research and scholarly activity; and - 25 % to the Creator's College(s), with 50 % of such amount going to the Creator's academic or research unit(s) for the support of research and scholarly activity. C. Multiple Creators. Where two or more Members of the University contributed to the creation of Intellectual Property, the Creator's share of revenues shall be divided among them equally, unless the Members of the University agree upon a different distribution among themselves and notify the University in writing of their agreement. D. In the case that the university has relinquished ownership of Intellectual Property according to Section V. E., then all proceeds from the intellectual property belong to the creator with the exception of V.D.6. |
PSC draft adds: |
| VII.
Issues Relating to Ownership of Equity and Conflict of Interest
A. University's Equity Interest. Subject to the review and approval of the Chancellor, and after a diligent effort to identify prospective sponsors or licensees, the University is permitted to take an equity interest in sponsors or licensee companies under the following terms and conditions: 1. Sponsors and licensees shall demonstrate management and technical capability, and have the financial resources necessary to meet their development objectives and their obligations to the University. 2. License agreements shall include measures of performance that must be met in order to maintain the license granted by the University. 3. Equity shall not be held in sufficient amount to confer management power, which generally would limit ownership to less than 20% of equity. 4. Equity shall represent a fair valuation for the Intellectual Property. 5. The University shall not accept a position on the board of directors of a licensee, but may accept and exercise observer rights on such boards. Exceptions to this policy require the approval of the University Chancellor. 6. Licensees shall pay for out-of-pocket patenting and related expenses. B. Member's Significant Interest. 1. Conflicts of interest may arise when a Member of the University has a Significant Interest in an entity: a. to which the University has granted a license of Intellectual Property created by the Member; b. with whom the University has entered into a Sponsored Research agreement; c. which has contracted with the University for use of the Member's University office or laboratory or other University Resources; or d. which employs or otherwise involves the Member's student advisees. 2. A Member of the University with a Significant Interest in a entity described in B.1, above: a. shall disclose the Significant Interest to the University prior to the execution of any agreement between the entity and the University; b. shall not represent the University in negotiating the agreement; and c. shall not employ or otherwise involve such Member's student advisees at the entity unless they are paid at market rate. 3. A Member's Significant Interest in a licensee shall not prohibit the Member from receiving Creator's royalties pursuant to VI.B.3 of this Policy. 4. Nothing in this Section shall lessen the obligation of a Member to comply with the requirements of state and federal law, the Research Foundation and any other University policy, regarding the disclosure of conflicts of interest. C. Consulting Agreements.
Conflicts involving Intellectual Property may arise when a Member of the
University enters into a personal consulting or other agreement with a
third party. Such agreements may include provisions as to the licensing
or assignment of Intellectual Property and may come into conflict with
this Policy. Prior to signing any consulting or other agreement that
deals with Intellectual Property rights, a Member of the University may
have the agreement reviewed by the |
VII.
Issues Relating to Ownership of Equity and Conflict of Interest
A. University's Equity Interest. Subject to the review and approval of the Chancellor, and after a diligent effort to identify prospective sponsors or licensees, the University is permitted to take an equity interest in sponsors or licensee companies under the following terms and conditions: 1. Sponsors and licensees shall demonstrate management and technical capability, and have the financial resources necessary to meet their development objectives and their obligations to the University. 2. License agreements shall include measures of performance that must be met in order to maintain the license granted by the University. 3. Equity shall not be held in sufficient amount to confer management power, which generally would limit ownership to less than 20% of equity. 4. Equity shall represent a fair valuation for the Intellectual Property. 5. The University shall not accept a position on the board of directors of a licensee, but may accept and exercise observer rights on such boards. Exceptions to this policy require the approval of the University Chancellor. 6. Licensees shall pay for out-of-pocket patenting and related expenses. B. Member's Significant Interest. 1. Conflicts of interest may arise when a Member of the University has a Significant Interest in an entity: a. to which the University has granted a license of Intellectual Property created by the Member; b. with whom the University has entered into a Sponsored Research agreement; c. which has contracted with the University for use of the Member's University office or laboratory or other University Resources; or d. which employs or otherwise involves the Member's student advisees. 2. A Member of the University with a Significant Interest in a entity described in B.1, above: a. shall disclose the Significant Interest to the University prior to the execution of any agreement between the entity and the University; b. shall not represent the University in negotiating the agreement; and c. shall not employ or otherwise involve such Member's student advisees at the entity unless they are paid at market rate. 3. A Member's Significant Interest in a licensee shall not prohibit the Member from receiving Creator's royalties pursuant to VI.B.3 of this Policy. 4. Nothing in this Section shall lessen the obligation of a Member to comply with the requirements of state and federal law, the Research Foundation and any other University policy, regarding the disclosure of conflicts of interest. C. Consulting Agreements. Conflicts involving Intellectual Property may arise when a Member of the University enters into a personal consulting or other agreement with a third party. Such agreements may include provisions as to the licensing or assignment of Intellectual Property and may come into conflict with this Policy. Prior to signing any consulting or other agreement that deals with Intellectual Property rights as identified in Roman Numeral III B 1,2,3 and 5, a Member of the University may have the agreement reviewed within 30 calendar days by the
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PSC draft adds: "Prior to signing any consulting or other agreement that deals with Intellectual Property rights as identified in Roman Numeral III B 1,2,3 and 5, a Member of the University may have the agreement reviewed within 30 calendar days by the...." Rationale: The CUNY draft potentially requires a faculty member to have the university Dean for research review every article, book and contracting agreement that transfers copyrights to a third party (e.g. journal and/or book publisher. This is not only an issue of intellectual property, but potentially one of academic freedom and censorship.
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| VIII.
Exceptions to and Waiver of Policy
A. Any Member of the University is entitled to request an exception or waiver to the provisions of this Policy, including in the event that a publisher or other outside organization proposes terms which are exceptions to this policy. B. A Member of the University
wanting an exception or waiver shall, in the first instance, send a
written request to the C. In the event that a request for exception or waiver is not granted pursuant to B, above, the Member of the University shall have the right to appear, accompanied by representatives of such individual's choice, before the Intellectual Property Committee for further consideration of the request. The Intellectual Property Committee shall prepare a report of its findings and an advisory recommendation to the University Chancellor for review. The decision of the Chancellor on the findings and recommendations of the Intellectual Property Committee shall be final.
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VIII.
Exceptions to and Waiver of Policy
A. Any Member of the University is entitled to request an exception or waiver to the provisions of this Policy, including in the event that a publisher or other outside organization proposes terms which are exceptions to this policy. B. A Member of the University
wanting an exception or waiver shall, in the first instance, send a
written request to the
C. In the event that a request for exception or waiver is not granted within 30 calendar days pursuant to B, above, the Member of the University shall have the right to appear, accompanied by a PSC representative or other representatives of such individual's choice, before the Intellectual Property Committee for further consideration of the request. This hearing shall not occur later than 30 calendar days from the date of the request for such a hearing. The Intellectual Property Committee shall prepare a report of its findings and submit an advisory recommendation to the University Chancellor for review within 30 calendar days of the hearing. The decision of the Chancellor shall be rendered within 30 calendar days. Failure of the Intellectual Property Committee or the Chancellor to meet the above time limits will result in the exemption being automatically approved. D. Parties to the process described in VIII.A,B, and C, (including the University Dean of Research, the College President(s), the Executive Director of the Research Foundation, the Chancellor, and the members of the Intellectual Property Committee) shall maintain the confidentiality of any intellectual property contained in documents submitted as part of this process. |
More on timeliness and faculty rights to intellectual property. Rationale: The University has a history of not responding in a timely way, which compromises or takes away faculty intellectual property rights.
The PSC draft adds a clause on confidentiality
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| IX.
Resolution of Disputes
This policy constitutes an
understanding which is binding on the University and Members of the
University for the use of University Resources and for participating in
research programs at the University. Any questions of interpretation or
claims arising out of or relating to this policy, or dispute as to
ownership rights of Intellectual Property under this policy, shall be
settled by the following procedure: The issue must first be submitted,
in the form of a letter setting forth the grievance or issue to be
resolved, to a review panel of |
IX.
Resolution of Disputes
This policy constitutes an
understanding which is binding on the University and Members of the
University for the use of University Resources and for participating in
research programs at the University. Any questions of interpretation or
claims arising out of or relating to this policy, or dispute as to
ownership rights of Intellectual Property under this policy, shall be
settled by the following procedure: The issue must first be submitted,
in the form of a letter setting forth the grievance or issue to be
resolved, to a review panel of |
PSC draft changes composition of dispute resolution committee. Rationale: The dispute resolution committee must give faculty a representative voice.
More on timeliness and faculty rights to intellectual property. |
| 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. |
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. |
No changes |
| XI.
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. |
XI.
Effective Date
This policy is effective from the date of agreement between the Professional Staff Congress and the University Board of Trustees with respect to Intellectual Property created after that date and shall remain in effect until both parties agree to modify or revoke its provisions
|
PSC draft
adds "agreement
between the Professional Staff Congress and the University Board of
Trustees."
Rationale: This is properly an agreement between the PSC and CUNY. |
| XII.
Definitions
"College" shall mean a "senior college" or "community college" of the University or a component thereof, as such terms are defined in Section 6202 of the New York Education Law. "Commissioned Work" shall mean work commissioned by the University from a Member of the University, outside the scope of his or her employment. "Copyrightable
Work" shall mean an original work of authorship 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,
videos, films, sound recordings, pictoral and graphical works and
sculpture. "Copyrightable
Work" shall not include computer programs or codes, "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, The term "Member of
the University" shall include full-time and part-time
faculty, staff, and graduate
"OGC" shall mean the Office of the General Counsel and Vice Chancellor for Legal Affairs. "Research Foundation" shall mean The Research Foundation of the City University of New York. "Scholarly or Pedagogical Works" shall mean scholarly books (including text books), instructional materials including lecture notes, articles, student theses and dissertations, novels, poems, musical compositions, visual works of art, and other scholarly publications or works of artistic imagination, whether such works are disseminated in print, electronically or through some other medium.
(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.
"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 Dean
for Research" shall mean the individual holding such title or such
other person as the Chancellor may designate. 1. "Copyrightable Works"
does not include computer programs or codes, 2. Nothing in this Policy shall prevent the University and the Research Foundation from agreeing that the Research Foundation may file patent applications in its own name in connection with Inventions resulting from Sponsored Research it administers.
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XII.
Definitions
"College" shall mean a "senior college" or "community college" of the University or a component thereof, as such terms are defined in Section 6202 of the New York Education Law. "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 all scholarly or pedagogical work which has been fixed in any 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.
"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.
The term "Member of
the University" shall include full-time and part-time
faculty, staff, and graduate
"Research Foundation" shall mean The Research Foundation of the City University of New York. "Scholarly or Pedagogical Works" shall mean scholarly books (including text books), instructional materials including lecture notes, classroom presentations and instruction, 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 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 $100,000 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 $100,000 per year in value. “Significant Use of University Resources:” If a member of the University uses only library facilities and occasional use of office or standard laboratory equipment to create intellectual property, such use will not ordinarily be considered “significant use of University resources.” Adjunct, hourly and part-time faculty and administrators shall not be presumed to make “significant use of University resources” unless they explicitly fall under provisions III.B.1,2,3 or 5. “Significant use” shall be presumed if a member of the University creates or discovers intellectual property that is the same as, directly related to, or substantially similar to a sponsored research project (III.B.1), a commissioned work (III.B.2), an administrative copyrightable work (III.B.3), or a negotiated agreement (III.B.5), in which that member is engaged at the University. Disputes regarding this presumption may be rebutted through submission of documentary evidence, according to the dispute resolution procedure (IX), which clearly establishes that the Intellectual Property was developed without significant use of University resources. "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. "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 and the Research Foundation of the City University of New York. "University Dean for Research" shall mean the individual holding such title or such other person as the Chancellor may designate.
"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, and non-faculty University personnel. Delete 1. Copyrightable works does not include computer programs or codes. 2. Nothing in this Policy shall prevent the University and the Research Foundation from agreeing that the Research Foundation may file patent applications in its own name in connection with Inventions resulting from Sponsored Research it administers.
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PSC draft deletes "Copyrightable Work" shall not include computer programs or codes" and adds computer programs or codes to the extent that they are patentable to the definition of "Copyrightable work." Rationale: In the CUNY draft, the onus is always on faculty writers of computer code and programs to disclose for review whether their work is patentable or not -- or face future liability. Patentable is a loose, undefined term. The disclosure procedure wraps faculty in constant bureaucratic red tape and ultimately discourages creativity.
The PSC draft deletes the following language from the definition of invention: "Invention" shall also include computer programs and codes."
The PSC draft makes the definition of "Scholarly or Pedagogical Works" more explicit.
PSC changes $10,000 to $100,000.
PSC draft adds a definition, "Significant Uses of University Resources" as a counterpoint to the CUNY draft's all encompassing use of "University Resources." Rationale: "Significant use" as opposed to blanket use of any university resources protects faculty intellectual property from unilateral university appropriation.
PSC draft makes clear that the Intellectual Property policy covers the Research Foundation
PSC draft deletes "release time and sabbaticals" from definition of "University Resources."
Rationale: By including " release time and sabbaticals" the university unreasonably widens its control over what faculty produce. The PSC draft deletes "computer programs or codes" from the definition of "Copyrightable Works." |