Intellectual Property Policy
Intellectual Property Policy
I. Introduction
Marywood University's faculty, staff, administration, and students are regularly involved in
activities that carry out the mission and core values of the University. Inventions or other forms
of protectable intellectual property often result from these activities and efforts. Often these
activities and efforts are carried out, in whole or in part, with funds or facilities of the University.
This Intellectual Property Policy has been established to recognize and support the activities of
the faculty, administration, staff and students in identifying, protecting, and administering
Intellectual Property matters, defining the rights and responsibilities of all involved, and
promoting the advancement of the University through innovation and scholarly work.
II. Definitions
Copyrights. A copyright is a form of protection granted under federal copyright law to authors of
“original works of authorship.” Original works of authorship include literary works (including
computer programs), scholarly works, dramatic works (including any accompanying music),
musical works (including any accompanying words), pantomimes and choreographic works,
pictorial, graphic, and sculptural works, motion pictures and other audiovisual works, sound
recordings, and artistic and other forms of intellectual works. Copyright holders may restrict use
by others of the copyrighted work, in a number of ways defined by the copyright law.
Covered Individuals. Any person employed by Marywood University in any capacity and all
students enrolled in Marywood University at any time while the person is engaged in the work in
question.
Exempted Scholarly Works. Exempted Scholarly Works are those scholarly works to which the
University waives and releases any ownership or copyright it may have in favor of the Covered
Individual who authored those works. Scholarly Works are considered exempted from this
Policy unless such Scholarly Works are subject to contractual restrictions, are created utilizing
Significant Use of University Resources, or are developed at the direction of Marywood
University with University funds or resources. In those instances the Scholarly Works must be
disclosed to the Vice President for Academic Affairs.
Intellectual Property. Intellectual Property is a type of intangible personal property recognized
by law. It includes Copyrights, Trademarks, Trade Secrets, and Patents, any item or material that
may be eligible for protection under Copyright, Trademark, Trade Secret or Patent law, and any
other creation that might normally be developed on a proprietary basis.
Patents. A patent is a grant by the government, acting through a Patent Office, of a property
right to an inventor of any new, useful and non-obvious process, machine, manufacture, or
composition of matter, or any new, useful and non-obvious improvement thereof. A patent gives
the inventor the right to exclude others from making, using, selling or importing the invention for
a certain number of years.
Scholarly Works. Scholarly works are works authored by Covered Individuals as part of, or in
conjunction with, their responsibilities, if any, in teaching, research, or scholarship. Common
examples of Scholarly Works include: lecture notes, case examples, course materials, syllabi,
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textbooks, class notes, works of fiction and nonfiction, novels, journal articles, research
proposals, scholarly papers, student theses and student doctoral research, poems, lyrics, musical
compositions and recordings, choreographic works, dramatic works and performances,
architectural drawings, software, visual works of art, and other artistic creations, among other,
regardless of the medium in which those works are fixed or disseminated.
Significant Use of University Resources. Marywood University resources are to be used solely
for University purposes and not for personal gain or personal commercial advantage, nor for any
other non-University purposes. Significant use exists when resources are provided beyond the
customary professional, technological and technical support supplied by the University and
extended to Covered Individuals for development of a project or program. Therefore, if
Marywood University resources were the enabling factor or substantially contributed to the
creation of a work or invention, then such use constitutes Significant Use of University
Resources. By way of illustration, if participation of students directly, or indirectly through use
and feedback, substantively influences development of such works, then such participation
constitutes Significant Use of University Resources. Some examples of Significant Uses of
University Resources include, but are not limited to, the following: use of research funding to
create the Intellectual Property; assistance of support staff in creating the Intellectual Property
and use of University facilities to create the Intellectual Property. By way of further explanation,
Significant Use of University Resources excludes incidental or minimal use of University
resources, such as University facilities, that are available without charge to the public, or use of
resources or facilities where fees for such use (excluding tuition) have been paid. If the creator
of Intellectual Property makes significant use of the services or facilities of the University to
create any work, including Scholarly Works, he or she should disclose the work to the Vice
President for Academic Affairs.
Trademarks. A trademark is a word, symbol, design, phrase or combination thereof, used to
identify and distinguish the source or sponsor of goods. A service mark is a word, symbol,
design, phrase or combination thereof, used to identify and distinguish the source or sponsor of
services. Trade dress is the characteristic of the visual appearance of a product or its packaging
(or even the design of a building) that signify the source of the product to consumers. For the
purposes of this Policy, “Trademarks” shall include trademarks, service marks and trade dress.
Trade Secrets. A trade secret is confidential commercial information, such as a formula. For a
trade secret to be protectable, it has to be kept secret.
Work for Hire. Work for Hire, as defined in the United States Copyright Act, 17 U.S.C. Section
101, refers to (1) a" work prepared by an employee within the course and scope of his or her
employment"; or (2) a work that has been specifically 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.
III. Policy
A. Applicability
Marywood University's Intellectual Property Policy applies to all Covered
Individuals including persons employed by the University in any capacity, all
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students enrolled in the University, as well as all Intellectual Property produced or
developed by Marywood faculty, administration, staff, and students.
B. Ownership and Determination of Rights to Intellectual Property
The general policy of Marywood University is that Intellectual Property is the
property of the creator. However, except for Exempted Scholarly Works, the
University reserves the right to affirm ownership to any Intellectual Property
created under any of the following circumstances:
1) Development was funded as part of an externally sponsored research
program under an agreement which allocates rights to the University.
2) Marywood University assigned a Covered Individual to develop the
material, and the University has negotiated an understanding or formal
contract with the individual concerning the Intellectual Property
associated with the developed material.
3) The material was developed by Covered Individuals in the course of
employment duties and constitutes a Work for Hire.
4) The material was developed with Significant Use of University Resources.
C. Disclosure of Intellectual Property
• Except for Exempted Scholarly Works, Covered Individuals shall
promptly disclose all Intellectual Property, including inventions, to the
Vice President for Academic Affairs. Delay in disclosing such Intellectual
Property may compromise the ability to secure Intellectual Property rights
or registrations.
• If a Covered Individual is uncertain as to whether an invention, formula,
design, creation or the like constitutes Intellectual Property, then such
person should consult promptly with the Vice President for Academic
Affairs.
D. Use of Intellectual Property
• Marywood University will retain a non-exclusive, royalty-free, perpetual
license to the University for Intellectual Property that is developed for
University courses or curriculum, including Exempted Scholarly Works,
so that the University's continued use of such material for educational
purposes at the University will not be jeopardized. All Covered
Individuals will execute any documents necessary to perfect such licenses.
• While Marywood University encourages members of the Marywood
Community to utilize and develop their intellectual, moral and aesthetic
capabilities, it is expected that such individuals will comply with federal
and state Intellectual Property laws.
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E. Intellectual Property Developed Under Sponsored Research Agreements
Ownership of Intellectual Property developed following an agreement with any
sponsor, whether it is an external or an internal sponsor, will be governed by the
provisions of that agreement. Marywood University will retain a non-exclusive
right, for example, to all research reported in manuscripts funded in whole or in
part by National Institute of Health (NIH) funding, so as to ensure compliance
with the NIH Public Access Policy.
F. Consulting
The disposition of Intellectual Property that results from activities of Covered
Individuals while engaged in the service of, or at the direction of a firm or
institution other than the University, without Significant Use of University
Resources, and while abiding by University policies on outside activities, is
presumed to be owned by the outside firm or institution as specified in the parties'
agreement. However, the University is concerned about the possible imposition of
non-compete clauses that may hinder Covered Individuals from pursuing the
University's mission, or prevent Covered Individuals from participating in
University-sponsored research-and-development projects. At all times, Covered
Individuals should be in compliance with the University's policies on outside
activities.
G. Specific Provisions Relating to Trademarks, Copyrights and Patents
Trademarks/Service Marks
Covered Individuals may use Marywood University's names, logos, and/or other
marks where necessary in order to identify themselves on matters of official
University business. Marywood University names, logos, and other marks shall
not be used by individuals or entities in a manner that implies University
endorsement, sponsorship or responsibility for particular activities, products, or
publications involved, or by any individual or group promoting itself, without the
express written permission of the President of the University.
Copyrights
Copyrightable material created by a Covered Individual pursuant to Section IIIB
(1) - (4) shall be the property of the University. However, in the case of software,
digital resources, collection(s) of information, or other audiovisual educational
materials, the University may elect to share ownership with the individual
developer. In such cases, formal agreements between the University and the
Covered Individual will be created.
Students will own all copyrights in, and to, their student thesis, research reports
and dissertations, except in cases where such theses, research reports or
dissertations were created with Significant Use of University Resources. Under
these circumstances, the University shall retain ownership and the student shall
assign any rights in the work to the University where necessary to perfect the
University’s ownership interest. Notwithstanding the foregoing, a student is
permitted to register his or her research paper and/or dissertation with UMI
Dissertation Publishing. A student's dissertation cannot be registered with the
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U.S. Patent and Trademark Office or U.S. Copyright Office without the written
consent of the University.
Where copyright ownership is retained by the student, the University will be
granted a perpetual, royalty-free, non-exclusive license and consent to reproduce
and publically distribute the thesis, dissertation and/or research report for
institutional promotion and marketing, education and instruction, and entries into
appropriate competitions with the written consent of the student.
Patents
This section of the policy provides a general overview of a very complex and
technical area of the law. An inventor should consult with the Vice President for
Academic Affairs or another person designated by Marywood concerning patent
rights.
(a) Establishment of the Inventor Commitment
In circumstances when the results of research should be investigated for
patentability, a request for such investigation should be submitted to the Office of
the Vice President for Academic Affairs. Further, a Covered Individual must
report promptly any inventions or inventive concepts in which he or she is
involved to the Office of the Vice President for Academic Affairs. All Covered
Individuals shall cooperate in the disclosure, patenting, development, and
licensing of any inventions with which he or she is involved and in which the
University has an interest. Covered Individuals shall agree to assign to the
University, to a patent development agency designated by the University, or to a
sponsoring agency (if required under agreements governing the research activity),
any and all inventions in which the University has an interest under this Policy. In
addition, Covered Individuals shall agree to execute such documents of
assignment of patents and patent applications as are necessary at the time a patent
application is forwarded to the United States Patent and Trademark Office (or any
international or foreign patent office) and to do all that is reasonably necessary to
assist assignees in the patent prosecution and registration process.
(b) Patent Development and Prosecution
If Marywood University determines that it has no interest in an invention, decides
to forego the patenting of an invention, or fails to file a patent application within
six months from the date of submission of the patent disclosure to the University,
it shall formally waive its rights to the invention. Thereafter, only as a service, and
not as an obligation, the University may provide assistance to an inventor in
pursuing a patent. The inventor is advised to obtain his or her own legal counsel
to seek a patent in the event the University does not pursue one.
On the recommendation of the Vice President for Academic Affairs, the Office of
Research and Sponsored Programs may transmit the invention disclosure to a
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patent development organization or outside counsel, as appropriate, in order to
obtain an evaluation of the invention. Contacts between the inventor and patent
development organizations are coordinated by the Office of Research and
Sponsored Programs. This Office will transmit invention disclosures to the
Federal Government where the terms of the grant or contract so provide, and will
be cognizant of any special requirements of granting or contracting agencies.
When it is determined by the Vice President for Academic Affairs that an
invention in which the University has an interest under this Policy requires
development beyond the capability or proper function of the University, the
University may secure such development through appropriate agreements with
outside agencies. If an invention has been developed to the point of practical
commercial application, the inventor and the University may determine that it is in
their best interests for the University to be responsible for patent prosecution,
application and management. In such cases, the cost of patent application and
related activities leading to active licensed production shall be paid from
University funds and this cost shall be reimbursed to the University from any
income or royalties obtained or derived from the patent before distribution of
proceeds to anyone other than the University.
The Office of Research and Sponsored Programs will make recommendations
relative to committing the University to the grant of exclusive licenses as a
condition of sponsorship for particular research projects.
(c) Income-Sharing Arrangements
To recognize creativity and to encourage the prompt disclosure of inventions, the
University's policy with regard to distribution of royalty income is as follows:
INVENTOR
UNIVERSITY
100%
0%
50%
50%
Royalty payments related to inventions developed with the assistance of Federal
funds will be subject to any limitations on the division of royalties imposed by the
funding agency.
In the event the University pays any costs associated with obtaining the patent, the
royalty shall be paid to the inventor only after reimbursement is made to the
University for costs it incurred.
IV. Administration/Grievance Procedure
This policy and its implementation may require interpretation and review. Any Covered
Individual dissatisfied with the implementation of any procedure or process under this Policy is
urged to seek a satisfactory settlement by contacting directly the party (parties) involved. If that
approach is unsuccessful, any grievance regarding the interpretation of this Policy or any dispute
about a specific decision will be resolved by the Vice President for Academic Affairs. In the
event that a party does not accept the decision of the Vice President for Academic Affairs with
regard to the dispute, the aggrieved party can submit an appeal, in writing, to the Vice President
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for Academic Affairs no later than five business days after the date of the Vice President for
Academic Affairs decision. The aggrieved party’s appeal shall state in detail the reasons for the
appeal and identify the person(s) or body against whom the grievance or appeal is directed, and
may propose a settlement of the issue.
Upon receipt of the appeal, the Vice President for Academic Affairs shall provide notification of
the appeal to the Executive Committee for the Senate to which the aggrieved party belongs, or, in
the case of a student aggrieved party, the Dean of Students. The Executive Committee for the
Senate or the Dean of Students, as the case may be, shall then appoint an Ad Hoc Committee and
designate a chair. The committee will consist of five individuals, which shall be comprised of
the following: (1) department chair or supervisor; (2) dean or director; (3) one of three vice-
presidents from business affairs, student life or advancement; and (4) two individuals
representing the aggrieved individual's peers.
The Ad Hoc Committee has the right to retain independent legal counsel at the University's
expense. The University will determine the budgetary limitation.
In considering the grievance or appeal, the Ad Hoc Committee will take the following steps:
1. The Ad Hoc Committee will request from the parties involved written statements describing
the basis for the dispute and the parties’ positions.
2. At any point, the Ad Hoc Committee may request in writing additional information or seek
interviews with individuals possessing relevant information.
3. The Ad Hoc Committee may hold a hearing on the matter and consider any additional
evidence presented by parties.
4. Within thirty days from the close of evidence or date of hearing, unless circumstances require
a shorter period of time, the Ad Hoc Committee shall report its findings, rationale and
recommendation to the President of the University.
5. The President shall review the matter and recommendation of the Ad Hoc Committee and
make a final decision. The President’s decision shall be served on the aggrieved person
within a reasonable period of time.
Specific Hearing Procedures
1. The aggrieved person will have the opportunity to present his/her case to the Ad Hoc
Committee.
2. The Ad Hoc Committee, as part of its review of the case, may conduct pre-hearing meetings
with any involved persons, individually or together.
3. The burden of proof is the responsibility of the aggrieved person and must derive from a
preponderance of the evidence in the record considered as a whole.
4. Service of notice of the hearing, to the aggrieved person and to the person(s) at issue in the
appeal, will be made by the Ad Hoc Committee at least ten calendar days prior to the hearing.
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5. A list of witnesses who will appear in person for both parties must be submitted to the Ad
Hoc Committee at least five days before the formal hearing. The Ad Hoc Committee will
immediately inform both parties of the witnesses scheduled to attend the hearing. The
committee does not have the power to require a witness to give testimony.
6. An audio recording of the hearing will be made available to the parties at no cost.
7. Cross-examination of all witnesses is the right of both parties.
8. The hearing record will be used exclusively as the basis for findings of fact and for arriving at
a decision.
Related Policies
4.308.1 Academic Freedom
4.308.3 Professional Ethics
4.308.4 The Teaching Responsibility
4.308.5 The Librarianship Responsibility
4.450.1 Academic Honesty
History of Policy - Intellectual Property Policy
04/29/11 – Approved by the President of the University as recommended by the Policy
Committee of the University.
MARYWOOD UNIVERSITY
POLICIES AND PROCEDURES MANUAL
Mary Theresa Gardier Paterson, Esquire
Secretary of the University
Phone: (570) 340-6018
E-mail : paterson@marywood.edu