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Intellectual Property

Introduction

I. Policy Statement¹

Washington and Lee University ("W&L" or "the University") is a private liberal arts university that encourages the creation, discovery, and dissemination of creative and artistic work, scholarship, and inventions, known broadly as Intellectual Property ("IP" as defined below). The University supports faculty, staff, and students in creating, identifying, and protecting IP that they create. This IP may create rights and interests on behalf of the creator, author, inventor, sponsor, and W&L, depending on the circumstances. The purpose of this policy is to assist faculty, students, and staff in identifying, protecting, and administering rights to and ownership of IP. To help meet these objectives, the University makes available through the Office of the Provost technical and legal guidance in procedures necessary to protect ownership of IP.

II. Application of Policy, Identification and Definitions of Intellectual Property and Related Terms

This policy applies to original works of authorship fixed in a tangible medium (physical or digital) created by all classifications of faculty, staff, and students of the University. This policy also applies to non-employees such as consultants and independent contractors who, while working for or on behalf of the University, create IP or utilize significant University resources in the creation of IP, in the absence of any written agreement specifically addressing ownership of such IP.

1. Intellectual Property (IP) covered by this Policy consists of the following:
   1. Copyrighted material produced from creative and scholarly activity such as (but not limited to) -- text, manuscripts, literary work, manuals, research, books, and articles; videos and motion pictures; music, sound recordings, lyrics, and scores; images (print and digital images), including photographs, paintings and other artwork; computer software, including programs, databases, web pages, and courseware; theatrical work, and designs. Ownership of copyrighted IP provides the owner rights to reproduce the work, prepare derivative works, distribute copies of the work, and to public performance and public display of the work, subject to limited rights of the public (e.g., fair use); and
      
      
   2. Patentable works such as processes, machines, manufactures or compositions of matter, inventions, formulas, discoveries, developments, designs excluded from copyrighted materials, innovations or improvements, devices, and software excluded from copyrighted materials. Ownership of a patent (which must be applied for) gives the patent owner the right, during the term of the patent, to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent; and
      
      
   3. Registered or unregistered trademarks, such as words, names, symbols or logos, servicemarks, domain names, and slogans or any combination of the foregoing that has been adopted and used by an entity or individual to identify the owner of the mark and to distinguish itself from others. Unregistered marks have common law protection, which allows the owner to assert rights to its marks in the geographic location in which the marks are used. Registered marks carry a presumption of legal ownership, provide the right to file suit in federal court to prevent nationwide infringement, and are catalogued in an online database with the United States Patent and Trademark Office.
      
      
2. IP under this policy includes original works or improvements made, conceived, developed, or first actually reduced to practice solely or jointly with others during the time that the individual is: i) employed by W&L; ii) enrolled as a student of W&L; or, iii) engaged by W&L to provide any services as an independent contractor or agent/volunteer of the University.
   
   
3. For purposes of this policy, "Traditional Scholarly Work" is a form of IP defined broadly to include pedagogical, literary, artistic, and creative works created by faculty, staff, or students, as applicable, with or without the assistance of other members of the University community. This includes works related to teaching, such as (but not limited to) lecture notes and other course notes, problem sets, syllabi, websites for classes, and works related to scholarship, such as (but not limited to) journal articles, books, text books, artistic works in any medium, videos, podcasts, screen casts and photos. Under this policy, patents may be Traditional Scholarly Work, but they are administered separately as noted herein under Section III.1.c. Under the provisions of Section III.1.a of this policy, the vast majority of faculty (and possibly, student or staff) IP - that which finds traditional scholarly, pedagogical, and artistic channels for circulation - is owned exclusively by the person(s) who created it.
   
   
4. For purposes of this policy, the University has an "Identity Interest" in works that are integral to, and reflect more directly on, the identity of the University than on the identity of the individual(s) who create them. For example, it has an Identity Interest in items disseminated beyond the University, such as various institutional catalogues, institutional web pages, alumni bulletins, admissions brochures, fundraising materials, and photographs taken on behalf of the University. An Identity Interest also occurs when there is a prominent use of the University's name, or of any images, trademark, servicemark, or logo of the University. This category of IP also includes any work created by an administrative or staff employee (including a faculty member acting in an administrative capacity or a support staff member acting within the scope of his/her employment) or a non-employee consultant/independent contractor that generally constitutes a "work made for hire," as defined by the Copyright Act and federal law.
   
   
5. For purposes of this policy, the University has a "Functional Interest" in works that are used to enhance the effective functioning and coordination of ongoing University operations. For example, it has a functional interest in administrative and personnel procedures, including software, business and computing formulas/coding, whether used in the business or academic offices, internal handbooks and reports, magazines, fundraising materials, etc. This category of IP also includes any work created by an administrative or staff employee (including a faculty member acting in an administrative capacity or a support staff member acting within the scope of his/her employment) or a non-employee consultant/independent contractor that generally constitutes a "work made for hire," as defined by the Copyright Act and federal law.
   
   
6. For purposes of this policy, "Substantial Use of University Resources" means that the IP has been created with extraordinary or substantially more use of University resources than would normally be provided for the creator's particular employment or non-employee consultant/independent contractor duties. This might occur as disproportionate use of staff time, networks, equipment, direct funding, or other University resources (except for faculty work that by definition and necessity involves significant use of University studio and lab equipment, and IP created by faculty, staff, or students under annual W&L faculty research grants, for example). Ordinary use of resources such as libraries, one's office, desktop computer, studio and lab equipment, University computer infrastructure, administrative assistant support, and supplies, is not considered to be substantial use of such resources for purposes of vesting the University with ownership in a work.

III. Policy

1. Ownership and Use: General Rules

1. Traditional Scholarly Work. In order to best encourage scholarly work, it is the general policy of Washington & Lee University that IP shall be the property of the author or creator. This policy is in keeping with the view that one of the University's primary benefits to society is the production of original works by its faculty, staff, and students. Consistent with historical academic practices, the University will not assert ownership interests in the case of Traditional Scholarly Works that are owned by the author(s)/creator(s). This policy protects that traditional right, and faculty (and staff and students, as applicable) are not obligated to disclose the creation of these materials, even when the product might have commercial value, unless the material was developed under one of the qualifying conditions listed in subsection (b) below, in which case the creator is responsible for timely disclosure.
   
   Independent of the foregoing, faculty, staff, and students are encouraged to disclose any protectable material that has commercial value to the extent that they may wish assistance in copyright protection and marketing in exchange for profit sharing with the University. All disclosures should be made to the Office of the Provost, consistent with the terms set forth in Section III.2.c herein.
   
   Moreover, when faculty, staff, or students are asked to share their IP rights with a third party or enter into any third party agreement that may limit their rights in use or ownership of IP they create (for example, when submitting a manuscript to a scholarly journal), they are encouraged, but not required, to retain a non-exclusive, royalty-free license to allow them and the University to use work they author or create in furtherance of their and the University's academic mission. To help meet these objectives, the University makes available, through the Office of the Provost, technical and legal assistance in procedures necessary to protect ownership and use of intellectual property. See also Guidance on Protecting Faculty Copyrights When Publishing.
   
   
2. The University has an OWNERSHIP interest in Intellectual Property if it involves i) an IDENTITY interest, or ii) a FUNCTIONAL interest, or iii) SUBSTANTIAL USE OF UNIVERSITY RESOURCES as explained in Sections II.1 through II.6. In these cases, the University will own such IP and, as necessary, upon the request of the University, the author(s) or creator(s) shall convey ownership of such IP by the University in an appropriate written form to be provided by the Office of the Provost.
   
   Specifically, OWNERSHIP rights will not default to the author or creator in each of the following circumstances:
   1. The University has an Identity Interest or Functional Interest in the IP. In these cases, the default is University ownership of such IP, and as necessary, upon request of the University, the author(s) or creator(s) shall convey ownership of such IP to the University in an appropriate written form to be provided by the Office of the Provost.
   2. A faculty member, employee, or student was assigned, directed, or specifically funded by the University to develop the IP, or the University negotiated an understanding or formal contract with the author or creator regarding University ownership of such IP. In these cases, the default is University ownership of such IP, and as necessary, upon request of the University, the author(s) or creator(s) shall convey ownership of such Intellectual Property to the University in an appropriate written form to be provided by the Office of the Provost.
   3. Development and creation of the IP was funded as part of an externally sponsored research program under an agreement that allocates rights to the University.
   4. The IP has been planned for creation, or has been created, with Substantial Use of University Resources, financial support or non-faculty University personnel beyond the level of common resources provided to faculty (staff or students, as applicable), consistent with the definition of Substantial Use of University Resources provided at Section II.6 herein. In these cases, the creator must disclose the IP or potential IP to the Office of the Provost consistent with the terms herein so that issues of ownership and use may be addressed through a written agreement at an early stage of its development, generally before the use of extra University Resources begins. Ownership and use rights will then be determined by the terms of the agreement.
      
      
3. Patentable Intellectual Property. Responsibility for Disclosure of Patentable IP: University personnel who alone, or in association with other entities, create or intend to create patentable subject matter with any use of University resources must disclose the matter and obtain prior authorization from the Office of the Provost (or designee). Such disclosure shall be made in a written form to be provided by the Office of the Provost when it can be reasonably concluded that a patentable subject matter has or will be created, and sufficiently in advance of any publications, presentation, or other public disclosure to allow time for possible action that protects rights to the IP for the creator and the University. Creators are encouraged to seek the advice of the Provost (or designee) at any early stage in determining whether the subject matter is patentable or whether the University desires to pursue patenting the matter.
   
   Determination of Rights to Patentable Subject Matter: Except as set forth below, the creator of patentable IP shall retain his/her rights, and the University shall not assert ownership rights. The University will have ownership rights to patentable IP developed under any of the following circumstances:
   • Development was funded by an externally sponsored research program or by any agreement that allocates rights to the University.
   • Development required a Substantial Use of University Resources, defined above at Section II.6.
   • The creator was assigned, directed, or specifically funded by the University to develop the material.
   • Material was developed by administrators, staff, or students in the course of employment duties and constitutes "work for hire" as defined by U.S. law.
     
     
   In any of these circumstances, the default is University ownership, and upon request, the creator(s) shall convey ownership of such IP to the University in an appropriate written form to be provided by the Office of the Provost.
   
   
4. Intellectual Property Developed Under Sponsored Research Agreements. Ownership of Intellectual Property developed pursuant to an agreement with any sponsor will be governed by the provisions of that agreement. Sponsored research programs funded by private sponsors will need prior review and approval from the Provost (or designee). These agreements generally provide for the University to retain title to all IP that arises in the course of the research program with the sponsor retaining an option to acquire commercialization rights through a separate license agreement. Government and nonprofit sponsors generally allow rights to IP that arises from the research program to vest with the University, subject to certain retained rights held by the federal government.
   
   
5. Unique Cases. The overriding principle underlying this Intellectual Property Policy is to encourage creativity and inventiveness. Knowing that creation of IP and attendant ownership and use rights continue to evolve, W&L reserves the right to allow some flexibility in applying this policy on a case-by-case basis. In such unique cases, ownership and use of materials developed pursuant to a special agreement between the University and the creator/author will be governed by the principles of that agreement.

2. Administration

1. Office of the Provost: This policy shall be administered by the Office of the Provost and the stated terms and provisions of the policy shall be interpreted by the Intellectual Property Review Committee and the Provost (or designee).
   
   
2. Intellectual Property Review Committee ("IPRC"): In implementing and administering this policy, the Provost shall appoint a standing Intellectual Property Review Committee whose functions shall include: (1) reviewing policy provisions from time to time, as needed, with recommendations for change or amendments to the Provost; (2) reviewing IP disclosures under this policy as well as ownership and use issues brought to the IPRC's attention; (3) making findings or recommendations to the Provost in cases of any dispute relating to this policy, or unique or novel circumstances where issues of use and ownership of IP among or between faculty, staff, students, or third parties that is created with any University resources need to be resolved; (4) reviewing other issues as requested by the Office of the Provost.
   
   
3. Disclosure of University-Owned IP: When a member of the faculty, staff, a student or third party creates, develops, and/or reduces to practice any University-owned IP (determined under the default provisions of Section III.1.b above), the person shall i) file a disclosure with the Office of the Provost in an appropriate written form to be provided by the Provost, ii) provide such other information and cooperation as requested by the Provost (or designee), and iii) if requested by the Provost (or designee), execute and deliver such agreement, forms, and/or documents as are necessary to fully convey and assign to Washington and Lee University all ownership rights in the University-owned IP.
   
   
4. Deliberative Determination and Dispute Resolution: In most cases, application of the foregoing default principles gives a party (either the creator or the University) ownership of and use rights in IP. In cases of disputes or particular cases that are more complex or novel, a deliberative determination process to address the responsibilities, rights, and benefits as well as a formal designation of ownership must be undertaken. In these cases as well as those involving unusual support by the University to individuals, group collaborations, or those that do not fit within the default IP ownership provisions of the policy, potential IP development is best reported and disclosed to the Office of the Provost before it is well underway, so that an agreement on ownership, responsibilities, use rights, and benefits can be reached. Author(s) or creator(s) should report to the Office of the Provost, as soon as the situation is reasonably clear, on the production or planned production of any such IP.
   
   In most cases, the Intellectual Property Review Committee ("IPRC") will review the matter fully and make a finding with regard to the responsibilities, rights and benefits and ownership of the IP in question. In reviewing a case, the IPRC may seek input from the creator/author and others as it deems appropriate prior to making its finding. The IPRC will issue a written finding to the Provost and to the creator/author. If Provost review of the IPRC written finding is sought by the creator/author, such review is up to the discretion of the Provost. If granted, the Provost will review the finding of the IPRC and make a determination as to the responsibilities, rights, benefits and ownership of the IP. The Provost will issue a written decision that shall be final. Where the IPRC and the Provost determine that a particular case involves more complex and unique issues, the IPRC may instead make a recommendation to the Provost. The Provost will then make and issue his/her decision in writing, which shall be final.
   
   
5. Changes to Policy: The University reserves the right to change this policy from time to time. Proposed changes will normally be the result of recommendations from the Intellectual Property Review Committee to the Provost. The Provost has the authority to change this policy.

3. Royalties

All revenues derived from University-owned IP (including electronic media) will be received and administered by the Office of the Provost. For each specific piece of IP owned by the University, costs incurred in the process of perfecting, transferring, and protecting University rights to the property paid by the University will first be deducted from the gross income available before distribution. An accurate accounting of all such costs shall be made available to the author/creator upon request. The distribution of net proceeds (income less all costs including that of an agency engaged to provide patent administration services) that is received from University-owned IP shall be shared equally between the creator and the University absent agreement otherwise. The University and/or creator may, in appropriate circumstances, take equity positions in companies licensed to market or use IP.

4. Use of W&L names/logos (registered and unregistered marks)

Faculty, staff, and students may use the University's names, logos, and/or other marks (e.g. W&L, the W&L crest) as needed to identify themselves on matters related to University business (including matters related to employment at the University). Use of the University name for any other private purpose is limited to use for identification by a current or former member of the faculty, staff, and/or student body (e.g. "John Doe, Professor of Physics, Washington and Lee University," or "John Doe, Class of '79, W&L"). W&L names, logos, and other marks shall not be used by individuals or entities otherwise in a manner that implies University endorsement or responsibility for particular activities, products, or publications involved, or by any individual or group promoting itself, without the express written permission of the Provost or designee. Any and all use of the University names, logos, and/or other marks for commercial purposes is prohibited unless approved by the Treasurer or designee.