HSU General Policy on Intellectual Property

EXECUTIVE MEMORANDUM
Office of the President

January 22, 1996
SUBJECT: INTELLECTUAL PROPERTY POLICY

96-1

A. University Mission and Goals and Intellectual Property

It is in direct fulfillment of Humboldt State University's mission and goals to encourage the development of inventions and other intellectual creations for the best interest of the public, the inventor/creator, and the sponsor, if any, and to provide for the timely protection and disclosure of such intellectual property. This policy is in direct fulfillment of Humboldt State University's mission and goals and encourages both the free flow of information and the rapid commercialization of research results while seeking to protect the respective interests of all concerned.

From time to time it may be necessary to limit the open dissemination of information, to protect intellectual property in order to commercialize that property and/or to maintain international competitiveness. The means of protecting intellectual property are: patents, copyrights, trademarks and trade secret laws. The use of these mechanisms is critical to attracting the investment of capital necessary to bring research results to the point of viability and thus to the broadest application.

B. General Policy on Intellectual Property

This policy applies to all employees of the university, to auxiliary organization employees who are not otherwise covered, to anyone using the university's facilities under the supervision of the aforementioned personnel, and to the university's students.

Except as otherwise stated in this policy, this policy applies to, and the university may assert ownership in, intellectual property of all types, including, but not limited to, inventions, discoveries, trade secrets, scientific and technological developments, technology and computer software. This policy applies to the foregoing whether the means of protection is patent, copyright, trade secret laws or trademark. (See Appendix A for applicable definitions.)

Except for institutional funds which have been directly invested in the intellectual property, the university will not assert an ownership right in textbooks, scholarly writing, art work, music, literary work, films, videos and digital technology or other works of artistic imagination which are not institutional works, which are developed by its employees or by those receiving support.

Other than the foregoing exceptions, intellectual property developed by the university's employees in the course of their employment is owned or jointly owned by the university and/or its auxiliary organizations, unless such ownership is precluded by grant or contract agreements or by state or federal law. Similarly, intellectual property developed by the university's students or by others receiving direct university support of their work is owned of jointly owned by the university. The university shall protect the rights to intellectual property and shall involve discoverers and creators in the process to determine how such intellectual property shall be made public.

C. Intellectual Property Ownership

If university facilities, equipment and other resources and/or university funding, including auxiliary organization facilities, equipment or funding not otherwise covered, have been used in the development of an intellectual property, that property is owned or jointly owned by Humboldt State University.

In keeping with traditional academic policy, the university does not assert ownership of copyrightable material due to the provision of office space or library facilities, unless the space is provided specifically to support the development of the material. The university does not claim ownership of books, articles and similar works which disseminate research and scholarly results, nor does the university claim ownership of popular nonfiction, fiction, poetry, musical compositions or other works of artistic imagination which are not institutional works.

D. Intellectual Property Disclosure

Especially in regard to an invention, the existence of an intellectual property needs to be disclosed to the university as quickly as possible so that the university might act to preserve the rights of all concerned. This policy exists to further that goal. Disclosure occurs via completion of an Intellectual Property Disclosure Form (copy attached as Appendix B), obtainable from the central office of the HSU Foundation. Once completed, the form shall be submitted to the central office of the HSU Foundation, the university's designated office for intellectual property issues.

E. Ownership Reversion

If Humboldt State University, by either written policy or specific act, chooses not to act upon the right of intellectual property licensure or patent or similar methodology for assertion of rights, ownership passes wholly to the inventor or creator.

F. Patent Methodology

In pursuing the patentability of inventions, the university shall utilize the services of such third parties as Research Corporation Technologies (sample agreement available from the central office of the HSU Foundation). Third parties shall be used for the commercialization of inventions.

G. Income - Campus Distribution

After repayment to Humboldt State University of any institutional funds which directly went into the discovery or creation of any intellectual property, any further income received by the University shall be allocated based upon the following formula:

1. 5096 to the inventor/creator
2. 25 96 to the office of the respective vice president, for allocation.
3. 25 % to the university for discretionary use
   

Such income shall be deposited in fiduciary accounts maintained with Humboldt State University Foundation. Expenditure will then occur through standard expenditure processes with the following understandings:

1. Funds under the control of the inventor/creator shall be expended for purposes selected by the inventor/creator. Such expenditures shall be in keeping with nonprofit organization and CSU auxiliary organization financial standards.
2. Funds under the control of university organizational components will typically be expended for purposes which further external institutional support.

H. Policy Effective Date

Following appropriate review, this policy was made effective on May 31, 1995 at Humboldt State University, Arcata, California. Prior to the approval of this policy, the applicable policy statements relative to intellectual property matters were found in the policies identified in Appendix C.

Questions regarding this policy should be referred as follows: students, call Dean for Research and Graduate Studies, extension 3949; faculty and staff, call General Manager, HSU Foundation, extension 4189.

APPENDIX A

HUMBOLDT STATE UNIVERSITY
INTELLECTUAL PROPERTY POLICY DEFINITIONS

1. Patents

The United States patent system grants exclusive rights to inventors in order to encourage the public gain of information and to prevent duplicative research effort. A patent provides twenty years of excluding others from making, using or selling the invention. It does not give the patent holder the authority to make, use or sell, simply the authority to prevent others from doing so. Thus it is that one party can hold the patent on an improvement to an invention, while another holds the patent on the invention itself.

A. Process

To obtain a patent, four statutory requirements must be met: utility, adequacy of disclosure, novelty and non-obviousness, Utility--that is, usefulness--necessitates a practical application. Adequate disclosure requires a fully detailed description sufficient to enable a person in the same technological field as that of the patent to "practice" the invention. Adequate disclosure has two parts: 1) the specification section which identifies the field of technology and describes in detail the invention's features and 2) the claims section which describes in detail the subject matter for which the patent applicant desires protection. The requirement for novelty specifies that the invention not be known or in use prior to the filing of the patent application. While United States law references a one year "grace period" for publication or use prior to patent filing, other nations do not recognize such a grace period, so any prior use can negate the patent in foreign markets. The final requirement for patentability is non-obviousness. The invention must be one which goes beyond a minor improvement which would have been obvious to anyone skilled in the field. At issue is whether the "prior art" (other patents, published documents, and technical publications) renders the invention obvious.

Patent applications are received by the U.S. Patent and Trademark Office and can take up to two years to evaluate* depending upon the press of applications and the number of related inventions. During this patent examination process, patent applications are confidential. Once patent is granted, the application is printed and made public. Denial of patent is appealable.

Plants can receive patent protection under utility patents but are also protected if they are asexually reproduced varieties or if they are sexually reproduced varieties (Plant Variety Protection Act of 1970).

B. Patent Right Enforcement

The owner of a patent can preclude others from making, selling or using the invention within the territory of the United States. This property right can be assigned to others or licensed on either an exclusive or non-exclusive basis. Infringement on such property rights can be pursued in a civil suit in a Federal District Court. Winning such a suit can result in either or both injunction and financial damages.

C. Licensing

Both the patenting and licensing of inventions are authorized under U.S. patent law and U.S. regulations. The patenting and licensing process applies equally to federally funded inventions. License negotiations involve such business matters as royalty rates and measures of due diligence. Licenses are generally granted to campuses agreeing to manufacture in the United States any inventions to be used or sold in the United States. Such domestic production requirements especially apply to federally funded inventions. The issue of exclusivity is dependent upon the requirements needed to enable development. If significant development costs are involved, licensees can be expected to request exclusive rights. Nonexclusive licensing typically occurs for materials having numerous commercial uses.

D. Dedication to the Public

An invention's patentability can be accidentally destroyed or deliberately destroyed by disclosing it through publication or public use. A formal mechanism for deliberate destruction is Statutory Invention Registration, administered by the U.S. Patent and Trademark Office. Dedication to the public typically occurs when exclusive rights to an invention which might be secured through a patent have no commercial value.

2. Copyrights

Copyright protects a work of authorship, fixed in any tangible medium of expression, from unauthorized reproduction. Copyright is applicable to computer software, art work, music, articles, books and other literary works. Publishers normally carry copyright. Copyright protects the expression of the idea, but not the idea itself.

3. Trademark

Trademark is the mark which distinguishes an organization or a product. Symbols and logos of Humboldt State University are trademarks, and they may not be used by third parties without a proper license and specific approval via the university's Licensing Program.

4. Trade Secret

Trade Secret is a legal property protection device under state law. Knowledge formalized as a trade secret cannot be disclosed in any open scientific forum. Trade secret commonly occurs with profit-making companies.

APPENDIX C

HUMBOLDT STATE UNIVERSITY
INTELLECTUAL PROPERTY POLICY

A. General

1. Education Code
2. Title 5
3. State University Administrative Manual
5. State Administrative Manual

B. Specific

1. Humboldt State University Faculty Handbook
2. P92-8 (superseding 92-1, 85-12, 78-13, 75-8, 73-8)
3. University Management Letter 92-2 4. P90-3
5. University Management Letter 90-4
6. University Management Letter 88-2 7, P86-11
8. P86-2
9. 5-30-86 Addendum to P85-12 10. P83-7
11. P80-13

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