Tufts University Policy on Rights and Responsibilities With Respect to Intellectual Property
December 29, 1998

Introduction

Tufts University seeks to encourage creativity and invention among its faculty, students, and staff. The University invests in this endeavor by making available its own facilities, equipment, personnel, and information resources. The University also actively seeks specific support for creative activity from external sources, both public and private.

Frequently, inventions, discoveries, and creative works that are developed by individuals at the University will have commercial as well as scientific and scholarly value. The intent of this policy is to provide for incentives that foster creative activity, and to help assure that any intellectual property produced will be exploited for the benefit of the creators, the University research enterprise, and the public.* To help meet these policy objectives, the University makes available (from the office of the Associate Provost for Research) technical and legal assistance in procedures necessary to protect ownership of intellectual property and to aid in its commercial development.

The specific aims of this policy include the following:

• Encourage creativity among the faculty, students and staff
• Increase the likelihood that ideas, inventions, and creative works produced at the University are used to benefit the public
• Protect the traditional rights of scholars with respect to owning the products of their intellectual endeavors
• Assure compliance with the provisions of contracts with external sponsors
• Provide that, when intellectual property is introduced for commercial development, the creator(s) and the University share any net profits.

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*This is in contrast to normal practice in the business world, where works created by employees are usually owned by the employer under work-for-hire rules.

Who is covered: University Personnel

For purposes of this policy, University personnel refers to University faculty, administrators, office and technical staff, students, visitors, contractors, consultants and all others whose primary work affiliation is with the University, whether compensated by the University or not.** University personnel are covered to the extent that their creative work involves the use of University resources such as space, facilities, equipment, staff, or funds, as stipulated for the particular circumstances described in the sections below "Determination of Rights...." for both patentable and copyrightable material.

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**As a condition of affiliation with the University, members of the University community are bound by all University policies, including this one.

What is covered: Intellectual Property

All intellectual property produced at the University by personnel (defined above) is covered by this policy. Intellectual property shall consist of, for example and without limitation: inventions, creative works, patentable subject matter, copyrightable materials, know-how, electronic or paper documents, software (including source code and object code), multimedia or audiovisual materials, and photographs. For purposes of this policy, intellectual property is divided into two categories:

• "Patentable intellectual property" shall include, without limitation, all inventions, discoveries, know-how (despite the fact that these may not benefit from patent protection) and discoveries or other material that is patentable under US law (whether or not produced in the US), as well as all software that is excluded from "copyrightable material" (whether or not patentable under US law).
• "Copyrightable intellectual property" shall include, without limitation, all creative works, electronic or paper documents, software (including source code and object code), multimedia or audiovisual materials, and photographs, and any other materials that may be copyrightable under US law (whether or not produced in the US). Copyrightable material shall include educational or research software, but shall not include software other than educational or research software.

Patentable Intellectual Property

Responsibility for Disclosure of Patentable Intellectual Property
University personnel who alone or in association with others create patentable subject matter with any use of University resources are responsible for disclosing the patentable subject matter to the University. Such disclosure shall be made when it can be reasonably concluded that a patentable subject matter has been created, and sufficiently in advance of any publications, presentation, or other public disclosure to allow time for possible action that protects rights to the intellectual property for the creator and the University. Creators are encouraged to seek the advice of the Associate Provost for Research in determining whether the subject matter is patentable.

Determination of Rights to Patentable Subject Matter
Except as set forth below, the creator of patentable intellectual property shall retain his/her rights, and the University shall not assert ownership rights. The University will assert ownership rights to patentable intellectual property developed under any of the following circumstances:

• Development was funded by an externally sponsored research program or by any agreement which allocates rights to the University.
• Development required use of University resources (e.g. facilities, equipment, funding) or more than minimal use of University personnel.
      NOTE: The University has rights to patentable material derived from     research carried out with any use of Tufts' resources. However, patentable material developed independently by the creator outside of normal duties associated with the creator's position and with no use of University resources is vested with the creator and/or with the organization whose resources were used, such as a hospital.
• The creator was assigned, directed, or specifically funded by the University to develop the material.
• Material was developed by administrators or staff in the course of employment duties and constitutes work for hire under US law.

Copyrightable Intellectual Property

Responsibility for Disclosure of Copyrightable Intellectual Property
In contrast to historical business practice, the tradition of academic institutions is to give faculty members the right to retain ownership of their copyrightable products. This policy protects that traditional right and faculty are not obligated to disclose the creation of copyrightable material, even when the product might have commercial value, unless the material was developed under one of the qualifying conditions listed in the next section in which case the creator is responsible for timely disclosure. However, faculty is encouraged to disclose any copyrightable 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 Associate Provost for Research.

Determination of Rights to Copyrightable Intellectual Property
Except as set forth below, the creator of copyrightable intellectual property shall retain his/her rights, and the University shall not assert ownership rights. However, creators will be expected to grant non-exclusive, royalty-free, perpetual licenses to the University for copyrightable material that is developed for University courses or curriculum, so that the University's continued use of such material for educational purposes would not be jeopardized. The University will assert ownership rights to copyrightable intellectual property developed under any of the following circumstances:

• Development was funded as part of an externally sponsored research program under an agreement which allocates rights to the University.
• A faculty member was assigned, directed, or specifically funded by the University to develop the material, and the University has negotiated an understanding or formal contract with the creator.
• Material was developed by administrators or other non-faculty employees in the course of employment duties and constitutes work for hire under US law.
• The material was developed with extraordinary or substantially more use of University resources than would normally be provided for the creator's employment duties. This might occur as disproportionate use of staff time, networks, equipment, or direct funding.

Intellectual Property Developed Under Sponsored Research Agreements

Ownership of copyrightable and patentable 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 generally provide for the University to retain title to all intellectual property 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 intellectual property that arises from the research program to vest with the University, subject to certain retained rights held by the federal government.

Special Agreements

Since the University aims to encourage creativity, it reserves the right to allow some flexibility in applying this policy on a case by case basis. In such cases, ownership of materials developed pursuant to a special agreement between the University and the creator will be governed by the provisions of any such agreement.

Waiver or Return of Rights

The University may in its sole discretion waive, transfer, or license to the creator its rights in any intellectual property when such action does not conflict with obligations to the federal government or other interested parties. This could occur for instance, if the costs for protecting and developing the intellectual property are not likely to be matched by anticipated income. If at any time the University shall terminate its effort to seek protection of intellectual property, or to discontinue commercial development, the inventor shall, upon filing a request with the University and completing appropriate transfer of rights, be free at his or her expense to seek a patent or copyright, and/or develop, license, and otherwise use the material, subject to the University's rights to reimbursement of incurred costs and sharing of future royalties, in amounts to be negotiated between the University and the creator on a case by case basis.

Administration of Intellectual Property

The Office of the Associate Provost for Research will be responsible for day-to-day management of all University intellectual property issues, and shall be empowered to negotiate the University's rights under these policies. Intellectual property disclosable hereunder shall be disclosed to the Office of the Associate Provost for Research, which will be responsible for timely review of all disclosures. This Office will complete a review of the patentability and marketability of the intellectual property and prepare a recommendation for the Associate Provost for Research regarding the protection and the commercialization of the intellectual property. The Office shall be responsible, working with creators, for obtaining patent, copyright, or other protection of intellectual property owned by the University hereunder, and for marketing and licensing of all such intellectual property rights. The Office shall also set up and manage individual expense and income accounts for intellectual property that is vested in the University under this policy.

University personnel who wish to pursue the commercialization of their independently developed and owned intellectual property through the University may offer such intellectual property to the University by disclosing the intellectual property to the Office of the Associate Provost for Research. The Office will evaluate the commercial potential of the intellectual property and make a recommendation to the Associate Provost for Research regarding the acceptance of the intellectual property. Acceptance of such intellectual property by the University will be made at the sole discretion of the University and will require creator(s) to accept all provisions of this policy, including the assignment of rights and income distributions.

Income Distribution

Costs and Net Royalty Income
Unless otherwise agreed, Net Royalty Income shall mean gross royalties in the form of cash or cash proceeds whether from the sale of equity or obtained in licensing transactions, less commercialization costs, including but not limited to billed costs for protection of intellectual property, marketing, legal fees and other licensing costs, as well as a share of royalties for non-reimbursed costs as follows: 10% of Net Royalties up to the first $150,000 and 2% of Net Royalties over $150,000.

Distribution of Net Royalty Income
With respect to intellectual property owned by the University hereunder Net Royalty Income shall be distributed (usually annually) as follows:

40% Creator(s) (personal)

20% Creator's Department or equivalent unit (for support of research and other creative activity)

20% Creator's School (Dean's fund for support of research and other creative activity)

20% University (President/Provost/Associate Provost's funds for discretionary support of research and other creative activity)

In the event of joint creators, the payments made to the inventor under the above schedule shall be divided equally among the creators, except as may be otherwise agreed to by the creators and approved by the Office of Associate Provost for Research.

In the event the University receives other than monetary consideration in connection with any license, such as equity, such consideration shall be considered Gross Royalties and shall be apportioned according to the above schedule. Any equity received by the University may be held by the University until such time that the University decides to liquidate such equity. The University has the sole right to determine the disposition of intellectual property in which it has equity. Payments for research or contributions of equipment shall not be considered Gross Royalty Income but shall be the sole property of the University.

The University may postpone the distribution of Net Royalty Income when future expenses relating to the applicable technology, such as patent prosecution costs, or an infringement suit, are reasonably anticipated.

Creator Equity Participation

University policy on conflict of interest does allow creators to receive equity in return for their contributions to companies as founders or consultants, as long as the creator discloses his/her equity position and is otherwise in compliance with the University Conflict of Interest Policy. In the event the creator receives equity from the company, and the University has negotiated as licensor a royalty bearing license, or an option for such a license, with respect to intellectual property, the creator shall agree to waive his or her share of Net Royalty Income received by the University and the University shall retain it.

University personnel who are planning to direct or participate in a research program sponsored by a company in which they hold equity must disclose their equity position, and agree to periodic review of their participation in the project, by the Associate Provost for Research or her/his designee. The purpose of such review is to assess potential conflicts between company sponsored research and other research programs in the creator's laboratory and to monitor compliance with University policies.

Conflict Resolution

Administration of this policy shall be the responsibility of the Associate Provost for Research. Questions should be directed to the Office of the Associate Provost for Research regarding the application, interpretation or implementation of the policy, or regarding disagreement among creators concerning assignment of rights or sharing of royalties. Disagreement with any determination made by that Office may be directed to the Provost of the University or his/her designee for a final determination.

Use of Tufts Name, Mark, or Insignia

The Tufts University name, seal, and logo may not be used:

• In conjunction with any private or commercial enterprise.
• In tandem with the advertisement of any product.
• By any individual or group promoting itself.

Use of the University name, seal or logo on letterhead and business cards is standardized and regulated by the Office of Communications and Public Relations.

Any questions regarding the use of the University name, seal, or logo in circumstances other that the ones listed above should be referred to the Director of Publications.

Changes to this Policy

The University reserves the right to change this policy from time to time. Proposed changes normally will be developed by the Associate Provost for Research, in consultation with appropriate representatives or committees of the school faculties, school Deans, University Counsel, the Provost, Executive Vice President, and the Information Technology Council. The President has sole authority to approve changes to this policy.