Policies and Procedures Manual

10- General

Policy Number:10.95
Name:Intellectual Property Policy
Origin: Vice-President (Research & International)
Approved:February 28, 2006
Approval Process:Board of Governors
Revision Date(s):

Introduction

The University of Regina is committed to the advancement and the sharing of knowledge. It follows that one of the University's primary responsibilities faculty, staff, and students to the benefit of the communities that have created it and sustain it. The University has a responsibility to support its employees in the creation and dissemination of their Intellectual Property. It provides this support by making available facilities, equipment, human resources and information resources, and actively helps to seek additional support for creative activity from external sources, both public and private.

In particular, the University supports the scholarly research and other creative activities that form part of the basic duties of its Academic Staff Members, in part by making technical and legal assistance available through the Office of the Vice-President (Research and International). The University encourages Academic Staff Members to make their Intellectual Property as freely accessible to the academic community and the public as is reasonable in any given situation.

While the University may enter into a commercialization partnership with an employee, its primary objective in so doing is to support and protect both the individual and the institution. The University does not necessarily have a financial interest in all research and related activities carried out by its employees. However, when the University contributes significantly to such activities, it is entitled to a reasonable share of the benefits. In principle, the University's share of revenues generated from such a commercialization partnership should be used both to support research and related academic activities in the University and to provide the administrative infrastructure to support this policy.

This policy defines a subset of Intellectual Property called "Traditional Academic Works;" these are works created by Academic Staff Members, encompassing teaching materials in any format and all traditional forms of scholarly publication. Three important principles underlie this policy:

  1. The University has no claim on Traditional Academic Works unless they have been created with the use of the University's Specialized Resources;
  2. For Intellectual Property created by Academic Staff Members, neither the Creator nor the University may be compelled to commercialize any Intellectual Property; and
  3. Nothing in this policy shall supersede the provisions of any applicable collective agreement.

Definitions

Within this policy, the following terms will have the following meanings:

"Academic Staff Member"

means an Employee of the University who holds an academic appointment (whether in or out of the scope of the academic collective agreement) or is an academic assistant covered by CUPE 2419.

"Creator"

means the originator or discoverer of the Intellectual Property.

"Employee"

means an individual employed by the University in any capacity.

"Institutional Work"

means Intellectual Property created at the request of the University, under the specific direction of the University, for the University's use, by a person acting within the terms of his or her employment. Intellectual Property created by Academic Staff Members may be considered an Institutional Work if a written agreement to this effect has been negotiated between the individual and the University prior to the work being created.

"Intellectual Property"

means any result of scholarly or creative activity that can be owned by a person, including all works that can be protected under copyright, patent, trademark, industrial design, integrated circuit topography, or other equivalent legislation. It includes, but is not limited to, text, works of art, databases, audio-visual material, electronic circuitry, biotechnology and genetic engineering products, computer software recorded in any format, inventions, and all other products of research.

"Traditional Academic Work"

means Intellectual Property that is created to support teaching, regardless of the medium, or that falls into one or more of the traditional kinds of academic output related to research and publication. This includes, but is not limited to, educational, scholarly, artistic, or literary works in any medium. Intellectual Property created for public service (such as speeches, briefs, etc.) shall normally also be considered a Traditional Academic Work.

"University"

means The University of Regina created under The University of Regina Act, as amended.

"*University's Specialized Resources"

means those resources owned or under the control of the University beyond the payment of salary to Employees and the provision of a standard academic or administrative environment to Employees in which to perform their normal duties. ("Standard academic or administrative environment" should be understood as those resources normally made available to an Employee at the beginning of his or her employment. This will vary by unit. A piece of specialized instrumentation or equipment purchased with external funding, such as a CFI New Opportunities grant, is one example of a Specialized Resource.) Deans or equivalent will establish written, public criteria for determining the facilities and equipment available in their Faculty that will be deemed the University's Specialized Resources.

Words used in the singular include the plural and vice versa. Other parts of speech and grammatical forms of a word or phrase defined in this policy have a corresponding meaning.

Scope

This policy shall apply to all Employees of the University, including those on leave unless otherwise agreed in writing prior to the commencement of the leave. It also applies to visitors using the University's Specialized Resources. Intellectual Property issues involving students will be addressed in a manner consistent with this policy. This policy does not apply to Intellectual Property created by an individual prior to being employed by the University.

External funding sources may impose certain conditions or requirements that supersede elements of this policy.

Policy Statement

  1. Intellectual Property created by an Academic Staff Member is owned by the Academic Staff Member as Creator, unless an agreement in writing to the contrary is reached between the individual and the University.
  2. Intellectua Property created by Employees who are not Academic Staff Members are Institutional Works, unless an agreement in writing to the contrary is reached between the individual and the University.
  3. Institutional Works are owned by the University, unless an agreement in writing to the contrary is reached between the individual and the University.
  4. The University has no claim on Traditional Academic Works, unless they are created with the use of the University's Specialized Resources.
  5. The University has no claim on Intellectual Property that is created by Employees outside of the scope of normal duties and without the use of the University's Specialized Resources.
  6. Intellectual Property that is created by Academic Staff Members with the use of the University's Specialized Resources and/or which is not a Traditional Academic Work may be commercialized upon mutual agreement of the Creator and the University. Neither the Academic Staff Member nor the University may be compelled to commercialize any Intellectual Property.
  7. A Creator who decides to pursue commercialization of Intellectual Property shall follow the procedures set out in Appendix 1.
  8. A decision to commercialize or not to commercialize notwithstanding, prior to public disclosure all individuals covered by this policy are encouraged to disclose to the University any Intellectual Property that is created with the use of the University's Specialized Resources or is not a Traditional Academic Work in order for the individual to obtain advice about how best to protect his or her interests (and the interests of the University, if applicable) in the Intellectual Property.
  9. In the case of jointly discovered or created Intellectual Property, decisions about ownership and commercialization should be agreed to in writing by the Creators as early as possible in the process in order to avoid later dispute. Should such a dispute arise, it may be referred to the Intellectual Property Committee for a recommendation.

Intellectual Property Committee

Any disagreement that arises between individuals involved in creating Intellectual Property and individuals administering this policy will be heard in the first instance by the Intellectual Property Committee according to the Terms of Reference attached as Appendix 2. All decisions of the Intellectual Property Committee shall be rendered as recommendations to the Vice-President (Research and International) who shall either accept or reject such recommendations.

Commercialization Partnership with the University

  1. Neither the Creator nor the University is required to commercialize any Intellectual Property.
  2. If the Creator and the University decide to enter into partnership to commercialize the Intellectual Property, the following terms and conditions will apply:
  1. The terms and conditions relative to the commercialization partnership will be put in writing and signed by the Creator and the University (by the Vice-President (Research and International), or designate), prior to the active pursuit of commercialization.
  2. If the University is not interested in entering into a commercialization partnership with the Creator and the Creator decides to pursue commercialization outside the University, the University may seek to recover its reasonable costs, if any. If an agreement as to reasonable costs cannot be reached, the matter may be submitted to the Intellectual Property Committee for a recommendation.
  3. The University is committed to the creation and dissemination of knowledge and does not normally condone or promote undue restriction of or delay in the dissemination of Intellectual Property. However, when a Creator and the University are discussing a commercialization partnership, a Creator may be asked to delay publication or public presentation of the Intellectual Property for a period normally not to exceed six (6) months in order to ensure protection of the interests of the Creator and of the University.

Responsibility

The Vice-President (Research and International) bears overall responsibility for the policy. He or she, in consultation with the Intellectual Property Committee, will decide where the administrative responsibility for this policy will reside and may appoint an administrator. The administrator will normally report directly to the Vice-President (Research and International).

The Vice-President (Research and International) may seek advice on any Intellectual Property matters from appropriate sources, both within and outside the University.

Implementation

The University may develop guidelines or procedures to assist in the administration of this policy. The Intellectual Property Committee will be consulted in the development of these guidelines or procedures.

The University's License

The University has a non-exclusive, royalty-free, license to use for non-commercial administrative, educational and research purposes, all Intellectual Property developed by its Employees and subject to the terms of this policy (keeping in mind that Traditional Academic Works are normally excluded from the terms of this policy). This license does not include teaching materials developed with instructional and information technology. The right of the University to reuse these materials is subject to Article 30 of the academic collective agreement.

Effect on Collective Agreements

Nothing in this policy shall be construed as limiting any right that exists under an applicable collective agreement, or the right of the University to manage the institution.

APPENDIX 1

Procedures for Disclosing Intellectual Property

  1. A Creator who wishes to pursue the commercialization of his or her Intellectual Property, or who wishes to obtain advice before public disclosure of the Intellectual Property, shall complete the Disclosure of Intellectual Property Form, or the Disclosure of Software Development Form, and submit it to the Director of the University-Industry Liaison Office.
  2. If appropriate, the Creator should also complete the No Significant Use of University Resources or Waiver of University of Regina Ownership Rights Form.
  3. A copy of the completed Disclosure Form will be forwarded to the appropriate Dean or Director by the Director of the University-Industry Liaison Office.
  4. The University recognizes that it is in the interest of both parties to act with due expediency. However, a Creator may be asked to withhold publication or public presentation of the Intellectual Property for a period of time normally not to exceed six (6) months in order to ensure protection of the interests of the Creator and of the University.
  5. The Director of the University-Industry Liaison Office will evaluate the merits of the Intellectual Property and will advise the Creator in writing within ninety (90) days of receipt of the completed Disclosure Form whether the University is interested in entering into a commercialization partnership with the Creator. In conducting this evaluation, the Director may consult with third parties, providing that such parties sign a non-disclosure agreement.
  6. This deadline may be extended up to an additional thirty (30) days by the Director of the University-Industry Liaison Office by notifying the Creator in writing and providing reasons for the extension.
  7. The Director of the University-Industry Liaison Office will make a recommendation to the Vice-President (Research and International) as to whether the University should enter into a commercialization partnership with the Creator. The Vice-President (Research and International) will make the final decision as to whether to enter into a commercialization partnership with the Creator, and that decision will be conveyed to the Creator in writing.
  8. If the University is not interested in entering into a commercialization partnership with the Creator, the Creator is free, subject to law and prior agreements, to proceed independently only with respect to the specific Intellectual Property disclosed.

APPENDIX 2

Intellectual Property Committee

Term of Office

Three years, renewable.

Membership

Seven (7) members:

The Chair shall be an Academic Staff Member. If the members are unable to agree on a Chair, the Vice-President (Research and International) and the Faculty Association will jointly agree on a Chair. The Chair shall vote only in the case of a tie.

Terms of Reference

  1. To deal with any matter relating to Intellectual Property referred to the Committee by an Academic Staff Member, the Faculty Association, the Vice-President (Research and International), or any out-of-scope member of the University administration according to the procedures set forth below.
  2. To develop expertise in matters related to Intellectual Property.
  3. To provide advice or make recommendations to the Vice-President (Research and International) on matters related to Intellectual Property, including the administration of revenues arising from the Intellectual Property of Academic Staff Members.
  4. To ensure consistency between University Intellectual Property policies and procedures and the terms and conditions of the collective bargaining agreements and to make recommendations to both the University and the bargaining units regarding any inconsistencies that need to be addressed.
  5. To review its terms of reference when appropriate.

Procedures

  1. The Intellectual Property Committee (IPC) will meet as necessary, but at least twice annually, or at the call of the Chair.
  2. The IPC may call on the expertise of individuals who are not Committee members, but recommendations will be made by Committee members only, by majority vote.
  3. The IPC will make a written recommendation to the Vice-President (Research and International), with a copy to all relevant parties, for all matters referred to the Committee. This recommendation will contain the reasons for the recommendation. Before making its recommendation, the IPC will ensure that all relevant parties have an opportunity to present the case fully and will thoroughly familiarize itself with any documents and arguments presented to it.
  4. The Vice-President (Research and International) will either accept or reject the recommendation of the IPC, and will convey his or her decision, along with the reasons therefore, in writing to all relevant parties.
  5. If the Academic Staff Member is dissatisfied with the decision of the Vice-President (Research and International) he or she may have recourse to the appeals procedure outlined in s. 29.6 of the academic collective agreement. Other Employees have recourse to the grievance procedures set forth in the applicable collective agreement.
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