Negotiations: Article 20, Intellectual Property

AAUP-WSU wishes to change Article 20, Intellectual Property. Our Negotiating Team submitted the proposal below to the administration on February 1. Current language proposed for deletion is shown in the strikethrough format, and proposed new language is shown in the red underlined format. For comparison, you may wish to view the entire current CBA and this article in particular.

For more about bargaining now under way toward a successor of our current Collective Bargaining Agreement (CBA), please see our Negotiations page. There, you will find rosters of our Bargaining Council and Negotiating Team, a table showing the status of each article (those in the current CBA and new ones, too), and also reports about each negotiating session.

Thus far, no negotiations have taken place about the proposals below.

AAUP-WSU Proposal for Article 20, Intellectual Property
20.1 Discoveries and Inventions. 20.1.1 All rights to and interests in discoveries or inventions, including patents thereon, which result from research or investigation conducted in any experiment station, bureau, laboratory, or research facility of the University or involve significant use of University facilities or resources, shall be the sole property of the University. All rights and interests in software, although it is copyrightable, shall be the property of the University when it is required for an invention or is part of an invention. Bargaining Unit Faculty Members who make or participate in the making of such discoveries or inventions in the course of fulfilling their University responsibilities or with use of University resources shall promptly disclose their discovery or invention to the Chief Intellectual Property Officer, using the disclosure form prescribed by that official. Use of this form has the effect of initiating the process of review for patentability and commercializability. 20.1.1.1 Significant use of University resources is the use of University facilities, staff or funds beyond those normally available to members of the University community. Use of assigned office space, normal clerical support, and routine use of library resources, desktop computers and office supplies are not significant use of University resources. 20.1.1.2 The University will consult with the Bargaining Unit Faculty Member(s) who discloses a discovery or invention before marketing such discovery or invention. 20.1.2 Rights to inventions arising in the course of government or other externally sponsored research are controlled by the terms of the agreement between the University and the sponsor and/or applicable federal regulations. 20.1.3 Bargaining Unit Faculty Members shall be entitled to share in any royalty income received by the University for their discoveries or inventions, in accordance with the University's royalty distribution schedule in Section 20.4. The University shall maintain distributions of a Bargaining Unit Faculty Member's respective share of such royalties after the Member terminates his or her University employment. 20.1.4 Bargaining Unit Faculty Members agree to assist and cooperate with the University in obtaining and enforcing patents, including, without limitation, executing and delivering all assignments, documents and instruments reasonably requested by the University in conjunction with obtaining and enforcing patents within the United States or any foreign jurisdiction. 20.1.5 The University has no obligation to pursue or maintain patent protection for disclosed inventions. If the Chief Intellectual Property Officer recommends that the University not pursue a patent application, maintain a patent, or otherwise market that invention, then the University may assign ownership to a Bargaining Unit Faculty Member while retaining a royalty-free license to use the invention for non-commercial purposes. The University shall duly consider a Bargaining Unit Faculty Member's request for assignment of an invention, in which that Member has had input, when the University chooses not to pursue a patent application, maintain a patent for that invention, or otherwise market that invention. 20.2 Copyrightable Works. 20.2.1 Bargaining Unit Faculty Members retain ownership of their own copyrightable works unless the work is a work-for-hire or is subject to a separate written agreement that requires assignment to the University or to a third party. In the case of assignment to the University, the author will retain the right to use the material for his or her own noncommercial purposes. 20.2.2 Bargaining Unit Faculty Members shall cooperate with and sign all documents reasonably requested by the University to enable it to secure, register and enforce in the U.S. and any foreign countries, copyrights in all works owned by or assigned to the University. The University shall cooperate with and sign all documents reasonably requested by a Bargaining Unit Faculty Member to enable him or her to secure, register and enforce in the U.S. and any foreign countries, copyrights in all works owned by or assigned to that Member. 20.2.3 Traditional faculty products of scholarly activity that have customarily been considered to be the restricted property of the author will be owned by the author regardless of the medium in which the work is embodied. Such traditional products include, but are not limited to, journal articles, textbooks, monographs, works of art including paintings and sculptures, and musical compositions. The University does not claim any ownership rights to such works. 20.2.4 Royalties earned from the commercialization of traditional faculty products will accrue entirely to the Bargaining Unit Faculty author(s) as personal income, unless copyright was previously assigned to the University or significant University resources were used in the production of the work. For traditional faculty products requiring significant use of University resources, author(s) will repay the University for identifiable resources from any personal income earned. Before making significant use of University resources in the creation of such works, Bargaining Unit Faculty Members shall consult with their Chair, who shall have the opportunity to consult with the Intellectual Property Officer prior to approval. 20.2.5 Development of distance learning courseware, instructional software, and other multimedia works involving significant University resources requires a written agreement between the University and the creator(s) outlining the rights and responsibilities of the parties. The agreement will cover, at a minimum, ownership, the right of the creator(s) to erase videotape or delete from a Web server any or all of the course content at the conclusion of a course, the need for written permission from the creator for the modification, reuse, or sale of courseware, the responsibility for obtaining copyright permission for items used in the creation of courseware, and the distribution of royalties. Absent such a written agreement, distance learning courseware, instructional software, and other multimedia works are regarded as traditional faculty products of scholarly activity and thus covered by section 20.2.3. 20.3 Trademarks. 20.3.1 Any trademarks created by a Bargaining Unit Faculty Member at the request of the University shall be owned by the University. 20.3.2 Trademarks created by a Bargaining Unit Faculty Member in association with an invention, discovery, or copyrighted material shall be owned by the same party that owns the invention, discovery or copyrighted material. 20.4 Royalty Distribution Schedule. Bargaining Unit Faculty Members who are makers of inventions and discoveries or authors of copyrighted works and who share royalties received by the University may select either of the following two methods for sharing such income. 20.4.1 Bargaining Unit Faculty Members may request that the University deposit all net royalties into a restricted (ledger 6) account. 20.4.1.1 Net royalties are defined as gross royalty income less actual expenses incurred by the University in administration of the intellectual property, including but not restricted to legal fees and patent maintenance fees. 20.4.1.2 Such restricted (ledger 6) accounts will be assessed a fee of 10% on all royalty income received. 20.4.2 Bargaining Unit Faculty Members may elect to receive personal income based upon gross royalties. For gross royalties up to $50,000, the inventor's/author's share shall be one-half of gross royalty income. For gross royalties in excess of $50,000, the inventor's/author's share shall be 40% of the excess above $50,000 minus any expenses in excess of $25,000. For example, for $200,000 cumulative gross royalties, with $40,000 cumulative expenses, the total inventor's/author's share shall be 0.5 x $50,000 + 0.4 x [($200,000 -$50,000) -($40,000 -$25,000)] = $79,000.

AAUP-WSU Proposal for Article 20, Intellectual Property

20.1 Discoveries and Inventions.

20.1.1 All rights to and interests in discoveries or inventions, including patents thereon, which result from research or investigation conducted in any experiment station, bureau, laboratory, or research facility of the University or involve significant use of University facilities or resources, shall be the sole property of the University. All rights and interests in software, although it is copyrightable, shall be the property of the University when it is required for an invention or is part of an invention. Bargaining Unit Faculty Members who make or participate in the making of such discoveries or inventions in the course of fulfilling their University responsibilities or with use of University resources shall promptly disclose their discovery or invention to the Chief Intellectual Property Officer, using the disclosure form prescribed by that official. Use of this form has the effect of initiating the process of review for patentability and commercializability.

20.1.1.1 Significant use of University resources is the use of University facilities, staff or funds beyond those normally available to members of the University community. Use of assigned office space, normal clerical support, and routine use of library resources, desktop computers and office supplies are not significant use of University resources.

20.1.1.2 The University will consult with the Bargaining Unit Faculty Member(s) who discloses a discovery or invention before marketing such discovery or invention.

20.1.2 Rights to inventions arising in the course of government or other externally sponsored research are controlled by the terms of the agreement between the University and the sponsor and/or applicable federal regulations.

20.1.3 Bargaining Unit Faculty Members shall be entitled to share in any royalty income received by the University for their discoveries or inventions, in accordance with the University's royalty distribution schedule in Section 20.4. The University shall maintain distributions of a Bargaining Unit Faculty Member's respective share of such royalties after the Member terminates his or her University employment.

20.1.4 Bargaining Unit Faculty Members agree to assist and cooperate with the University in obtaining and enforcing patents, including, without limitation, executing and delivering all assignments, documents and instruments reasonably requested by the University in conjunction with obtaining and enforcing patents within the United States or any foreign jurisdiction.

20.1.5 The University has no obligation to pursue or maintain patent protection for disclosed inventions. If the Chief Intellectual Property Officer recommends that the University not pursue a patent application, maintain a patent, or otherwise market that invention, then the University may assign ownership to a Bargaining Unit Faculty Member while retaining a royalty-free license to use the invention for non-commercial purposes. The University shall duly consider a Bargaining Unit Faculty Member's request for assignment of an invention, in which that Member has had input, when the University chooses not to pursue a patent application, maintain a patent for that invention, or otherwise market that invention.

20.2 Copyrightable Works.

20.2.1 Bargaining Unit Faculty Members retain ownership of their own copyrightable works unless the work is a work-for-hire or is subject to a separate written agreement that requires assignment to the University or to a third party. In the case of assignment to the University, the author will retain the right to use the material for his or her own noncommercial purposes.

20.2.2 Bargaining Unit Faculty Members shall cooperate with and sign all documents reasonably requested by the University to enable it to secure, register and enforce in the U.S. and any foreign countries, copyrights in all works owned by or assigned to the University. The University shall cooperate with and sign all documents reasonably requested by a Bargaining Unit Faculty Member to enable him or her to secure, register and enforce in the U.S. and any foreign countries, copyrights in all works owned by or assigned to that Member.

20.2.3 Traditional faculty products of scholarly activity that have customarily been considered to be the restricted property of the author will be owned by the author regardless of the medium in which the work is embodied. Such traditional products include, but are not limited to, journal articles, textbooks, monographs, works of art including paintings and sculptures, and musical compositions. The University does not claim any ownership rights to such works.

20.2.4 Royalties earned from the commercialization of traditional faculty products will accrue entirely to the Bargaining Unit Faculty author(s) as personal income, unless copyright was previously assigned to the University or significant University resources were used in the production of the work. For traditional faculty products requiring significant use of University resources, author(s) will repay the University for identifiable resources from any personal income earned. Before making significant use of University resources in the creation of such works, Bargaining Unit Faculty Members shall consult with their Chair, who shall have the opportunity to consult with the Intellectual Property Officer prior to approval.

20.2.5 Development of distance learning courseware, instructional software, and other multimedia works involving significant University resources requires a written agreement between the University and the creator(s) outlining the rights and responsibilities of the parties. The agreement will cover, at a minimum, ownership, the right of the creator(s) to erase videotape or delete from a Web server any or all of the course content at the conclusion of a course, the need for written permission from the creator for the modification, reuse, or sale of courseware, the responsibility for obtaining copyright permission for items used in the creation of courseware, and the distribution of royalties. Absent such a written agreement, distance learning courseware, instructional software, and other multimedia works are regarded as traditional faculty products of scholarly activity and thus covered by section 20.2.3.

20.3 Trademarks.

20.3.1 Any trademarks created by a Bargaining Unit Faculty Member at the request of the University shall be owned by the University.

20.3.2 Trademarks created by a Bargaining Unit Faculty Member in association with an invention, discovery, or copyrighted material shall be owned by the same party that owns the invention, discovery or copyrighted material.

20.4 Royalty Distribution Schedule. Bargaining Unit Faculty Members who are makers of inventions and discoveries or authors of copyrighted works and who share royalties received by the University may select either of the following two methods for sharing such income.

20.4.1 Bargaining Unit Faculty Members may request that the University deposit all net royalties into a restricted (ledger 6) account. 20.4.1.1 Net royalties are defined as gross royalty income less actual expenses incurred by the University in administration of the intellectual property, including but not restricted to legal fees and patent maintenance fees.

20.4.1.2 Such restricted (ledger 6) accounts will be assessed a fee of 10% on all royalty income received.

20.4.2 Bargaining Unit Faculty Members may elect to receive personal income based upon gross royalties. For gross royalties up to $50,000, the inventor's/author's share shall be one-half of gross royalty income. For gross royalties in excess of $50,000, the inventor's/author's share shall be 40% of the excess above $50,000 minus any expenses in excess of $25,000.

For example, for $200,000 cumulative gross royalties, with $40,000 cumulative expenses, the total inventor's/author's share shall be

0.5 x $50,000 + 0.4 x [($200,000 -$50,000) -($40,000 -$25,000)] = $79,000.

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This page was last modified on April 15, 2008. Corrections, comments, and suggestions are most welcome. Contact the webmaster for this page (Jim Vance) at jvance@math.wright.edu, telephone 937-775-2206.