The City University of New York Intellectual Property Policy (02/24/03) appears at http://portalsearch.cuny.edu/cms/id/cuny/documents/informationpage/000649.htm. The purpose of this policy is to:

! Promote research, authorship, and invention by members of the University Community and facilitate the dissemination of the products of these activities;

! Define the ownership, distribution, and sales rights associated with such intellectual property; and

! Provide for the sharing of tangible rewards that result from their commercialization.

This summary of the 12-page document’s provisions is not designed to substitute for a thorough reading and understanding of the document itself, but rather to serve as an introduction to the policy and a distillation of its more prominent features. All parenthetic section numbers refer to the appropriate parts of the policy.

! The Creator owns all rights associated with copyrightable works. (III.A)

! The University owns all rights in other IP. (III.A)

UNLESS:

1. The work results from Sponsored Research, in which case the agreement between the Creator and either (a) the University (CUNY) or (b) the Research Foundation (RF) applies. If ownership is not defined by any such agreement, the Creator owns all rights. (III.B1)

2. The work is commissioned by CUNY, in which case ownership and royalty rights will be specified in a pre-approved written agreement. (III.B2)

3. A copyrightable work is created within the scope of the Creator’s employment (personnel or administrative manuals, policy statements, video recording of college events, PR materials, official college Web pages, for example), in which case CUNY or the RF owns all rights. (III.B3)

4. The work is a course designed for delivery over the Internet and is also (a) the result of Sponsored Research or (b) a Commissioned Work, in which case 1. or 2. above applies. (III.B4)

5. The work is created making substantial (rather usual) use of University property (that is, space or equipment beyond that standard to offices, laboratories, and studios). Here, in advance of creating the work the Creator will enter into a negotiated agreement with the college where the creative activity will occur, with CUNY approving the agreement. The agreement will specify ownership of the resulting IP, including royalty-sharing. (III.B5)

6. The work is prepared for publication in official CUNY or college media (TV or radio stations, newspapers, magazines, etc.), in which case right shall be assigned based on the individual policies of these media, or in contracts they make with Creators. There being no policy or contract, copyright is owned by CUNY. (III.B6)

! If no, the University owns all rights to the IP, unless one of the six exceptions applies. However, a Creator is free to make non-commercial use of CUNY-owned IP. [CUNY-owned IP could include Copyrightable Works, so this should be its own bullet point] Any distribution to colleagues outside CUNY is governed by the copyright law’s “fair use” provision and allowable if there is a written agreement to this effect with CUNY. (III.C)

! CUNY owns all trademarks related to an item of IP. (X)

! Disclosure: Creators must disclose to CUNY the existence of any IP owned by the University by virtue of this policy. Disclosure shall occur before the work/IP is (a) submitted for publication or another type of release, (b) the work is submitted for licensing, distribution, manufacture, or any other commercial purpose. When there are several Creators, each must complete a disclosure document. (V.A)

! Determining Ownership Rights: After Disclosure occurs, CUNY determines whether to exercise any ownership rights and notifies the Creator in a timely fashion. (V.B)

! Legal Protection and Commercialization: CUNY may seek a variety of protections for IP it owns, including patents and copyright registration, and will pay all costs associated with obtaining these protections. (V.C)

! Creator’s Additional Rights: Under certain circumstances, the Creator may request that the University assign to him or her some of its IP rights. CUNY must follow a strict time line for responding to such a request from a Creator, or else it forfeits its ownership rights. (V.D)

! Intellectual Property Committee: An IP Committee (at least nine members, each serving a three-year term) will advise CUNY on all disclosures of IP that are declared by Creators to be owned by the University. Subcommittees (Copyright; Patent and Technology) will review disclosures of copyrightable works, and patentable works, and other intellectual property including trade secrets and know-how, and tangible research property. The RF will monitor CUNY’s obligations re IP to sponsors. (V.E.)

! Policy: Creators of CUNY-owned IP are entitled to share in the income their IP generates. Unless (a) the terms of a sponsored research agreement, or (b) an agreement negotiated between CUNY and the Creator apply, after CUNY/RF expenses and certain other specific costs are covered, the net proceeds will be divided (I) 50% to the Creator, (ii) 25% to CUNY, and (iii) 25% to the Creator’s college (50% of which shall support the Creator’s academic or research unit). When more than one individual contributes to the creation of IP, they shall share revenues equally. (VI)

! Distribution of Profits: The details of income distribution are clearly set out in the policy. (VI)

! Conflict of Interest: The resolution of conflicts of interest between CUNY and the Creator are set forth in the policy. (VII)

! Exceptions to the Policy: Creators may request exceptions or waivers to any part of the CUNY policy, and the procedure for so doing is detailed in the policy itself. (VIII)

! Resolving Disputes: The policy describes a procedure for resolving disputes between Creators and CUNY.

! Commissioned Work: a work commissioned by CUNY in writing from a member of the University, outside the scope of his or her employment.

! Creator: this term includes members of the University community (FT and PT faculty, staff, and graduate students, paid or unpaid; those working on grant funds; and so forth) including groups of researchers, authors, and inventors.

! Intellectual Property: all forms of IP including inventions, copyrightable works, trade secrets and know-how, and tangible research property but excluding trademarks.

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