| Intellectual
Property
Learning Objectives
University Policies and Procedures
Curriculum Overview
Case Studies
Information Resources
Learning
Objectives
- Define intellectual property.
- Differentiate four basic types of intellectual property defined
by law.
- Know how to comply with University policies that relate to intellectual
property and sponsors' rights concerning intellectual property.
- Given a list of activities related to creative work, indicate
those that constitute intellectual property of the University
of Minnesota.
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University
Policies and Procedures
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Curriculum
Overview
Definition
Intellectual Property, as defined by the University of Minnesota
Intellectual Property Policy, means:
"Any invention, discovery, improvement, copyrightable work,
integrated circuit mask work, trademark, trade secret, and licensable
know-how and related rights. Intellectual property includes but
is not limited to, individual or multimedia works of art or music,
records of confidential information generated or maintained by the
University, data texts, instructional materials, tests, bibliographies,
research findings, organisms, cells, viruses, DNA sequences, other
biological materials, probes, crystallographic coordinates, plant
lines, chemical compounds, and theses. Intellectual property may
exist in a written or electronic form, may be raw or derived, and
may be in the form of text, multimedia, computer programs, spreadsheets,
formatted fields in records or forms within files, databases, graphics,
digital images, video and audio recordings, live video or audio
broadcasts, performances, two or three-dimensional works of art,
musical compositions, executions of processes, film, film strips,
slides, charts, transparencies, other visual aid/aural aids or CD-ROMS."
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Topics of Discussion
Types of Intellectual Property
There are four basic types of intellectual property, usually categorized
on the basis of the laws governing their use and protection:
- Copyrights: A copyright protects the tangible expression of
an idea, not the idea itself (e.g., a book, a research article,
or a videotape).
- Patents: A patent protects the idea and gives the creator the
right to exclude others from using the idea (e.g., a patent may
be awarded to anyone who invents a new machine or a new way of
manufacturing something, etc.). In order to receive the patent,
the creator must disclose in detail how to make his invention
work and its use.
- Trademarks: A trademark identifies and distinguishes an idea,
written words, pictures, or products from those of competitors
(e.g., the Coca Cola script name is a registered trademark that
immediately identifies the product).
- Trade Secrets: A trade secret refers to information that is
not publicly known, that produces economic benefit to the owner,
and that the owner maintains as secret.
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Intellectual Property Policy
A. Introduction
The University of Minnesota Intellectual Property Policy in its
present form was developed by a joint working group consisting
of representatives from the Senate Committees on Faculty Affairs
and Research, the Faculty Consultative Committee, the Graduate
School, and the Office of the General Counsel. The working group
consulted widely with the Senate and its committees, the research
administration, the faculty, and the Board of Regents. The final
language attempts to address all the issues and concerns raised
during the consultative process.
As stated in the policy, the policy exists "to encourage
research and innovation, clarify ownership of intellectual property
rights, create opportunities for public use of University innovation,
and provide for the equitable distribution of monetary and other
benefits derived from intellectual property."
The policy applies to "all faculty, staff, students, and
any other persons employed by the University, to all persons receiving
funding administered by the University or receiving other compensation
from the University, and to all University-enrolled graduate students
and post-doctoral fellows regardless of funding or employment
status."
In general, the policy defines intellectual property and tries
to maintain the traditional faculty control over regular academic
work product. The policy recognizes the need to reward those involved
in the creation and development of intellectual property-from
the individual creating it to the institution supporting it-by
providing guidelines as to how any income is to be distributed
among the parties concerned. The policy also lays out the responsibilities
of the University and individuals covered by the policy.
B. Ownership
The University owns all intellectual property created through
the use of University resources or facilities, supported directly
or indirectly by funds administered by the University, developed
within the scope of employment by employees, assigned in writing
to the University, or agreed in writing to be a specifically commissioned
work.
With respect to the latter of these, the University may contract
with a faculty member to create a specially commissioned work
that would otherwise be a regular academic work product, such
as the creation of a distance-learning program that would be sold
to other institutions. Such specially commissioned work would
be considered intellectual property that is owned by the University.
In the case of intellectual property created in the course of
sponsored research or under contract with external parties, ownership
is determined in accordance with the terms of the University's
agreement with the funding agency or external party and applicable
law. The same applies to intellectual property created under outside
consulting or service arrangements.
Since the University wishes to preserve the faculty's traditional
rights of ownership of their academic work, the policy specifically
states that the University does not claim ownership rights to:
Regular academic work product, which is defined by the policy
as any copyrightable work product that is an artistic creation
or that constitutes, or is intended to disseminate the results
of academic research or scholarly study. Regular academic work
product includes, but is not limited to, books, class notes, theses
and dissertations, course materials designed for the web, distance
education, and other technology-oriented educational materials,
articles, poems, musical works, dramatic works, pantomimes and
choreographic works, pictorial, graphic and sculptural works,
or other works of artistic imagination. Software specifically
needed to support a regular academic work product or that is designed
to disseminate the results of academic research and scholarly
study is also considered a regular academic work product.
Intellectual property created by a student for the sole purpose
of satisfying course requirements unless the student assigns ownership
rights in the intellectual property to the University in writing
or assignment of such ownership rights to the University is made
a condition of participation in a course.
C. Responsibilities
The policy requires individuals to create, retain, and use intellectual
property according to University policies and all applicable laws.
In addition, individuals have a responsibility to:
- Adhere to the principles embodied in the University's Intellectual
Property Policy;
- Sign, when so requested by the University, the University's
Intellectual Property Policy Acknowledgment;
- Disclose promptly in writing intellectual property owned by
the University pursuant to its Intellectual Property Policy
or created pursuant to sponsored research or other contractual
arrangements with external parties, and assign title to such
intellectual property to the University or its designee to enable
the University to satisfy the terms of any applicable funding
or contractual arrangement; and
- Cooperate with the University in securing and protecting the
University's intellectual property, including cooperation in
obtaining patent, copyright, or other suitable protection for
such intellectual property and in legal actions taken in response
to infringement.
The University is responsible for:
- Overseeing the management of intellectual property and technology
transfer;
- Establishing effective procedures for acquisition of licenses
and patents;
- Promoting the distribution and marketing of intellectual property;
- Protecting the University's intellectual property; and
- Informing individuals covered by the Intellectual Property
Policy about its provisions.
D. Distribution of income
For income derived from academic research and scholarly study
the general guidelines for its distribution are as follows:
- 33-1/3 percent to the creator;
- 33-1/3 percent to the Office of the Vice President for Research
to support the University's technology and transfer unit and
to support research and scholarly activity at the University;
- 8 percent to the creator's college(s)/school(s) that supported
the creation of the intellectual property; and
- 25-1/3 percent to the department(s)/division(s)/center(s)
that supported the creation of the intellectual property to
be spent in support of the creator's research or other directly
related University work.
Changes to the distribution of income may be appropriate if the
income to a department/division/center becomes disproportionate
compared to the unit's budget or if there are administrative organizational
changes, including movement of the creator among units. Decisions
about redistribution of income under these circumstances are made
by the vice president for research in consultation with the Senate
Committee on Research and the dean(s) of the appropriate college(s)
or school(s).
Other proportions may be needed under special circumstances or
contractual arrangements; these would be determined by the vice
president for research in consultation with the individual's supervisor.
E. Procedures
The procedures are currently under development.
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Case
Studies
For each of the following cases:
- Identify the intellectual property issues and discuss each with
respect to University policy;
- Identify conflicts and disputes and develop worst- and best-case
resolutions; and
- In cases where a court ruling was made, discuss the ramifications
of each ruling.
Case No. 1: Patient Rights
A scientist, now an employee of Genentech and formerly a member
of a research group at the University of California at San Francisco
(UCSF), testified in court that he had stolen into his old lab
at UCSF and removed a sample of DNA for producing growth hormone
that he and others at UCSF had developed. He claimed that he and
a Genentech scientist then agreed to use the stolen sample to
create a product called Protopin, which was used to correct a
growth hormone deficiency in children and which later became extremely
successful. He also stated that he had misrepresented the source
of the DNA in a Nature article describing his research published
in 1979.
Genentech acknowledged the taking of the sample of DNA and paid
the University $2M in compensation in 1979. However, Genentech
claimed that they performed their own independent proprietary
research to develop the product and denied using the UCSF DNA.
UCSF claimed that the growth hormone product infringed on their
patent and sued Genentech for $400M in lost royalties. The dispute
has continued for more than 20 years. Recently, a federal court
jury deadlocked 8 to 1 in favor of UCSF. A new trial has been
scheduled to decide whether infringement of patent rights has
occurred and, if so, whether that infringement was willful. In
the latter case, damages could reach $1,500M.
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Case No. 2: Data Ownership
Emory University licensed a synthetic antiviral compound called
fluorothiacytidine (FTC), which was patented by three university
professors, to Burroughs Wellcome for testing against the AIDS
virus. After several years of testing, the company was bought
by Glaxo, which stopped the testing and revoked the license because
it already had its own AIDS drug, 3TC.
Emory sued Glaxo to obtain the clinical trial data acquired by
Burroughs Wellcome which Glaxo claimed as its own. A small pharmaceutical
company named Triangle then started its own tests of FTC, with
rights from Emory. One of the three vice presidents of the company
was also the vice president for research at Emory. A settlement
was reached in the Glaxo case in which Glaxo received an undisclosed
payment in exchange for granting exclusive worldwide rights to
Emory and Triangle for the test data and intellectual property
related to FTC.
Meanwhile, Emory is also claiming patent infringement by Glaxo
for 3TC. Glaxo claims that the 3TC drug that is marketed is based
on a patent held by a Canadian company and licensed to Glaxo Wellcome
and that Emory's FTC patent is invalid.
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Case No. 3: Regular Academic Work Product
A faculty member has taught a senior-level course in quantum
mechanics for several years and has developed an extensive set
of notes that she plans to convert into a new textbook as soon
as she can find the time. She is close to the end of the term
for this year's course when she makes a rather alarming discovery-a
student in her class has been selling the notes for her class
at a small profit to the other students. The notes are an expanded
version of her lectures and contain material from her visual aids,
as well as diagrams copied from the textbook.
The student claims that he is only helping the other students
learn a very difficult subject and that the profit barely covers
his expenses. However, it soon comes to light that he has been
doing the same thing for several other courses and actually hires
students to take notes in other classes, which he then develops
into a sellable form.
The faculty member is very upset. Not only is her lecture material
being sold without her permission, but the student has also copyrighted
it. Her university's policy clearly states that such traditional
academic work product belongs to the faculty member.
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Case No. 4: Breach of Contract and
Misappropriation of Trade Secrets
Cryo-Cell contracted with the University of Arizona to establish
a blood bank to preserve newborns' umbilical-cord blood which
could widen options for future cancer treatments to boost a patient's
immune system. A professor at the University of Arizona, who was
the leading expert in this field, hoped to further his research
on the storage and biology of cord blood with the help of Cryo-Cell,
which paid him 25 percent of the storage fee charged to patients.
A few years later, the University of Arizona broke its contract
with Cryo-Cell, claiming that the company could not provide the
appropriate storage device. It contracted with another company,
Cord Blood Registry, which charged significantly higher fees and
paid the professor's lab 50 percent of the storage fees. The University
of Arizona also gave the names of the customers served by Cryo-Cell
at the University of Arizona to Cord Blood Registry so that it
could continue to collect the storage fees.
Cryo-Cell claimed that the only reason the change to Cord Blood
Registry was made was because the professor's lab would receive
considerably more money and that providing the names to the new
company was misappropriation of trade secrets. The University
of Arizona claimed that it had acquired the original Cryo-Cell
customers as a result of its own efforts, and hence, owned the
customer list. Therefore, there was no misappropriation of trade
secrets. The courts ruled in favor of Cryo-Cell. The University
of Arizona lost its appeal and had to pay $1.7M to Cryo-Cell.
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Case No. 5: Specially Commissioned Work
The University of Northern South Dakota at Hoople (UNSD) commissioned
a sculpture to honor the renowned composer P.D.Q. Bach. A well
known faculty member from UNSD's Art Department produced the sculpture
and was paid a handsome sum for the statue. The faculty member
felt more than adequately rewarded for his work and thought no
more about the statue after it was dedicated.
However, some years later, the faculty member was in a music
store and noticed a display for the latest recording of P.D.Q.
Bach's Ephygenia in Brooklyn which featured a picture of his statue.
The same picture was on the front of every CD. Upon inquiry at
the Office of the Vice President for Research, he learned that
UNSD receives a royalty for every copy of the CD sold and has
collected a sizeable sum from the recording company for the use
of the picture of the statue.
The professor claimed that he should have received the royalties
because the statue, and any images of it, were his regular academic
work product (he is a sculptor, after all), which university policy
recognizes as belonging to him. UNSD disagreed, stating that the
work was specially commissioned and paid for by the university
and therefore belongs entirely to the university. As such, the
statue did not fall under the category of traditional academic
work product and, hence, any royalties deriving from it are the
property of UNSD.
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Information
Resources
Futher Reading
Barrett, M. Intellectual Property. Larchmount, NY: Emanuel Law
Outlines, 1991.
Fishman, A. S. The Copyright Handbook. Berkeley: Nolo Press,
1998.
Macrina, Francis L. Scientific Integrity: An Introductory Text
with Cases. American Society for Microbiology Press, 1995.
Miller, A., and R. Davis. Intellectual Property-Patents, Trademarks,
and Copyright in a Nutshell. St. Paul: West Publishing Co., 1990.
Pressman, D. Patent It Yourself. Berkeley: Nolo Press, 1998.
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