Senate Agenda April 25, 2000

THE PENNSYLVANIA STATE UNIVERSITY

The University Faculty Senate

Birch Cottage

University Park, PA 16802

(814) 863-1202 – phone (814) 863-6012 – fax

Date: April 14, 2000

To: Murry R. Nelson, Chair, University Faculty Senate

From: Louis F. Geschwindner, Chair, Senate Committee on Curricular Affairs

SENATE COMMITTEE ON FACULTY AFFAIRS, LIBRARIES AND RESEARCH

(Forensic Session)

The attached report is being presented to the University Faculty Senate as a Forensic Session on April 25, 2000.

(Short Form)

Below you will find brief versions of the six recommendations. We would like your comments on all the recommendations, but feedback on #3 and #4 are particularly necessary.

The Task Force recommends that:

1. The University invest more in intellectual property personnel and resources

pp. 5, 14-19).
2. The University and The Penn State Research Foundation (PSRF) do more to

assist in the formation of start-up companies (pp. 6, 20-21).
3. The University reaffirm faculty ownership of copyrighted materials and make no

changes in copyright policies until current legislation becomes law (pp. 6-7, 22-27).
4. A Penn State faculty member who wishes to sell courseware to an educational

competitor of the University first secure approval from the Vice President
for Research (pp. 7-8, 27-36).
5. All Penn State offices dealing with intellectual property be consolidated and placed

under the supervision of the Vice President for Research (pp. 8, 36-42).
6. The Vice President for Research form the committees necessary to transform

these introductory recommendations into specific policies and procedures (p. 8),
appoint faculty to all committees charged with developing and implementing
them (p. 42), and bring each new policy to the University Faculty Senate as an
advisory/consultative report (p.42).

Interim Report of the

Task Force on Intellectual Property

Policies and Procedures

The Pennsylvania State University

March 31, 2000

CONTENTS

List of Appendices 3

Charge 4

EXECUTIVE SUMMARY 5

Chapter I. INTRODUCTION 9

Chapter II. PATENTS, LICENSING, AND THE PENN STATE RESEARCH FOUNDATION 14

Patents and Licensing 15

Penn State Research Foundation (PSRF) 18

Chapter III. START-UP COMPANIES 20

Chapter IV. COPYRIGHT AND LICENSING OF SOFTWARE AND DATABASES 22

Chapter V. COURSEWARE AND CLASS NOTES 28

Courseware 29

Conflict of Interest 30

Class Notes 35

Chapter VI. IMPLEMENTATION, EDUCATION, AND ADMINISTRATIVE SUPPORT 37

APPENDICES 43

List of Appendices

Appendix A: Task Force Membership

Appendix B: Definitions

Appendix C: Benchmarking

Appendix D: Bibliography of Websites

Appendix E: Conflict of Interest Policy and

Intellectual Property Agreement Form

http://guru.psu.edu/gfug/instruct/4-04.html

Supporting materials available at www.

Appendix F: Patent Policy Statement

Appendix G: Copyright Law

Legal Environment

Summary of the Digital Millennium Copyright Act

Ownership and Use

Charge

In November 1998, Executive Vice President and Provost Rodney Erickson, then Vice President for Research, appointed a Task Force on Intellectual Property Policies and Procedures (for Task Force membership, see Appendix A) and charged it to review existing University policies and procedures and to provide recommendations that would:

• establish a consistent set of University policies and procedures for intellectual property
• strengthen Penn State’s faculty support infrastructure in order to increase the magnitude and effectiveness of research activity
• enable the University to capitalize better on the transfer and commercialization of its intellectual property
• avoid the unplanned loss of ownership of intellectual property

Executive Summary

The international transition to an information and technology-based economy has introduced a set of issues and opportunities that are redefining the nature and use of intellectual property within the University.

The Task Force has identified key issues and needed changes in policies, procedures, and organizational structures. Adoption of its recommendations will enable the University to achieve the three fundamental goals of intellectual property management:

• To bring the benefits of Penn State research and scholarship to society
• To make Penn State a more stimulating and attractive place for faculty and students
• To generate additional resources to support Penn State’s mission to create and disseminate knowledge and to achieve the preceding two goals

The Task Force has examined five areas. Its recommendations and rationale for each of these areas follow. Each rationale consists of three parts. The first part indicates how the recommendation differs from existing circumstances. The second part indicates how the recommendation will benefit Penn State faculty, staff, and students. The third part indicates how the recommendation will benefit the University. The Executive Summary concludes with a recommendation to the Vice President for Research about most effective use of the information gathered by the Task Force and contained in this report.

1. Patents and Licensing

Recommendation

The Task Force recommends that the University should make a significantly larger investment in personnel and resources to bring Penn State’s patenting and licensing activities to a level appropriate for a major research university.

Rationale

• This recommendation differs from the existing policy, which allocates inadequate resources to protect inventions and insufficient personnel to handle the inventions Penn State produces.
• With the new policy, faculty, staff, and students would see better, faster, and more thorough protection of inventions, increased likelihood of licensing and commercialization, and an increase in royalty income.
• With the new policy, the University would see an enhanced income stream from its patents and stronger evidence that Penn State is aggressively seeking to disseminate the fruits of its research to benefit the Commonwealth and the nation.

II. Start-Up Companies

Recommendation

The Task Force recommends that Penn State should increase its efforts to assist in the formation of start-up companies based on discoveries made at the University, and that The Penn State Research Foundation (PSRF) should redirect its mission to play a central role in this activity.

Rationale

• This policy differs from existing practice, which, while encouraging the formation of spin-off companies, has been generally unsuccessful in helping to raise the capital and management needed to ensure the success of those companies.
• With the new policy, faculty, staff, and students would see (a) a more productive way to move University-generated inventions and ideas into the commercial sector, (b) increased prospects for funding of academic research through collaborations with local companies, (c) opportunities for Penn State students to participate in start-up company operations through multidisciplinary projects, and (d) additional local employment opportunities.
• With the new policy, the University community may expect job creation in regions near the campuses, opportunities for attracting and hiring new faculty with entrepreneurial interests, additional revenue income from intellectual property, gifts from successful entrepreneurs, and an enhancement to its reputation as a research university.

III. Copyright and Licensing of Software and Databases

Recommendation

The Task Force recommends that the University reaffirm its current policy that a faculty member owns his or her works of scholarship such as research monographs, journal articles, novels, plays, musical compositions, and textbooks. Instructional materials in the form of courseware are a special class of created works and require a separate policy based on such issues as conflict of interest and conflict of commitment. Since legislation on databases and software currently is pending, the University should monitor the legislative process and be prepared to update University policies as soon as legislation becomes law.

Rationale

• The current policy, based on the Copyright Act of 1976 which provides the basis for the University‘s Copyright Handbook (1982), is seriously dated. University policy must be updated to reflect the 1998 Digital Millennium Copyright Act (DMCA), the increasing use of licenses to supercede copyright, the increasing use of contract law to establish allowable practices with intellectual property, and the necessity to devise a strategy for dealing with questions of "fair use."
• Faculty, staff, and students will benefit from knowing that the University has developed a framework for analysis and is actively formulating and revising policies to address the challenging new questions of ownership and use in the digital age.
• The University will benefit in minimizing its legal liability under the DMCA by educating faculty, staff, and students about copyright law and by developing policies on ownership and use that respond to recent changes in the law.

IV. Courseware and Class Notes

Recommendation

The term "courseware" refers to technology-based instructional materials, including software tools and applications, intended for use in credit and non-credit courses. The Task Force recommends that faculty, staff, or students who wish to sell courseware to an educational competitor of Penn State first must secure appropriate approval. Approval will require an affirmative answer to two questions: (1) Does the sale conform to the University’s policies concerning conflict of interest and conflict of commitment? (2) Is the courseware owned entirely by the faculty or staff member?

Rationale

• The University has no policy concerning courseware. Its previous guidelines for "instructional material" were based on a definition of "scope of employment" that does not offer the flexibility needed to deal with the shared ownership options that today’s higher education environment requires.
• With the new policy, faculty, staff, and students will be alerted to conflict of interest and conflict of commitment issues and will be assisted by experienced intellectual property negotiators in any sale or distribution of courseware.
• With the new policy, the University will be providing a clear set of guidelines to resolve ownership and conflict of interest/conflict of commitment issues early in the development of new courseware.

V. Implementation, Education, and Administrative Support

Recommendation

The Task Force recommends that all Penn State offices dealing with intellectual property be consolidated and placed under the supervision of the Vice-President for Research, who will have overall responsibility for coordinating and administering all aspects of the University’s intellectual property policies and procedures. This will include patents, copyrights, trademarks (excluding Penn State logo licensing), and licenses (both the creation of intellectual property and the interpretation of the legal use of intellectual property). The Vice President for Research and the Provost should coordinate efforts on issues affecting teaching. The Vice President for Research should supervise the intellectual property educational programs mandated by the DMCA.

Rationale

• The current intellectual property organizational structure is cumbersome and inefficient with poorly defined and overlapping areas of authority and responsibility. Intellectual property management needs to be organized and centralized through the Office of the Vice President for Research.
• With the new policy, faculty, staff, and students will see an effective medium for coordinating all aspects of intellectual property management. This centralization will facilitate the participation by members of the University community in the generation and utilization of intellectual property.
• With the new policy, the University will have a clear chain of command in managing intellectual property matters. The new policy will also improve the efficiency and effectiveness of the process.

VI. Uses of This Report

Recommendation

The Task Force recommends that the Vice President for Research form the committees necessary to transform these introductory recommendations into specific policies and procedures; each new policy will be brought to the University Faculty Senate as an advisory/consultative report.

Rationale

• The Task Force has not attempted in this report to develop the detailed policies, procedures, and programs needed to solve the critical problems mentioned above. Rather, the Task Force recommends a flexible organizational framework for the management of intellectual property, as well as the principles on which future detailed policies and procedures can be established by subsequent committees and updated to reflect the current environment. Because rapid change is likely to continue, the resulting policies and procedures must be adaptive and kept current and must include effective processes for keeping faculty, staff, and students updated on laws regarding intellectual property and their application to the academic setting.
• The existence of established procedures for keeping the University’s intellectual property policies and procedures current will benefit the faculty, staff, and students by providing information that will be recognized as reliable and up-to-date.
• The University will benefit by having in place a structure for continually updating the information it provides on intellectual property policies and procedures.

The Task Force notes that, while changes in the environment have caused it to rethink the University's posture concerning intellectual property, it views these changes much more as an opportunity than as a threat. The opportunity is associated with a vastly enhanced potential to address the fundamental goals described above through a restructuring of the intellectual property environment at Penn State. The threat is the potential loss of those benefits and the missed opportunity if Penn State simply continues with business as usual.

The Task Force stresses its overriding, crucial recommendation: the University must invest in these changes to preserve Penn State’s reputation as a leading research university.

Chapter I. Introduction: Intellectual Property and Penn State

Introduction

The University exists to create new knowledge, to preserve what is already known, and to pass on both new and established procedures to its students and to society at large. Regarding the creation and transfer of knowledge and ideas, intellectual property is transferred in a number of ways. Graduate students and undergraduates leave the University and take their knowledge and ideas to their employers. Faculty and staff transfer knowledge through publishing, teaching, attendance at conferences, professional networking, consulting, and outreach activities. Joint University-industry research projects also produce intellectual property. Legal mechanisms for protecting the intellectual property created include patents, licenses, copyrights, and trademarks. While most of these activities center on the knowledge and expertise of faculty members, they do not all involve intellectual property in a way where the University’s larger interests are at stake. However, in the process of creating and transferring knowledge, faculty sometimes create products that have value as intellectual property and should be protected, either through patents or copyright. The goal of the Intellectual Property Task Force has been to protect the interests of the faculty, staff, and students and the University in these cases.

Types of Intellectual Property

Intellectual property generated by the University primarily falls into two major categories, patents and copyrights. Patents protect inventions and discoveries (mainly in agriculture, medicine, the sciences, and engineering). Examples include specifications for inventions and devices, new chemicals and materials, new biological entities, and new technical processes. Copyrights protect "original works of authorship fixed in any tangible medium of expression" such as written works, audio and video programs, and technology-based instructional materials. Additionally, patented and copyrighted creations may also be protected through licenses and some through trademarks.

These two categories of intellectual property are quite distinct, with relatively little overlap historically, and they need to be considered and organized separately, while not ignoring points of overlap. Traditionally at Penn State, patents and licensing agreements have been the major focus of attention, and they will probably continue to remain so in the near future. However, there are significant developments occurring in copyright law in response to technological change that will affect how faculty and students create works and use the intellectual property of others. For these reasons, it is essential that the University further develop and strengthen programs in both these areas.

The Current State of Intellectual Property Issues

The Changing Environment

The information revolution and the international transition to an information-based economy have introduced a set of issues and opportunities that are redefining the nature of intellectual property and life within the university itself. The traditional values of open access to information and the faculty member’s right to use his or her own ideas are being reexamined. Faculty, staff, and students increasingly are becoming dependent upon electronic classrooms, computing, the Internet, software, and databases in generating new knowledge. The new provisions in the DMCA are changing the fundamental principles of access to, and use of, information.

Keeping current on the number of patent, copyright, software, and database initiatives before Congress and cases in the courts is a daunting challenge. The legal environment is changing rapidly. As an example, copyright and patent laws have become co-mingled to the point where it is possible for two separate entities to "own" the same intellectual property--one owns the copyright, and the other owns the patent. A landmark case in the Federal Circuit Court of Appeals in 1998 now has made it possible to apply for patents for "business methods," which will have a tremendous impact on how software embodying processes as well as copyrightable products is protected in the future, with major ramifications for the development of technology-based instructional materials. Patent law is undergoing change also in order for the U.S. to accommodate the different regulations in Europe and the Far East. New copyright legislation is being influenced heavily by the private sector as information takes on greater economic value. The University community needs to understand the changing legal scene regarding both patents and copyrights (see Appendices F and G as well as Supporting Materials available on the web).

Furthermore, the once distinct boundaries between universities and both private and public sector organizations are narrowing: these organizations are relying more on universities for fundamental technical developments while universities are relying more on such organizations to support their activities.

In addition, there is growing recognition at Penn State of the need to reengineer the way it concerns itself with intellectual property and to be more aggressive about transferring University-developed intellectual property to effective use for the good of society.

Conflict of Interest and Conflict of Commitment

These changes in the intellectual and legal environment have compelled faculty organizations and universities across the country to reexamine the principle of conflict of interest. For example, to what extent do faculty members who develop instructional materials using software (courseware) and sell them to other universities or to for-profit educational competitors find themselves entangled in conflict of interest and conflict of commitment issues? The Penn State community needs to be aware of the debates now taking place across the nation as software and the Internet raise new questions about the central issues of ownership and use (see Chapter V for more information on Conflict of Interest and Conflict of Commitment).

Benefits of Intellectual Property Utilization

Penn State and its constituency will benefit considerably through intellectual property generation and protection in the following ways:

• The protection of intellectual property through patents and copyrights is a major means for ensuring that inventions, writings, and educational materials are made available to the general public through agreements with the commercial sector as well as with the government. Items that are not protected are usually considered to be unworthy of investment, manufacture, or distribution.
• As a land-grant university, Penn State has an obligation to assist in improving the well-being of society through the dissemination of the products of its creative efforts. In these days of public skepticism about higher education, the demonstration that the University is playing a major role in this area is vitally important to the future of this institution.
• Intellectual property protection ensures that faculty, staff, students, and the University benefit from their creative efforts, rather than allowing those benefits to be exploited without cost by the commercial sector.
• The issuance of patents and the registration of copyrights for academic materials are viewed in many fields as evidence of faculty and student progress and productivity.
• The spin-off of start-up companies from universities is a modern phenomenon that promises to have a highly positive influence on both job creation and the funding of academic research and student training. Start-up companies that use Penn State intellectual property benefit the University through licensing fees and royalties, and frequently through significant financial gifts from the company founders to the University. The potential for spin-off companies to create jobs for Penn State graduates, faculty spouses/partners, and others in the community needs to be emphasized.

Principles and Goals

The Task Force developed a set of principles designed to balance the rights and responsibilities of all parties involved in the creation, use, and commercialization of intellectual property.

Penn State’s intellectual property organizational structure, policies, and procedures should:

• support the land-grant university mission through its dedication to teaching, research, and service
• recognize the importance of the University’s stewardship of intellectual assets while protecting the rights and interests of faculty, staff, and students
• enhance the ability of the University to attract and retain the very best faculty, staff , and students
• achieve and maintain an appropriate balance in the sharing of ownership and revenues among the faculty, staff, students, and the University
• recognize and honor the financial, fiduciary, and ethical obligations of the University
• enhance the contribution of the University to regional, state, and national economic development

This report makes a series of recommendations concerning intellectual property management at Penn State that are designed to achieve the following goals:

• bring the benefits of Penn State research and scholarship to society
• make Penn State a more stimulating and attractive place for faculty and students
• generate additional resources to support Penn State’s mission to create and disseminate knowledge and to achieve the preceding two goals.

The Task Force strongly emphasizes that Penn State must invest in these changes to preserve the University’s reputation as a major research university.

Critical Areas That Need Improvement

The Task Force has identified the following critical areas that must be improved.

Investment

• Penn State invests far too little in managing its intellectual property, in transferring its creative accomplishments to the commercial sector, or in protecting inventions created within its own community. As a result, the University’s technology transfer capabilities are not sufficiently robust to capitalize effectively on the many promising opportunities that are emerging from its research programs and other scholarly activities.

Structure

• Penn State has a cumbersome, overlapping organizational intellectual property structure with poorly defined areas of authority and responsibility. It needs to reassess its organizational structure for the transfer of its intellectual property to the public, governmental, and commercial sectors. This is particularly evident in the seemingly parallel but sometimes confusing missions of PSRF and the University offices that are conceversity and its faculty, staff, and students are losing valuable intellectual property rights because the University has neither the resources nor the organizational structure to respond quickly and appropriately in this rapidly changing arena. Many of the basic educational materials developed by faculty are not being adequately protected by either copyrights or patents with the consequent loss of benefit to both the faculty and the University.

Education

• Very few faculty, staff, and students are fully aware of their rights or their responsibilities regarding intellectual property. Many faculty mistakenly think that intellectual property management conflicts with the free dissemination of information. The Task Force was advised that some department heads have discouraged faculty from becoming involved with intellectual property matters. The University cannot provide the greatest benefit to itself and to the Commonwealth if its faculty, staff, and students in some areas believe that an involvement with patenting or copyrighting their work may compromise their careers.

Successful intellectual property policies and procedures will:

• Establish a balance between the rights and obligations of the University and those of the faculty, staff, and students concerning intellectual property. Penn State must carefully delineate the intellectual property rights and responsibilities of Penn State faculty, staff, and students relevant to the University, so that individuals can enjoy the rewards and recognition they have earned while providing the University its appropriate share of those benefits.
• Reaffirm the University’s rights and responsibilities concerning patents and inventions that result from a use of University resources. Since the University provides employment status, laboratory space, and educational and research support for its faculty, staff, and students, it should share the benefits.
• Reaffirm faculty ownership of works of scholarship. While issues surrounding the meaning and protection of copyrights are being dramatically affected by the digital revolution, the University should reaffirm its policy that scholarly and creative works are generally the property of the author.
• Provide a significantly larger investment in personnel and resources for the support of intellectual property administration. In the increasingly competitive world of intellectual property, Penn State must make the investments necessary to remain a leading research university. It is imperative that the University invest more of its personnel and financial resources to support a more proactive and aggressive approach to the management and commercialization of its intellectual property. Increased support will bring added value to the overall educational and research environment of the University and will avoid the unplanned loss of ownership of intellectual property on the part of the University and its faculty, staff, and students.
• Establish an efficient and centralized administration for intellectual property University-wide. The Office of the Vice President for Research should have overall responsibility for administering and coordinating all aspects of the University’s intellectual property policies and procedures including patents, copyrights, and trademarks.

In regard to administrative restructuring, the following specific changes should be made:

• The Vice President for Research should appoint an Intellectual Property Policies and Procedures Advisory Committee to provide ongoing review and advice regarding the University’s intellectual property/technology transfer policies and procedures.
• The University Faculty Senate Committee on Research should establish a Subcommittee on Intellectual Property. Such a subcommittee will bring increased emphasis and focus on intellectual property matters to enable the Senate to play a more proactive role as liaison between the faculty and administration on all aspects of intellectual property policies and procedures.
• PSRF should be charged with the responsibility of being Penn State’s primary organization that disseminates intellectual property to the public. Penn State must be more aggressive and proactive in the management and commercialization of its intellectual property. PSRF should serve as an entity "outside" the University to facilitate, support, and enhance all aspects of the University’s intellectual property management process.
• The Vice President for Research should establish and maintain a comprehensive educational process for informing faculty, staff, and students on intellectual property policies and procedures and the opportunities and resources available to them to help protect and commercialize intellectual property.

Chapter II. Patents, Licensing, and the Penn State Research Foundation (PSRF)

Recommendations for Patents and Licensing

1. The University has a fundamental ownership in the value of the intellectual property generated along with a responsibility to facilitate its transfer to society. Since the University provides the place of employment for faculty and staff, the learning environment for students, and the infrastructure for the creation of intellectual property, Penn State intellectual property policies should apply to all faculty, staff, and students (graduate and undergraduate).

Ownership issues should be decided early in the process of creating intellectual property to help ensure the appropriate use of intellectual property and to protect individuals and the University.

2. The University should develop a policy concerning the benefits and responsibilities of Penn State students and those of non-Penn State students as to ownership of patents and copyrights obtained through collaborative research.
3. University policy should provide an opportunity for inventors to request the transfer of patent rights if the University does not commit to filing a regular patent application within six months of either (1) the date of submission of an invention disclosure, or (2) the date of filing a provisional application, or (3) the date of such a filing, whichever is later, except where the sponsor’s policies may require otherwise. When patent rights are transferred to the inventors, the University should retain X percent interest in the invention in order to reflect its XXX and to facilitate tracking the commercial success of the invention.
4. To protect the creator(s), inventions worthy of protection should be disclosed to the University by the creator(s) as soon as possible, including inventions believed to be unrelated to his/her field or discipline and/or not involving University support.
5. Rights to inventions and works arising from industrially sponsored research should be prescribed in a research contract containing a work statement and other negotiable terms and conditions of the award before the research is begun.
6. The University should establish criteria for accepting future donations of patents.

Recommendations for PSRF

7. The University should review the mission and structure of PSRF and revise them as necessary to reflect the goals and recommendations of this report. The mission of PSRF should be redirected to emphasize the generation of funding to assist the marketing of intellectual property and the start-up of new companies from the University.
8. PSRF should play a key role in the conversion of the University’s basic and applied research activities into commercialization initiatives; however, it should remain a separate organizational entity.
9. The Vice President for Research should establish guidelines for the distribution of revenues received from PSRF including a distribution policy and incentive award to be given to inventor(s) if and when the Foundation applies for a patent based on the inventor(s) disclosure that can be modified by the Vice President for Research.

Central to the relationship between faculty, staff, and students, and the University administration is the question of the ownership of intellectual property and how it is administered. These issues are discussed in the following sections.

A. Patents and Licensing

Faculty, Staff, and Students

Importance of Faculty, Staff, and Student Involvement. A broader base of intellectual property involvement within the University is needed to foster the clear objectives of having more intellectual property participation by the University community. Having the authors and creators take an active role in improving the quality of disclosures will lead to a better and less expensive patent and/or copyright product. The ultimate success with commercialization, notwithstanding the utilization of highly skilled professionals, may well depend on the inventors’ knowledge and relationship with business and industry.

University Intellectual Property Policy. All University personnel, including graduate and undergraduate students, should be subject to the Penn State intellectual property policies and procedures. A copy of the policy and procedures should be given to all personnel (faculty and staff) when first employed by the University, and to students when first admitted to the University. All University employees should be required to sign the Penn State Intellectual Property Agreement form as a condition of their employment.

Intellectual Property Ownership. Subject to the specific provisions of a University/sponsor ownership agreement established before any research has commenced, the University should own all inventions conceived and/or reduced to practice by University personnel using University facilities. Likewise, inventions conceived and/or reduced to practice within a field or discipline in which the University provides substantial support to the inventor are also the property of the University. Thus, to ensure appropriate use of intellectual property and to protect individuals and the University, ownership issues should be decided early in the process of creating potential intellectual property.

In the event that ownership questions arise, it is expected that the faculty member, the department head or director, and the dean or administrative officer of the academic unit should decide these matters with advice from the appropriate intellectual property administrator. Similarly, for staff, the individual, the immediate supervisor, and the administrator of that University office should make the necessary decisions. If mediation is necessary, the Assistant Vice President for Research and Director of Technology Transfer should be considered as the mediator. The final line of appeal will be the Vice President for Research.

Students have different roles in the Penn State community. A means of characterizing the various roles that students can play is necessary to evaluate the responsibility or reward a student can expect for participation in a given situation. However, faculty should be careful to give students proper recognition for their participation in creating any form of intellectual property including authorship as well as a significant role in creation of works or inventions. In those cases where students have played a significant role, they should also be recognized in terms of real or potential compensation. In an era of collaboration and teamwork, it is important to ensure that all members of a team who participate in the creation of intellectual property are recognized appropriately. In situations where non-Penn State students participate in Penn State research teams, their role should be clearly documented at the beginning of their participation.

Transfer of Patent Rights to Inventors. The University should allow inventors to claim full patent rights if the University does not file a regular patent application within six months of either (1) the date of submission of an invention disclosure, or (2) the date of filing a provisional application, or (3) the date of such a filing, whichever is later, except where the sponsor’s policies may require otherwise.

Importance of Timely Intellectual Property Disclosure. All inventions made within the University environment and deemed worthy of protection should be disclosed within the University system by the creator(s) as soon as possible, even those believed by the creator(s) to be unrelated to their field or discipline or those that do not involve University support.

Faculty and staff who believe they may have developed an invention should immediately notify their department head, administrative supervisor, or college/unit representative and complete a disclosure form that defines the nature of, and provides the basis for, a legal claim to the invention or work in question.

The commercial exploitation of inventions is a highly competitive enterprise; therefore, it is crucial that creators begin the university’s disclosure process as soon as the possibility of an invention becomes evident. Delays give others an opportunity to establish claims that may deprive the original inventor(s) of their rightful recognition and compensation. Some other considerations follow:

• In general, it is prudent to delay the oral disclosure or publication of research details that are specific to an invention until such time as the invention has been evaluated and, as appropriate, protected.
• Public disclosure of a concept in the open literature (abstracts, meeting presentations, theses, etc.) generally precludes obtaining patent protection in most foreign countries. In the U.S., it is possible to obtain a patent as long as the claim is filed within one year of the date of public disclosure. The impact of waiving the foreign rights for an invention depends on various factors, including the sizes of the U.S. and foreign markets, and the relative market shares of foreign and domestic companies with respect to the technology in question.
• Faculty, staff, and students should refrain from any act that would compromise their rights or the University’s rights in any intellectual property matters. They must maintain the confidentiality of each invention consistent with the University’s decisions regarding the protection desired. Unauthorized divulgence can cause severe economic losses for the individual inventor, the inventor’s college/unit, and the University.
• Proper confidential recording of research data and information may be vital to the protection of inventions. All University faculty, staff, and students should be required to follow established standards for documenting and retaining research records that are accurately dated. These records belong to the University.

However, it is emphasized that the implementation of these recommendations will require significant additional resources. Currently, the Intellectual Property Office does not have adequate funds to patent all the worthwhile inventions produced at this time that require protection (see Appendix B: Benchmarking).

Industrially Sponsored Research

Rights to inventions and works arising from industrially sponsored research should be prescribed in a research contract containing a work statement and other terms and conditions of the award.

Non-government sponsors should generally receive the first option of a license to technology resulting from research that they supported. The University, as the contractor for the specified research, must ensure that it does not commit rights to technologies to multiple sponsors.

Gifts of Intellectual Property to the University

In recent years, several companies have donated patent portfolios to the University. Although such donations could be a source of new revenue for the University, they may also require the investment of limited resources for patent maintenance or may dilute the institutional focus on the licensing of University-generated technology. For these reasons, future donations of intellectual property should be accepted only when the following conditions apply: (1) at least one faculty member in the University has the interest and the appropriate technical expertise to assist in the further development or marketing of the technology; (2) the donation includes sufficient resources to maintain the patent portfolio as within federal IRS rulings; and (3) the University can, at its option, assign the donated portfolios for licensing to an independent licensing agent.

Summary of Issues That Need To Be Resolved

• A multiplicity of intellectual property offices and procedures with overlapping and seemingly contradictory responsibilities confuse those seeking information or advice
• A need for more funding to protect the University’s intellectual property through patents – a factor that currently places severe limits on what can be accomplished
• A staffing level that is insufficient to meet the increased workloads or provide needed levels of expertise and therefore cannot meet the growing demand for advice and/or assistance
• A need to be proactive and to respond in a more timely manner to changing external conditions
• A need to provide a supportive environment in which faculty, staff, and students are encouraged to create, protect, and commercialize new intellectual property
• A need to resolve the intellectual property responsibilities of students who are not supported through research grants or who have made inventions without significant faculty or staff input
• A need for an appropriate arms-length legal status between the University’s non-profit status and for-profit technology transfer activities
• A need to emphasize that the success of the University’s intellectual property/technology transfer activities should not be limited to financial measures (e.g., licensing revenues, royalty income, etc.) but rather should focus primarily on providing outstanding service to University inventors to protect, develop, and commercialize intellectual property so that new and improved products can be made available to the public in a timely way
• A need to invest institutional revenues, in excess of expenses, derived from intellectual property in research and research training at the University, with special consideration given to those programs that have made the greatest contributions to the University’s intellectual property activities.

B. PSRF

Historical Mission. PSRF is a wholly owned subsidiary, 501(c)(3), of The Corporation for Penn State. The Foundation is a non-profit organization dedicated to fostering and advancing scientific research within the Commonwealth of Pennsylvania and to supporting the development of inventions at Penn State. The Foundation provides for those functions that require legal separation from the University proper, to prevent or mitigate real or perceived conflicts of interest. A Board of Directors oversees PSRF’s activities.

PSRF has played a vital role in Penn State becoming a major research university with extensive research and development support from government and industry sponsors. There is great opportunity for PSRF to continue to be instrumental in enabling the University to commercialize intellectual property for the good of the public and the University. However, in view of the rapidly changing nature of intellectual property utilization, and especially the imperative for the spin-off of start-up companies from the University, PSRF’s mission and structure should be reviewed and revised as necessary to reflect this report’s goals and recommendations.

Future Mission. PSRF should play a key role in the conversion of the University’s basic research activities and applied research into commercialization initiatives. However, there are compelling reasons to do so as a separate organizational entity. Penn State must carefully consider issues of potential institutional liability and its fiduciary responsibilities. It needs to avoid or reduce conflicts of interest and conflict of commitment inherent in the differences between academic and corporate missions. Also, there are fundamental differences in taxation requirements for non-profit educational institutions versus for-profit companies. In addition, it is essential for the University to avoid the appearance that tuition revenues might be used to underwrite commercial ventures.

PSRF should serve as an "outside of the University" independent entity to facilitate, support, and enhance all aspects of the University’s intellectual property policies and procedures. PSRF’s Board of Directors should continue to be predominantly non-University employees.

The Foundation should:

• Address all aspects of commercialization (marketing, negotiation, and licensing),
including a full marketing evaluation and campaign, identification of potential licensees, negotiation and issuance of licenses, and tracking of the conditions established by the license agreement.
• Manage all funds received by the Foundation including revenues.
• Supervise all aspects of the royalty process including receipt and distribution of royalties.
• Play a major role in the establishment and development of start-up companies that are based on Penn State intellectual property. This should include the solicitation of funds from individual donors and investors and from the government and foundations in order to provide initial financing for start-up companies. This is considered to be a route through which PSRF can play a vital role (perhaps the major role) in the utilization of intellectual property for the University and its community.

Judgments and Actions that are the Responsibility of PSRF. As approved by the Board of Trustees, the Vice President for Research should establish guidelines for the distribution of revenues received from PSRF. Net proceeds should be divided among the creator(s), the creator(s)’ administrative unit, and PSRF. In general, the present distribution of royalties, in which 40 percent goes to the inventors, 20 percent to the college or organizational unit, and 40 percent to PSRF, is considered to be a satisfactory arrangement. The following factors should be considered in determining what percentage the creator(s) and the administrative unit(s) will receive, if cases fall outside existing policies as determined by the Vice President for Research:

• Was the invention pioneering, or was it more an extension of department activities to which many others contributed?

If there are multiple creators, the designated royalty percentage should be divided equally among the creators unless the creators reach a different agreement.

To what extent did the creator(s) assist in marketing the intellectual property rights?

• With respect to the percentage to be awarded to the administrative unit (i.e., college/unit, department, etc.) in which the work was carried out, consideration should be given to the extent to which that unit has supported both the specific invention and other intellectual property initiatives.
• Reasonable out-of-pocket patent costs should be recovered from royalty payments before any remaining revenues are distributed under the terms of the University Patent Policy.

Inventor Incentive Awards. PSRF should continue to provide an incentive award of $1,000 to be given to an inventor if and when the Foundation applies for a patent based on the inventor’s disclosure. If there are multiple inventors, the incentive should be divided between the inventors. An equal distribution between all of the inventors should be the preferred policy in order to recognize the contribution of students and postdocs as well as faculty to the invention. The incentive award is not part of any royalty distribution, but a separate amount given by the Foundation to promote the creation of intellectual property.

Although the original mission of PSRF was connected with the patenting of University inventions and the distribution of royalties, it is recommended that this mission should be changed to focus also on start-up companies as will be discussed in the following chapter.

Chapter III. Start-up Companies

Recommendations

1. The University administration should strongly encourage and support the spin-off from the University of new companies that will commercialize Penn State’s inventions for the benefit of the general public. New business development should be encouraged as an important intellectual outlet for faculty, staff, and students. University intellectual property policies should promote, foster, and support a business-sensitive environment as part of its mission to disseminate knowledge through the integration of teaching, research, and service.

Advantages to Penn State. There are clear advantages to Penn State for encouraging the start-up of companies that utilize the intellectual property generated through the creativity of our faculty, staff, and students. Indeed, a willingness to invest time and resources to foster this activity is a characteristic of the best research universities in the country. Universities that successfully utilize their intellectual property in this way can look forward to demonstrating their commitment to bring the benefits of academic research to society at large, at the same time ensuring a source of revenue to support the educational mission of the institution. Creating new businesses is one way of transferring knowledge to the public in a timely and efficient manner that makes it possible for Penn State to help integrate the University’s intellectual property into the marketplace.

New business development is an important part of the overall development activity of the University. History indicates that successful start-up companies develop a special loyalty to the University and find ways to share their success. New businesses hire students and faculty spouses/partners, use faculty as consultants, enrich the University’s environment, and bring real-world perspectives to teaching and research programs. They also give gifts, grants, and endowed professorships to support University development activities. For all these reasons, new business development should be encouraged as an important intellectual property outlet for faculty, staff, and students.

How Can This Be Accomplished? The University must do far more in promoting start-up companies than simply encouraging faculty, staff, or graduates of the University to become entrepreneurs. The University must become involved at several different levels including those of the Intellectual Property Office, the Penn State Research Park, the Industrial Research Office, and especially PSRF. Alumni of the University should be encouraged to take an interest in the start-up program with respect to both advice and possible investment. The various offices under the direction of the Vice President for Research should play a major role in this activity by providing advice, encouragement, and introductions to sources of funding, both private and public.

The same principles and goals that pertain to other University intellectual property issues and opportunities should guide the development of new businesses. For example, inventors should receive the same share of any royalties irrespective of whether their invention is licensed to an independent company or to a new start-up company in which they have some proprietary interest. University evaluation and financing of new businesses should be market-driven. Although start-up companies emanating from Penn State technology should be financed by the private sector, the University should consider taking some equity in lieu of cash payments through licensing agreements with start-up companies.

The Role of PSRF. Because of its legal separation from the University, PSRF has the capability to become much more directly involved in the start-up process than any other component of The Corporation for Penn State. PSRF should be encouraged to do more in the future than has been done in the past, especially with respect to generating financing for new enterprises.

If PSRF establishes a fund to assist start-ups, it should be managed by individuals who are qualified to make business decisions on the viability of new start-ups. The evaluation and funding of new companies are difficult challenges and require a great deal of analysis. PSRF needs to utilize members or advisors who are familiar with the procedures and problems of start-ups and the development of commercial corporations. This is to help ensure that PSRF funds are invested in business opportunities with the best payoff potential.

Educational Component. The educational component of spin-off company formation is an important and often overlooked aspect. Graduate students and interns in business, law, science, and engineering are often eager to learn the basics of start-up company formation. Examples exist of team projects being organized in which graduate students in the different fields work together to conduct market surveys and to help write a business plan for a new company. Such experience is invaluable for the students and provides preliminary materials that helps decision making by the University and the entrepreneurs. Thus, University intellectual property policies should promote, foster, and support a business-sensitive environment as part of its mission to disseminate knowledge through the integration of teaching, research, and service.

Chapter IV. Copyright and Licensing of Software and Databases

Recommendations

1. The University should reaffirm the policy that a faculty member owns his or her works of scholarship including research monographs, journal articles, novels, plays, musical compositions, and textbooks.
2. The University should postpone the adoption of new policies concerning the copyright and licensing of software and databases until Congress has acted on these matters.
3. A mechanism must be put in place to monitor intellectual property legislation on a continuing basis and to keep University policies and procedures updated accordingly since intellectual property legislation is undergoing rapid change that will continue for some time.
4. The University must devise a strategy for the "fair use" of copyrighted materials owned by third parties. This strategy must consider relevant guidelines and the needs of the University.
5. The University should provide policy guidance and assistance to individuals as they negotiate rights in relationships with third parties.

Explanation erm "copyright" refers to federal legal protection for many forms of "expression" (as contrasted with facts or ideas, which cannot be protected by copyright). Because so many changes in regard to copyright law have occurred in recent years, the University needs to review and update its copyright policies and procedures. In order to do so, the University must look at what changes have occurred and what factors it must take into account as it adopts new policies.

The term "licensing" refers to another form of legal protection based on contract law. Licensing is becoming increasingly employed as an alternative to copyright law as a means for controlling how copyrighted works are used in an electronic environment.

Review of Recent Changes

The Copyright Act of 1976 established the fundamental legal framework for all matters concerning copyright today, and it provided the basis on which the University grounded its 1982 Copyright Handbook. Since then, the following changes have occurred.
Congress has passed new laws affecting three important areas:

• kinds of works subject to copyright
• scope of the protection to be provided by copyright
• duration of that protection

The courts have made key decisions on a wide variety of issues including:

• fair use
• protection of databases
• sovereign immunity of states under the Eleventh Amendment (which provides protection to state agencies, including universities, against infringement of all kinds of intellectual property)
• interpretation of what is "work made for hire" (defined in copyright law as the relationship between an employer and employee or independent contractor)
• shrink-wrap licenses (works wrapped in plastic where the plastic wrapping protects the product and prevents scrutiny and the act of opening the plastic wrap serves as the opener’s agreement to abide by all conditions contained within the wrapper)

The Digital Millennium Copyright Act of 1998 (DMCA) defined a new legal regime for worldwide digital communications. It established that online-service-providers (OSPs) could be held liable for infringement of digital works under certain circumstances. It also required that all universities seeking protection from liability as OSPs must establish educational programs about copyright for faculty, staff, and students (see Appendix G: Copyright Law).

Other changes include:

• paradigm shift in information delivery systems
• ongoing struggle, in the face of this shift, to maintain a balance between the rights of copyright owners and the interests of users
• challenge, with increased resort to licensing, of maintaining the free flow of information to support the creation of new knowledge
• increased importance of proper stewardship of intellectual property

Ownership and Use
Copyright laws and licensing apply to universities in the areas of ownership and the use of copyrighted works.
Ownership. The issue of ownership is affected by seven considerations: collective enterprise, prevailing academic practice, value added by the University, special circumstances, control, flexibility, and early disclosure.

Collective Enterprise. In the wake of the passage of the DMCA, the Association of American Universities (AAU) and the American Association of University Professors (AAUP) have independently arrived at a middle ground in which both organizations emphasize scholarly work as a "collective enterprise." A collective enterprise is one whose products are owned in some way or other and in varying degrees by both the university and the faculty member or members involved. As the CSU/SUNY/CUNY guide on ownership in higher education says, "An academic environment that best advances knowledge will view copyright ownership as a set of opportunities that may be shared within the university community rather than an ‘all-or’nothing’ property concept. To optimize the availability of new works for teaching and scholarship, copyright should not be viewed as a simplistic claim of title, but should instead be understood as a divisible bundle of rights that may be allocated among different parties to provide maximum opportunities for sharing and learning."

Prevailing Academic Practice. AAUP notes that "it has been the prevailing academic practice to treat the faculty member as the copyright owner of works that are created independently and at the faculty member’s own initiative for traditional academic purposes." These include lectures and other types of instructional material, which some universities (including Penn State at an earlier time) have attempted to define as falling within "the scope of employment" (thus making them, by definition, owned by the University as legal "author"). The courts have generally held that lectures and other types of intellectual materials are owned by the teachers who create them, in part owing to the tradition of "academic freedom."
Value Added by the University. In contributing "specialized services and facilities" to support the production of copyrighted works, as the AAUP recognizes, the university may be seen as adding value to the products of individual creators in special circumstances such that the "University may fairly claim ownership of, or an interest in, copyright in works created by faculty (or staff) members."

Special Circumstances. There are three such special circumstances:

• special works created in circumstances that may properly be described as "made for hire"
• negotiated contractual transfers
• "joint works" described in the 1976 Copyright Act as the product of multi-author teams

Control. The degree of control exercised by the university in the creation of any copyrighted work is important to determining what rights the university and the owner may claim. The CSU/SUNY/CUNY guide says: "This continuum includes the degree to which the university provided direct and detailed specifications to the content and form of expression, the extent to which the university specified and controlled the time, place, and manner of creation…, and whether the university exercised ultimate authority over the final acceptance of, or required corrections to, the final copyrighted work."

Flexibility The principle of flexibility acknowledges the widely different roles played by the university and the faculty in various situations, and it recognizes that the rapid evolution in technology continually creates new, unforeseen, and unforeseeable circumstances that directly impact rights. Because of the rapidity of change and the resultant unpredictability, no single principle of law can clearly allocate copyright ownership interests in all cases. In some instances, the legal rules may warrant one or more of three separate conclusions concerning the ownership of copyright: namely, the university:

• has an implied royalty-free "license to use" the copyrighted work
• should be compensated with royalties commensurate with its investment
• is a "joint author"

Early Disclosure. Early disclosure refers to the process in which an author who believes that he or she has a work that can be copyrighted and that involves "value added" by the university informs the university and so initiates the discussion of their respective rights and responsibilities. Early disclosure allows the university and the faculty member(s) to:

• work out appropriate arrangements for shared ownership, where applicable
• devise principles for dividing revenues equitably
• anticipate possible conflicts of interest and conflicts of commitment
• negotiate joint ventures with for-profit companies

Use of Copyrighted and Licensed Works. In addition to those seven factors concerning ownership, the University is also affected by considerations regarding the use of copyrighted materials. The principal issues in this regard are (1) "fair use" and (2) the relationship of copyright law to contract law governing licenses.

• The concept of "fair use" refers to circumstances that excuse what would otherwise be considered illegal uses (infringement) of protected forms of expression
• "Copyright law" refers to federal statutory laws protecting forms of expression
• "Contract law governing licenses" refers to state laws concerning the formation and enforcement of contracts to buy or sell protected forms of expression and to restrict the contracting parties’ collateral activities
• "Database" refers to a collection of information that may be protected under copyright as a collection even if all or some of the constituent parts are in the "public domain"

Fair Use. The Conference on Fair Use (CONFU), 1994-96, sought to develop guidelines for (1) digital images, (2) distance learning, (3) educational multimedia, (4) electronic reserve systems, (5) interlibrary loan and document delivery, and (6) the use of computer software in the libraries. The conference reached such limited agreement that it proposed no new legislation to Congress. Despite the inability of CONFU to produce widespread agreement on new guidelines, the University must devise at least temporary policies for handling issues of "fair use" that arise in practice everyday on campus. Educating faculty, staff, and students about what "fair use" means and how to apply the four factors provided by the statute is the primary need. The University may also want to draw upon the work already done on various guidelines to draft its own guidelines for internal use in advising faculty, staff, and students in situations where use of third-party copyrighted material is involved.

The University’s Intellectual Property Office must be positioned to advise faculty on copyright, licensing, and fair use issues much more aggressively than it has in the past.

Contract Law. Attempts to revise the Uniform Commercial Code have led to intense but inconclusive debates about how copyright law relates to contract law. Again, no resolution of the conflict has resulted, although a revision of the UCC relating to electronic transactions (called the Uniform Computer Information Transactions Act) is now under review in state legislatures, with some legislatures having already passed it. Whatever the ultimate resolution of the conflict between contract and copyright law may prove to be, the University needs to take steps to forestall further harm created by some licensing agreements into which members of the University community may enter. Because of inattention to the consequences of certain kinds of copyright transfers through licensing, which result in extra expenses for the University, the University has an interest in making sure that all members of the University community are educated about these consequences so that individuals may more knowledgeably engage in negotiating the details of such transfers.

Databases, Software, and Educational Programs

The fluidity of the issues surrounding databases, software, and the administration of copyright is so great and unpredictable that these areas will require further investigation. The proposed Advisory Committee on Intellectual Property Policies and Procedures (see Chapter VI , Recommendation 5) should keep track of congressional legislation, court decisions, and other pertinent developments. The Vice President for Research will have overall responsibility for administering and coordinating all policies and procedures affecting the copyright of databases and software.

Databases. Copyright issues surrounding databases are currently in the federal legislative process. The Task Force recommends that the University take no new action on database copyright policy until the legislative process has reached completion, at which time it will be appropriate for the University to consider the development of a policy.

Software. The proposed copyright policy concerning courseware includes new instructional software applications. The Task Force believes that a policy must also be developed to guide copyright of non-instructional software applications. Some of the principles that underlie the courseware copyright policy will also be applicable to non-instructional software. However, additional study of this issue is needed.

Educational Programs. The DMCA requires that the University be registered as an Intellectual Property Office (IPO) and put in place an educational program concerning copyright for all faculty, staff, and students. See Chapter VI for the report’s recommendation concerning educational programs (see Chapter VI, Recommendation 7).

Faculty Ownership of Copyright Materials

The University should reaffirm the policy that a faculty member owns his or her works of scholarship including research monographs, journal articles, novels, plays, musical compositions, and textbooks.

1. Penn State faculty members are encouraged to create scholarly and creative works, including research monographs, journal articles, novels, plays, musical compositions, and textbooks. Traditionally, such works are considered to be the property of the author. The Task Force agrees that this should be the case.
2. The University generally makes no claim to any copyright ownership of such works or of works like the following:
   textbooks, software applications, and other instructional materials developed by a faculty member beyond the scope of employment at Penn State
• syllabi and class notes
• simple web pages developed in support of a classroom course
• slides and computer-based graphics that support classroom lectures but that are not integrated into a formal courseware package
• occasional recordings of classroom lectures or related materials that are not designed to be used repeatedly across semesters or course offerings
• faculty-copyrighted articles posted on a web site for occasional use within a course
• faculty-owned resource materials and ideas used in the development of courseware
• enhancements that individual course instructors make to their courses without significant new investment by the University
• sponsored works for which contract provisions take precedence

3. The University makes no claim to copyright ownership when an author initiates the creation of materials used in courses at Penn State as part of regular teaching responsibilities and makes no formal request for support from the University in creating these materials.

Chapter V. Courseware, Conflict of Interest, and Class Notes
Recommendations Regarding Courseware

1. The University must take action to implement this report’s recommended policy on courseware.

2. The term "courseware" refers to technology-based instructional materials, including software applications that are intended for use in credit and non-credit courses. The Task Force recommends that faculty, staff, or students who wish to sell courseware to an educational competitor of Penn State must first secure appropriate approval. Approval will require an affirmative answer to two questions: (1) Does the sale conform to the University’s policies concerning conflict of interest and conflict of commitment? (2) Is the courseware owned entirely by the faculty or staff member?

1. The University should adopt separate policies and procedures for each of the three categories of courseware: faculty-owned, collaborative, and commissioned.

Recommendations Regarding Conflict of Interest and Conflict of Commitment

2. Faculty may not provide on-line academic services to a potential competitor of Penn State. The department head and dean may make recommendations for exceptions to the Vice President for Research.
3. Faculty considering the sale of courseware to an educational competitor of Penn State should consult with their department head and dean. Approval by the Vice President for Research is required before a faculty member may enter into such a contractual agreement consistent with the principles concerning shared ownership and joint responsibilities outlined in this report. The approval of the Vice President for Research is required before a faculty member may sell courseware created for a Penn State course to another university.
4. While the University encourages its faculty to consult, individual faculty members have the responsibility to make themselves aware of the University’s policies and procedures concerning intellectual property as well as those concerning conflict of interest and conflict of commitment and to ensure that their consulting arrangements are not in conflict with those policies.
5. The University is responsible for making all Penn State intellectual property policies and procedures readily available to the faculty.

8. The Vice President for Research should direct the Advisory Committee on Intellectual Property Policies and Procedures to (1) monitor changes in the issues surrounding conflict of interest and (2) keep the university community informed.

Recommendation Regarding Class Notes

9. The Vice President for Research should direct the Advisory Committee on Intellectual Property and Procedures to examine and revise the current University policy on class notes.

Introduction

Courseware policy is based on three considerations: the definition of courseware, conflict of interest and conflict of commitment, and ownership.

The creation of instructional materials employing computer-based technologies raises special challenges and problems for ownership and use of copyrighted works, which have provided the impetus for the Task Force’s attempt to devise a new policy for dealing with them. Even when the University makes no claim to ownership in such instructional materials, there are important issues to resolve involving conflict of commitment and conflict of interest. The proliferation of commercial print and Web-based services for creating and distributing class notes, as derivative from instructional materials, deserves attention for the special conflicts it can produce. This chapter makes a preliminary effort to address all of these concerns.

A. The Copyright of Technology-Based Instructional Materials (Courseware)

This policy deals with technology-based instructional materials, including software applications (collectively referred to as "courseware") that are intended for use in credit and non-credit courses. Courseware covered by this policy includes but is not limited to instructional materials formatted for distribution through audio-visual recordings, graphics materials (including slides and computer-generated materials), computer-based materials served from University computer databases or servers, CD-ROMS, printed materials, or other technologies that may be adopted by the University.

The intent of this policy is to protect courses approved by the Faculty Senate that are thereby under the supervision and control of the University.

The policy defines the intellectual property rights associated with the creation of courseware. Such definitions will protect the legal interests of the University and those of faculty, staff, and student courseware authors. University ownership applies only to the fixed presentation, not to the underlying ideas and knowledge of the author(s).

The production and distribution of knowledge in higher education, for both teaching and research, constitute a collective enterprise in which the common good is best served by mutual understanding and cooperation. The rapid changes in the technologies used by higher education require the University to establish equitable arrangements concerning the ownership of copyright in creations facilitated by these technologies, in order to protect its investment and to avoid conflicts of commitment. The best approach for reaching such accommodation of mutual interests is one in which the University administration and individual faculty authors engage in discussion at the very earliest stages of a new project involving "value added" by the University and reach agreement in writing on what responsibilities and rewards are best allocated to each party. Ultimately, who owns the copyright in a work produced in a University setting is less important than an appropriate distribution of rights and responsibilities that best serves the mutual interests of all concerned in advancing the production and dissemination of knowledge.

As stated above in the chapter on copyright, Penn State faculty members are encouraged to produce scholarly and creative works, including research monographs, journal articles, novels, plays, musical compositions, and textbooks. Traditionally, such works are considered to be the property of the author. The University agrees that this should be the case.

The University makes no claim to any copyright ownership of such works or of works cited in the preceding chapter.

Policy

The University may claim rights to instructional materials created specifically for Penn State instruction under certain circumstances. This policy applies to all members of the University community who are involved in creating courseware. There will be variations in how the policy applies, depending on the specific role of the author at the time the work is created. That role must be carefully defined at the beginning of a courseware development project. In what follows, "faculty member" is meant to include faculty, staff, and students (e.g., graduate students as teaching assistants) to the extent that they are engaged in instructional activities.

B. Courseware, Conflict of Interest, and Conflict of Commitment

Current Policy (Policy HR91Conflict of Interest):

Faculty and staff members of the University shall exercise the utmost good faith in all transactions touching upon their duties to the University and its property. In their dealings with and on behalf of the University, they shall be held in strict rule of honest and fair dealings between themselves and the University. They shall not use their positions, or knowledge gained therefrom, in such a way that a conflict of interest might arise between the interest of the University and that of the individual. Faculty and staff members shall disclose to the administrative head of the college or other unit in which they are employed, or other appropriate administrative officer, any potential conflict of interest of which they are aware before a contract or transactions is consummated.

The first responsibility for the adherence to this policy lies with the faculty or staff member(s) directly involved. If there is reason to believe that this policy is not being adhered to, the matter should be reported to the faculty or staff member’s administrative head for investigation and resolution. If the matter cannot be resolved at that level, it should be referred to the next higher administrative level for resolution.

Policy HR80 Private Consulting Practice outlines the conditions governing private consulting by individuals classified as full-time academic or academic administrator. For an outside activity to be considered legitimate private consulting, this activity must be in the faculty member’s field and be of a professional nature:

A faculty member is expected to perform his or her University duties in the most effective manner of which he or she is capable. The faculty member’s first duty and first responsibility is to the University. Outside service should not be undertaken, whether with or without pay, that might interfere with the discharge of this paramount obligation.

A member of the faculty may engage in a limited amount of private consulting within the parameters established in Policy RA12, with the understanding that this privilege pertains only if the outside activity does not interfere with the performance of regular University duties.

Faculty members are to inform their department head or campus executive officer of the type and extent of their outside activities, whether undertaken for compensation or otherwise, so that the department head or campus executive officer may judge the appropriateness of the activity in relation to the performance of the faculty member’s regular duties.

Policy RA12 Technology Transfer and Entrepreneurial Activity (Faculty

Research) states:

Technology transfer must be effected within the framework of an individual’s obligation to the University. Actions that serve personal interests to the detriment of the University’s interests must be avoided. Outside activities should be pursued in a manner consistent with the primary obligations of University personnel to teaching, research, and service to the public.

The potential for conflict of interest and/or commitment exists when University personnel exercise preferential access to knowledge, and/or University resources, for personal gain. The appropriate framework for faculty involvement in either commercial or not-for-profit enterprises, including "faculty companies," has to be evaluated on a case-by-case basis in concert with cognizant University administrators. Mechanisms whereby potential conflicts will be avoided must be set forth in a Memorandum-of-Understanding approved by cognizant University administrators and signed by faculty or staff involved with such outside activities.

Issues Affecting a New Policy

The university exists to create new knowledge, to preserve what is already known, and to pass on both new and established procedures to its students and to society at large. In pursuing these goals, the university advocates the pursuit of knowledge for its own sake and a commitment to the free flow of ideas as essential to its mission. For many, such principles constitute the essential function of the university and are the moral source of its institutional excellence. Those values are now being challenged by two major changes in the educational landscape: (1) the Internet as a site where on-line academic courses and other educational materials are now being offered and are readily available and (2) the proliferation of for-profit educational competitors to the traditional university. These two changes have compelled universities across the nation to reexamine their thinking about the custom of making information readily available and to reconsider ready access to their academic courses. The resulting conversations have also led faculty groups and university administrators to sense that the new environment is creating a major change in their relationship to one another. Both groups feel the need to look again at the rights and responsibilities of both the administration and the faculty and to raise anew the questions about faculty consulting, faculty roles in start-up companies, sharing of royalties for patents, who owns the scholarship produced by faculty, who owns the materials used within an on-line course, and who can sell courseware, i.e., on-line courses, and to whom. The changing environment in regard to intellectual property has also created the need to look again at two concepts that underlie the entire reevaluation: the concept of conflict of interest and the concept of conflict of commitment. Conflict of commitment is likely to occur unless individuals understand their responsibilities and obligations to the university and how certain actions can violate those bonds; conflict of interest can occur in those situations where the pursuit of individual well-being violates their contractual obligations to the university.

The Nature of the Problem

Potential conflict of interest in regard to intellectual property exists when a Penn State faculty member is considering whether or not to sell an on-line course to an educational competitor of Penn State. What professional ethics come to bear on such an occasion on the part of both the faculty member and the administrator? That question raises a number of other questions:

• What responsibilities does a faculty member have to the University that has provided the circumstances in which he or she has developed his or her expertise?
• What does the University own?
• What does the faculty member own?
• Does selling courseware to another educational institution or business differ from giving it away to another educational institution or business?
• Does selling such a course to such an educational competitor differ from selling a lecture?

While the answers to these questions are not immediately clear, the Task Force recommends the following two working guidelines:

• Whenever a faculty member puts an on-line course for sale or for copyright transfer, then the University has an interest. In such a circumstance, the faculty member should consult as soon as possible with his or her department head, dean, and a University intellectual property administrator to begin the process of reaching an agreement.
• If the on-line course or work is for instructional use only and is to be given away on the Internet to another person or educational competitor, then such a work will be considered similar to a scholarly article submitted for publication.

In this changing landscape, we all confront the following questions:

• How can faculty and administrators maintain good faith and trust and not become adversaries?
• How can the University maintain its historical commitment to the free flow of ideas?
• How will the University and the faculty balance and complement their rights and responsibilities toward one another?

New situations require new answers. Across the country, universities such as Harvard, Berkeley, and Stanford are confronting the same problems as Penn State: in the age of the Internet, what constitutes conflict of commitment and what constitutes conflict of interest are topics just now being discussed and explored. These issues have not yet reached sufficient clarity and definition for the Task Force to say more than it has. Intellectual property agreement forms and the policy on conflict of interest are presented in Appendix E.

Faculty Consulting

8. The University encourages faculty and staff consulting as a means to facilitate the transfer of knowledge to the community at large, including the commercial sector. This is part of the University’s lconflict with the University’s intellectual property policies and procedures. Individual faculty members have the responsibility to make themselves aware of the University’s intellectual property policies and procedures and ensure that their consulting arrangements are not in conflict with those policies. The University is responsible for making those policies and procedures available to the faculty.

Faculty and staff, within the scope of a consulting agreement, will often be required to assign rights to intellectual property or to forego similar research activity on behalf of third parties. This may compromise the rights of the University and lead to conflicts with other research sponsors. Therefore, all consulting agreements should be reviewed and approved by the department head or administrative officer in consultation with the intellectual property staff.

The Categories of Courseware Ownership

A. Faculty-owned Courseware.

The University makes no claim to copyright ownership when an author initiates the creation of materials for use in courses at Penn State as part of his or her regular teaching responsibilities and when the author does not require any special support from the University. Special support constitutes the factor of "value added" that enables the University to make a claim of co-ownership.

• The faculty member in this instance has full copyright ownership and bears all legal and financial responsibility for the work created.

The University will not become involved in registering the copyright, but it will make information available to facilitate the author’s doing so, if that is desired.

The University will claim the right to a non-exclusive, royalty-free license, in perpetuity, to use the resulting courseware in educational programs under the University’s supervision and control. As recognized already in the University’s Television Policy, the faculty member who created the work originally should have a residual right to be consulted about reuse and revision of the work by others, whether or not the faculty member is still employed by the University, so as to protect the author’s rights of integrity and attribution (which are explicitly recognized in European copyright law as the "moral rights" of the author).

The University will not otherwise interfere with the author’s use of the materials, and the author may arrange for their use outside the University, so long as this use does not represent a conflict of interest or conflict of commitment (see below).

B. Collaborative Courseware

When an author who has initiated a courseware project requests and receives support from the University, through the faculty member’s academic department, college, or an administrative unit, the work will be considered a collaborative work in recognition of the value added by the University. The University has an interest in ownership of such work and in the exercise of rights pertaining thereto, based upon relative contribution.

C. Commissioned Courseware

When the University initiates the development of courseware as part of the author’s normal duties or as a special project for which extra compensation is provided, it will be considered a commissioned work. The University has legal responsibility for the work and will oversee publication of the courseware.

The University will ensure that proper credit is given to the author and will negotiate an agreement with the author to provide appropriate reward from any income that accrues from publication of the work.

The agreement between the University and the author must be signed at the start of the project.

That agreement between the author of University-copyrighted courseware and the University will determine the right of the author to use in other Penn State courses the information contained in the courseware. The written agreement will also establish the extent to which such materials may be used in derivative works published outside the University.

Procedures

Course materials subject to this policy may be (1) assigned to the author by the academic unit or (2) initiated by the individual author.

1. When an author is assigned to develop instructional materials for the University, the University will require the author to sign an agreement indicating at the beginning of the project that the work has been "specially commissioned." The legal term for this is "work made for hire." The commission is recognized in one of the following ways:

a. If the work is to be developed as part of the author’s regular workload and the resulting materials will not be distributed beyond the University, a Courseware Agreement will be completed by the author, the department head, and an appropriate University intellectual property officer to confirm the nature of the assignment, the specific materials to be developed, the University’s ownership of the resulting work, and the extent to which the author may use the courseware for derivative works beyond the University’s programs.

b. If the work has potential for distribution beyond the University and/or if the author will receive additional compensation for the work, a Commissioned Work Agreement will be completed and signed by the author, the department head, the dean of the college/unit, and an appropriate University administrative officer. This agreement should be executed at the beginning of the project or at the point when value added by the University is determined. The agreement will define the nature of the arrangement for the work, the specific details to be developed, the University’s ownership of the resulting work, and the royalty benefits that will accrue to the author.

2. When an author initiates the development of course materials as part of the author’s responsibilities and the author has requested and received support from the University, the University will define the work as a collaborative work and request that the author enter into a written Collaborative Work Agreement governing the disposition of both the author’s and the University’s rights in the work and the sharing of associated royalties.

Administrative Responsibility

The dean of the college/unit and the appropriate University administrative officer have the responsibility of ensuring that an appropriate statement of University copyright ownership is created for courseware that is developed under the terms of an author’s employment or as a commissioned work. The University is responsible for registration of the copyright. The University administration is responsible for ensuring that all courseware copyrighted by the University meets federal legal standards for copyright, including the use of third-party copyrighted materials that may be contained in the courseware.

The individual faculty member is responsible for listing any potential conflict of interest regarding courseware as part of the annual process of disclosure for conflict of interest (see HR91--Conflict of Interest).

C. Class Notes

The issues presented by the preparation of class notes for commercial sale or posting on the Internet by a student or other party in a manner not authorized by the instructor may be analyzed on three levels: legal, economic, and moral.

The legal status of class notes depends on how the notes are related to the lectures. Strictly speaking, as oral performances, lectures are not protected under federal copyright law. If the lectures are embodied in a "tangible" form--for example, in writing on a blackboard, a handout, an audio or video tape recording, or a web site--then a claim of copyright in that particular embodiment can be sustained. A note-taker’s version would either have to be identical in expression to that embodied form or at least a close paraphrase for an infringement to occur. If the notes are an interpretation of the lecture expressed in the note-taker’s own words, that "original" version of the lecture as reexpressed by the person taking the notes is itself protectable by copyright, but as a "derivative" work under copyright law it requires the permission of the owner of copyright in the lecture if it had taken a "tangible" form entitling it to protection. It might also be possible, legally, to interpret class notes taken by a student as a "joint work" with the instructor as co-author, but problems arise with this interpretation because the definition of that term in the law requires that the two parties involved in creating the "joint work" have the "intention that their contributions be merged into inseparable or interdependent parts of a unitary whole."

A legal approach to dealing with the commercialization of class notes, then, is to make sure that the lecture is embodied in some "tangible" manner, i.e., written, taped, or digitized, even if only in part. That embodiment itself would create a legal ground for requiring permission of the lecturer before any distribution of a "derivative" set of notes could be undertaken. Moreover, the University is legally entitled to exclude any person not enrolled in a course from attending it to take notes.

Taking an economic approach, the University might consider setting up an internal note-taking service. This could be a way for the University to avoid problems similar to those that arose from allowing commercial copy shops off campus to offer photocopying services to instructors and students, which only belatedly the University understood the need to provide itself.

A moral approach is another alternative. The University has a good case to argue that a commercial enterprise should not profit from the activity of faculty without the University’s permission or the faculty member’s. While strictly speaking copyright infringement or plagiarism may not be involved, in a broad sense there is a "theft" of University property occurring, morally speaking. Another type of moral argument the University might make is that no student should escape the responsibility of attending class and taking his or her own notes; that is, students should not be permitted to become "free-riders" on the efforts of their fellow students. A possible moral rejoinder from students is that the instructor is allowed to "profit" from his or intellectual activity--in the form, say, of a textbook the instructor has written and has assigned for the course--so students should be able to "profit" from taking and selling their class notes. Why should a student be treated differently from an instructor, especially since the instructor is already being paid for teaching whereas the student has to pay to attend the course? However one weighs these kinds of moral argument, the University does have overriding practical reasons for wanting to exercise some control over taking and distributing class notes. Paramount among them should be making sure that the notes are an accurate representation of the content of the lecture, so that students who rely upon them are not misled. This concern, combined with the concern that an outside commercial enterprise should not profit from the lectures that the University pays instructors to give, suggests that an in-house note-taking service may be worth consideration.

Chapter VI. Implementation, Education, and Administrative Support

Recommendations for Administrative Structure

1. The Vice President for Research should have overall responsibility for administering and coordinating all aspects of the University’s intellectual property policies and procedures including, but not limited to, patents, copyrights, trademarks (excluding Penn State logo licensing), and licenses (both the creation of intellectual property and the interpretation of legal use of intellectual property).

2. The Vice President for Research should work with the Provost and the Vice President for Outreach on aspects of intellectual property management pertaining to instruction and the classroom use of intellectual property.

3. The Vice President for Research also should continue to expand the development of new cooperative initiatives with state and federal government agencies and with other institutions that will enhance Penn State’s technology transfer and promote economic development throughout the Commonwealth.

4. The Vice President for Research and the Provost should work closely on intellectual property issues affecting teaching.

Recommendations for Advisory Committees

5. The Vice President for Research should appoint an Intellectual Property Policies and Procedures Advisory Committee to provide ongoing review and advice regarding the University’s intellectual property/technology transfer policies and procedures.

6. The University Faculty Senate Committee on Research should establish a standing sub-committee on intellectual property. Such a committee would bring increased emphasis and focus on intellectual property matters, thus enabling the Senate to play a more active role as liaison between the faculty and administration on all aspects of intellectual property policies and procedures.

Recommendations for Educational Program

7. The Vice President for Research should establish an educational program concerning copyright for faculty, staff, and students as mandated by the DMCA.

8. The Vice President for Research should initiate a comprehensive and ongoing educational program to educate all faculty, staff, and students about the University’s intellectual property policies, procedures, and support services.

9. The faculty, staff, and students of the University must be made aware of their rights and responsibilities with respect to all kinds of intellectual property. The University is responsible for making all University intellectual property policies and procedures readily available to all faculty.
10. The University is responsible for making available to both faculty, staff, and students, its policies concerning conflict of interest and conflict of commitment.

Partnership with the University Faculty Senate

11. As the University implements the recommendations contained in this report, it should bring each new policy to the University Faculty Senate as an advisory/consultative report.

Recommendations for Funding

12. The University must develop and fund an intellectual property management and commercialization budget commensurate with, and to maintain its position as, a leading research university.

13. The University must invest the funds required to make the management of Penn State’s intellectual property consistent with the goals, principles, and recommendations of this report.

Administrative Structure

The University’s organizational structure for managing intellectual property matters is currently too decentralized and inadequate for the required tasks. The University’s intellectual property policies and procedures must provide a viable basic structure for the administration of intellectual property that is flexible enough to be responsive to unanticipated needs and opportunities in a timely manner. Therefore, the following recommendations and clarifications are made:

1. The President, the Executive Vice President and Provost, and the Vice President for Research should provide leadership for the development and administration of all aspects of the University’s intellectual property policies and procedures.

2. The Vice President for Research should have overall responsibility for administering and coordinating all aspects of the University’s intellectual property policies and procedures including patents, copyrights, trademarks (excluding Penn State logo licensing), and licenses (both the creation of intellectual property and the interpretation of legal use of intellectual property). Intellectual property processes that currently reside within other units such as the Risk Management Office and the Copyright Compliance Office should be considered for reassignment to the Vice President for Research in order to better coordinate and focus all intellectual property activities. Since copyright and trademarks require different legal expertise than patents and licensing, there should be separate offices for each.

3. The Vice President for Research should work closely with the Provost’s Office on aspects of intellectual property management pertaining to instruction and classroom use of intellectual property.

4. The Vice President for Research should provide leadership through the two existing Assistant Vice Presidents for Research:

Assistant Vice President for Research, Director of Sponsored Programs

(one office)

• government, copyright, and policy compliance
• negotiation and management of research contracts
• negotiation and management of the intellectual property provisions of research contracts
• counseling of faculty on conflict of interest issues

Assistant Vice President for Research, Director of Technology Transfer

(nine offices)

• Intellectual Property Office: recording of inventions and assistance with preparation of patent disclosures; processing of patent applications, maintenance and protection of patents; administration of intellectual property-related business and government activities
• Research Commercialization Office
• Industrial Research Office
• Office for the administration and marketing of the Penn State Research Park
• PENNTAP Office
• Ben Franklin Office
• Copyright and Trademarks Office
• University-industry development office
• Technology transfer central accounting office: such an office has become necessary because of the expanded accounting functions of a mature intellectual property office

The purpose of these offices is to educate, encourage, advise, and support faculty, staff, and students during the entire intellectual property disclosure, protection, and transfer process. Included are education and training, policy compliance, disclosure submission, patent and copyright activity, marketing and commercialization strategy, and intellectual property-related business and government activities. These organizational units should also record the disclosures, oversee government compliance requirements, assist in the preparation of disclosures, assess market potential, apply for patents, consider marketing and strategy, maintain and protect patents, and register copyrights.

The commercialization of intellectual property and the negotiation of sponsored research agreements with business and industry require the combined expertise and diligence of the Intellectual Property Office, the Office of Sponsored Programs, the Research Commercialization Office, and the Penn State Research Foundation. These offices must cooperate fully in the negotiation and management of all contracts to ensure that the entire process is positive, seamless, and effective for faculty, staff, and students, as well as for business and industry sponsors.

5. The Vice President for Research should also continue to expand the development of new cooperative initiatives with state and federal government agencies, and with other institutions that will enhance Penn State’s technology transfer and promote economic development throughout the Commonwealth.

6. The Vice President for Research should also appoint an Advisory Committee on Intellectual Property Policies and Procedures. The purpose of this committee will be to give advice to the Vice President for Research on all aspects of intellectual property policies and procedures. The Committee should be broadly representative of knowledgeable faculty, staff, and students. It might also call upon alumni, business, and industry for consultation as appropriate. Representation from the University Faculty Senate should be included, and representation from this Task Force could provide continuity in the implementation of this report.

7. The University Faculty Senate Committee on Research should establish a standing subcommittee on intellectual property. Such a subcommittee would bring increased emphasis and focus on intellectual property matters, thus enabling the Senate to play a more active role as liaison between the faculty and administration on all aspects of intellectual property policies and procedures.

Educating the University Community About Intellectual Property Issues

If the University is to educate faculty, staff, and students in their rights and responsibilities under intellectual property law, it must introduce a University-wide intellectual property educational program. The Vice President for Research should institute a plan whereby each administrative unit will appoint an intellectual property representative who will be part of a network of individuals who understand intellectual property issues and who will work with the Vice President for Research to disseminate intellectual property information to their units and to participate in a comprehensive and ongoing educational program as mandated by the DMCA (1998).

The Vice President for Research should start an educational program to keep faculty, staff, and students current on all aspects of intellectual property policies, procedures, and support services. This could be accomplished partly through a web site that describes all offices, their responsibilities, and key contact people.

An annual seminar should be held for administrators, faculty, staff, and students on patent and copyright issues and opportunities. Faculty should be updated periodically, or at least annually, on changes in the patent and copyright laws and changes in policies pertaining to copyright issues (e.g., coursepacks, electronic reserves, photocopying, server-mounted publications, courseware, etc.). These seminars should feature a variety of speakers and be videotaped so that the information can be shared throughout the University community. Those attending the seminar should include unit representatives (see above) and other faculty, staff, and students designated by the deans and administrators to represent their units. The seminars should establish a network of persons who understand intellectual property issues, opportunities, and the most efficient ways to acquire and disseminate additional information. The Center for Academic Computing and the University Libraries should collaborate in developing and offering more general seminars to faculty, staff, and students on intellectual property topics most relevant to teaching and learning.

Educational Programs

The Task Force recommends that the University adopt for all faculty, staff and students an educational program concerning copyright as mandated by the DMCA. It will involve all members of the University in active exploration and negotiation of the boundaries of fair use. By becoming knowledgeable in this area, program participants will be prepared to make informed decisions about how to avoid copyright infringement and about what may or not be considered fair use (see Chapter IV).

Partnership with the University Faculty Senate

• As the University implements the recommendations contained in this report, it should bring each new policy to the University Faculty Senate as an advisory/consultative report.

The University administration must work closely with the faculty in developing and adopting new policies to meet these new situations. To keep the Penn State community well-informed, the University should bring each new intellectual property policy to the University Faculty Senate as an advisory/consultative report.

Increased Funding

• The University must invest the funds required to make the management of Penn State’s intellectual property consistent with the goals, principles, and recommendations of this report.

Throughout this report, the Task Force has noted that Penn State insufficiently funds its intellectual property offices and efforts. Currently, Penn State is not competitive in this regard with the leading research universities. In some cases, valuable initiatives receive no attention because they cannot be funded. Additional funding is also necessary to keep the University’s liability for copyright infringement as low as possible.

Since intellectual property currently receives far less investment than it requires, the University must immediately undertake a thorough financial analysis of its intellectual property situation and then adopt the appropriate budget.

The University will not be able to realize its potential in this arena and to function as a leading research university without making the investment required to enable the development, protection, and commercialization of its intellectual property.

Appendix A

Task Force on Intellectual Property Policies and Procedures

Steering Group

Harry Allcock, Evan Pugh Professor, Chemistry, Eberly College of Science
Leonard Berkowitz, Penn State York, Assoc. Prof., Philosophy, Past Chair, Univ. Faculty Senate
Tamara Carneim, Graduate Student, College of Earth Mineral Sciences
Nancy Eaton, Dean, University Libraries
John Houlihan, Professor, Physics, Penn State Shenango
Thomas Jackson, Prof., Electrical Engr., College of Engineering; Chair, Senate Committee on Research
Ernest Johnson, Prof., Cell. & Mole. Phys.; Dir., Res. Affairs, Milton S. Hershey Medical Center
William Keating, Professor, Law, Dickinson School of Law
Joan Lakoski, Associate Professor, Pharmacology & Anesthesia, Milton S. Hershey Medical Center
Daniel Larson, Dean, Eberly College of Science
John Leathers, Interim Provost/Dean, Penn State Capital College; Chair
Gary Lilien, Distinguished Research Prof., Management Science, Smeal College of Business Adm.
Thomas Monahan, Director, Intellectual Property Office
Murry Nelson, Prof., Education & American Studies, College of Education; Chair, University Faculty Senate
Joanne Rutkowski, Associate Professor, Music, College of Arts & Architecture
April Sheninger, Senior Coordinator, Copyright Clearance Office
J. Rodman Steele, Patent Attorney, Quarles & Brady, Attorneys at Law
Richard Stern, Deputy Director, Initiatives & Academic Programs, Applied Research Laboratory
Barry Zoumas, Alan R. Warhime Professor, College of Agricultural Sciences
Jan Smith, Coordinator, Research Initiatives, Office of the Vice President for Research


Patent Agreement Committee
John Houlihan, Professor, Physics, Penn State Shenango
Thomas Jackson, Professor, Electrical Engineering, College of Engineering
John Nichols, Professor, Communications, Chair, Senate Committee on Faculty Affairs
Rodman Steele, Patent Attorney, Quarles & Brady, Attorneys at Law
Richard Stern, Deputy Director, Initiatives & Academic Programs, Applied Research Laboratory; Chair


Equity Positions and Start-Up Companies
K. Robert Bertram, Attorney, Eckert, Seamans, Cherin & Mellot, LLC
Fariborz Ghadar, Schreyer Professor, Global Management, Smeal College of Business Administration
Ted Graef, Graduate Student, Smeal College of Business Administration
Scott Johnson, Graduate Student, Smeal College of Business Administration
Daniel Larson, Dean, Eberly College of Science
Daniel Leri, Director, Research Commercialization Office
Gary Lilien, Distinguished Research Prof. Management Science, Smeal College of Business Administration
Kenneth Mertz II, Investment Adviser, Emerald Advisers, Inc.
Barry Zoumas, Alan R. Warehime Professor, College of Agricultural Sciences; Chair


Intellectual Property Administration
Shelton Alexander, Prof., Geosc., College of EMS; Chair, Senate Committee on University Planning
Harry Allcock, Evan Pugh Professor, Chemistry, Eberly College of Science
John Bagby, Professor, Business Law, Smeal College of Business Administration
Madlyn Hanes, CEO and Associate Dean, Penn State Great Valley
Ernest Johnson, Prof., Cell. & Mole. Phys.; Dir., Res. Affairs, Milton S. Hershey Medical Center; Chair
William Keating, Professor, Law, Dickinson School of Law
John Nichols, Prof. of Comm., College of Communications; Chair, Senate Committee on Faculty Affairs
Lynne Vernon-Feagans, Associate Dean for Research, College of Health & Human Development


Software, Copyright, and Data Rights Committee
Tamara Carneim, Graduate Student, College of Earth & Mineral Sciences
Nancy Eaton, Dean, University Libraries; Chair
John Harwood, Director, Education Technology Services, Center for Academic Computing
Gary Miller, Associate Vice President for Distance Education, Outreach and Cooperative Extension
John Moore, Assoc. Professor, English and Comparative Literature; Chair, Senate Committee on Libraries
Joanne Rutkowski, Associate Professor, Music, College of Arts & Architecture
April Sheninger, Senior Coordinator, Copyright Clearance Office
Sanford Thatcher, Director, University Press
Susan Walker, Administrative Assistant, University Libraries


Appendix B

Def