SIGNED JOINT #8
ARTICLE 27
25 October 2000
Joint#8
Article 27
PATENTS AND COPYRIGHTS
PREAMBLE
27.01 Since the primary consideration of the University is to promote teaching, research, and publication by its ASMs, these activities will continue to be encouraged. However, the University recognizes that the community at large may also benefit from inventive and creative advancements in artistic, creative, technical, and scientific knowledge which have been achieved by ASMs.
27.02 It is understood that the University and its ASMs have a joint interest and ownership in all inventions, discoveries or creations conceived or developed by an ASM during the course of employment at the University, limited by the remainder of this Article.
27.03 Upon written request, the University and an ASM shall provide one another with an account of all expenditures referred to in this Article relating to inventions, discoveries or creations conceived or developed by that ASM during the course of employment at the University, prepared in accordance with generally accepted accounting principles.
PATENTS
27.04 Where an ASM is party to a research or development contract which has explicit provisions for patents and revenue sharing from such patents and an invention is made by the ASM in the course of research or development supported by that contract, the provisions of that contract shall take precedence over this Collective Agreement.
27.05 An ASM shall notify his or her Administrative Head in writing of all potentially patentable inventions, discoveries or creations made by him or her. Within thirty (30) days of the date that the Administrative Head was so notified, the University shall determine whether the invention, discovery or creation arose from activities involving the utilization of University facilities or through the use of grants or contracts managed by the University, and shall notify the ASM in writing of its determination.
(a) If the University determines within this thirty day period that the invention, discovery or creation arose from activities involving the utilization of University facilities or through the use of grants or contracts managed by the University, the ASM shall assign to the University all proprietary rights for patents based on what he or she conceived, developed or embodied.
(b) If the University determines that the invention, discovery or creation did not arise from activities involving the utilization of University facilities or through the use of grants or contracts managed by the University, or if the University makes no determination within thirty (30) days of the date the Administrative Head was notified, the ASM may deal with the patent as he or she deems appropriate. The University shall relinquish all claims to the invention, discovery or creation at any time in the future. This latter situation shall not preclude a jointly negotiated development agreement between the ASM and the University.
27.06 When a potentially patentable invention, discovery or creation is determined to be the result of University-related activities, in accordance with Clause 27.05, the ASM shall provide total disclosure in writing to the Vice-President (Research and International Relations) sufficient to allow the preparation of a patent application. The University shall decide whether it intends to pursue a patent application and shall notify the ASM of its decision within 120 days from the date that the ASM completes disclosure to the Vice-President (Research and International Relations). This patent protection shall be applied for within the above 120 days unless it is agreed by the University and the ASM that this period is to be extended. This patent protection shall be pursued in the name of the ASM who is the inventor, discoverer, or creator. The cost involved in this process shall be paid by the University. The ASM shall provide full co-operation and assistance in the preparation of the patent application, including disclosure of information regarding any relevant potentially patentable discoveries which have not yet been protected. Such disclosure shall be confidential until a patent application is filed by the University or the ASM or a decision not to file is made by the University and the ASM.
27.07 If the University does not notify the ASM in writing that it intends to pursue a patent application within 120 days from the date that the ASM completes disclosure to the Vice-President (Research and International Relations) or notifies the ASM in writing that it does not intend to pursue a patent application, then the University is deemed to have relinquished all claims to pursue patent protection for this particular invention, discovery or creation at any time in the future, all proprietary rights in the invention shall revert to the ASM, and the ASM may pursue patent protection at his or her own expense. In such a case, the University’s equity shall be reduced to that stated in Clause 27.13.
{MUN note: Note when editing that Clause 27.08 has been incorporated into 27.07.}
27.09 Pursuant to Clause 27.06, as soon as the patent protection has been applied for or the decision has been taken not to apply, the ASM shall have the right to publish the results of his or her research which pertain to the invention, discovery or creation.
27.10 If, within one (1) year of obtaining patent protection, the University has not proceeded with the development of the invention, discovery or creation, the ASM may request in writing that the University reassign patent rights to him or her. Within thirty (30) days of receipt of this request, the University shall:
(a) comply with this request; or
(b) proceed with development in accordance with a mutually agreed development plan. If such an agreement on a development plan has not been reached, the patent rights shall be reassigned to the ASM, and the University’s equity shall be reduced to that stated in Clause 27.13.
27.11 The ASM shall share in any royalties derived from the commercialization of patents which he or she has assigned to the University.
27.12 If the University pursues patent protection, the sharing of royalties shall be as follows:
(a) The royalties to be shared shall be those remaining after the University and the ASM recover their direct costs incurred in the development of the invention, discovery or creation, and patenting process. These direct costs shall not include overheads. Seabright Corporation or other University agencies may charge overheads not to exceed thirty-five (35) percent of salaries incurred in the processing of this project except by agreement with the ASM.
(b) The share of royalties accruing to the ASM shall be:
(i) fifty (50) percent of the first $200,000;,,
(ii) forty (40) percent of the next $200,000;
(iii) twenty-five (25) percent of the remainder.
27.13 If, pursuant to Clause 27.07, the ASM decides to pursue patent protection without the University’s aid, the sharing of royalties shall be as follows:
(a) The royalties to be shared shall be those remaining after the ASM and the University recover their direct costs incurred in the development of the invention, discovery or creation, and the patenting process. These direct costs shall not include overheads. Seabright Corporation or other University agencies may charge overheads not to exceed thirty-five (35) percent of salaries incurred in the processing of this project except by agreement with the ASM.
(b) The share of the royalties accruing to the University shall be:
(i) fifty (50) percent of the first $200,000;
(ii) forty (40) percent of the next $200,000;
(iii) twenty-five (25) percent of the remainder.
27.14 The University’s share of royalties shall be used to support research and scholarly activity.
27.15 Neither the University nor the ASM shall enter into any agreement with a third party which alters the patent rights of either party as stated in this Article without the written consent of the other party.
COPYRIGHTS
27.16 The copyright on all literary works, dramatic works, musical works, artistic works, computer programmes, or other forms of intellectual property produced or created by an ASM is vested in the ASM who created the works. The benefits that may accrue to the ASM may be limited by the terms of external contracts and licensing agreements.
27.17 Notwithstanding Clause 27.16, where the University specifically commissions the preparation of a particular work by an ASM, the following conditions shall obtain:
(a) If the work commissioned is not intended for use in a degree, diploma or certificate credit course, copyright shall be vested in the University on terms negotiated between the ASM and the University. The ASM shall retain the right to use the work or any part(s) thereof in an academic publication or for teaching.
(b) If the work commissioned is intended for use in a degree, diploma or certificate credit course, at the time the commission is made the ASM who is the creator and the University may negotiate specific conditions which provide the University with a royalty-free licence to use the material within the University for a fixed period of three (3) to five (5) years. Any sales of the work outside the University shall be subject to a royalty distribution agreement between the ASM and the University. Such a licence shall not prevent the ASM from using all or part of the work in an academic publication.
27.17#1u When a royalty-free licence granted pursuant to Clause 27.17 expires, the licence may be renewed, subject to negotiation between the creator and the University, for periods each of which is not to exceed three (3) years.
27.17#2u When, during the royalty-free period, either the University or the ASM wishes that the work be revised or replaced, by mutual consent of the University and the ASM, the University may commission the ASM to revise or replace the work. The revision or replacement work shall be subject to Clause 27.17.
27.17#3u When a royalty-free licence granted pursuant to Clause 27.17 expires, and the University wishes the work to be revised or replaced, its creator shall be offered a commission to revise or replace the work. The revision or replacement work shall be subject to Clause 27.17. If the creator does not agree to revise or replace the work, the University may commission another ASM(s) in the creator’s Academic Unit, qualified to do the work, to revise or replace the work. Where no ASM qualified to do the work is identified in the creator’s Academic Unit, the University shall issue a call for expression of interest, via electronic mail, to ASMs in all other Academic Units. Where no ASM qualified to do the work is identified, the University may commission another individual who is not an ASM to revise or replace the work. In the case of a revised work, copyright shall be held by the original creator and the ASM(s) responsible for the revision, except where the original creator chooses to relinquish his or her copyright to the revised work. Any sales of the revised work outside the University shall be subject to a royalty distribution agreement among the ASM(s), any person(s) responsible for the revision and the University, with the ASM creators’ division of royalties being proportionate to their contribution to the revised work. Such an agreement shall not prevent the ASM(s) from using all or part of the original work in an academic publication, and shall not prevent the ASM(s) from using all or part of the revised work in an academic publication subject to agreement by others involved in the revision.
27.18 The University shall make no claim to the proceeds of publication for which it has provided no more than normal academic facilities, including research grants.
27.19 When the University has subsidized publication by advancing extraordinary assistance, it may negotiate with the ASM who is the creator specific conditions governing participation in royalties.
27.20 The University shall stipulate, at the time it offers a publication subsidy, whether it wishes to negotiate a claim to royalties that may accrue from publications thus supported. If the University does not so stipulate, it shall be deemed to have waived any claim to royalties or other income.
27.21 The University’s share of royalties shall be used to support research and scholarly activity.
27.22 On request, the University shall within 20 days transmit to the Association a list of royalties earned under this Article. No more than one such request shall be made per year.
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