UNIVERSITY OF THE VIRGIN ISLANDS

BOARD OF TRUSTEES RESOLUTION



PURPOSE: To approve an Intellectual Property Policy for the University of the

Virgin Islands to guide and facilitate entrepreneurial and revenue-

generating initiatives of the University and its personnel and to

balance the interests of the University with those of its faculty, staff

and students.



WHEREAS, the University seeks, as its primary mission, the intellectual

development of its students, faculty and staff, hereinafter referred to as University

personnel, and



WHEREAS, increasingly, there are non-traditional, risk bearing, revenue-

generating activities and other business opportunities that can be provided under the

auspices of the University to advance the financial state of the University and at the same

time provide enhanced opportunities for University personnel, and



WHEREAS, the University seeks to foster a climate that is favorable to the

intellectual development and creative expression of University personnel but that also

balances institutional interests with those of University personnel, and



WHEREAS, an intellectual property policy to establish policy and procedures that

protect the branded value and investments of the University as well as the personal and

intellectual property rights of University personnel was initially drafted by a team of

faculty and administrators at the Summer 2003 Policy Institute, and



WHEREAS, this draft policy, with input from legal counsel, was reviewed and

approved by the Cabinet of the University on March 9, 2004, and forwarded to the

Academic, Research and Student Affairs Committee, and



WHEREAS, the Academic, Research and Student Affairs Committee approved

the draft policy on May 10, 2004 pending additional input from faculty and referred it to

the Executive Committee for approval, and



WHEREAS, faculty input was incorporated into the draft policy document and

the resulting document considered by the Executive Committee on October 11, 2004, and



WHEREAS, the Executive Committee made changes to the document, and

referred it to the Board for action,

NOW THEREFORE BE IT RESOLVED THAT:



The Board of Trustees approves the Intellectual Property Policy of the

University of the Virgin Islands effective immediately, which policy is attached

hereto as an exhibit.



CERTIFICATION



The undersigned does hereby certify that the foregoing is a true and exact copy of the

resolution of the Board of Trustees of the University of the Virgin Islands adopted at its

meeting on June 19, 2004 and recorded in the minutes of said meeting.



Secretary of the Board Date

The University of the Virgin Islands



Intellectual Property Policy



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l. Introduction



Intellectual Property Policy - Approved by Cabinet March 9, 2004 - Amended by 2

Executive Committee of the Board of Trustees October 11, 2004

The University of the Virgin Islands (hereinafter referred to as the University)

seeks, as its primary mission, the intellectual development of its faculty, Staff

and students (hereinafter collectively referred to as university personnel. ) TO

maintain its viability and sustainability as an ever stronger institution, the

University engages in entrepreneurial and revenue generating activities that

meet its primary mission while providing investment potential for long-term

sustenance of that mission. Entrepreneurial activities are non-traditional, risk-

bearing activities operated under the auspices of the University and driven by

market demand and profit motive. Those activities are to be consistent with

the mission and Strategic Plan of the University, as the University seeks to

maintain a balance between its entrepreneurial thrusts and its basic academic

missions of teaching, research and public service.



A. Goals of the Policy



This University policy regarding entrepreneurship and other revenue

generating initiatives is established with the goal of enabling and guiding

these initiatives. It is in the University’s interest to ensure that its policy

permits agility and rapid decision-making in order to respond quickly to

market demands, community needs and emerging opportunities. The

University invites and encourages entrepreneurs to consider way by which

they might contribute to the business of the University through ideas and

activities. This policy is designed to provide the authority and guidelines for

intra-university action to further extra-university entrepreneurial development.

The policy also articulates the focus of authority and responsibility for each

aspect of the conduct of the University business.



Entrepreneurship policy applies to entrepreneurial activities endorsed,

sponsored and/or supported by the University. These activities can be

conducted under the auspices of the University or in partnership with entities

outside the University. The policy applies not only to new business ideas and

revenue generating opportunities, but also to current and ongoing University

initiatives which are entrepreneurial and revenue generating. The policy also

applies to University personnel who engage in these activities.



B. Risk



This policy is intended to provide institutional direction for those non-

traditional risk bearing activities with which the University will augment its

traditional academic missions of teaching, research and service. In its

entrepreneurial endeavors, the University seeks maximum benefit to the

University while exposing the University to reasonable levels of risk. Risk is,

naturally, inherent in any entrepreneurial endeavor and should be recognized

and managed. Whenever possible, the University seeks to mitigate its



' The term university personnel is used to collectively describe all categories of faculty, including research

faculty, all categories of staff, including administrative and executive staff, and all registered students who

participate in activities governed by this policy. Individual members of this class are referred to separately

as appropriate in the document.



Intellectual Property Policy - Approved by Cabinet March 9, 2004 - Amended by 3

Executive Committee of the Board of Trustees October 11, 2004

exposure to risk from entrepreneurial activities, and to share risk with its

partners.



Intellectual Property Policy - Approved by Cabinet March 9, 2004 - Amended by

Executive Committee of the Board of Trustees October 11, 2004



4

ll. Intellectual Property Policy



The University strives for the highest standards of excellence in all of the

creative endeavors of its various members. The University seeks to foster a

climate favorable to the creative expression of university personnel. In the

motivation of creativity, the University builds a spirit of collaboration among its

unique, creative communities, balancing its own institutional interests with

those of the many stakeholders in the University community. As such, the

University here establishes intellectual property policy and procedures that

protect the branded value and investments of the University as well as the

personal and professional intellectual property rights of university personnel.

The intellectual property policy is designed to provide equity, fairness and

consistency in the negotiations of property rights.



The University has an interest in encouraging entrepreneurial activities that

maximize the University’s self-sustainability. The University seeks to nurture

entrepreneurial creativity that might provide the University with a return on

any investment it makes in the business developments of university

personnel. At the same time, the University hopes to balance the provision of

incentives for creativity with the interest in cost recovery and net income

development that rewards a return on the University’s risk.



A. Definition



Intellectual property (1) Any invention, creation, innovation, discovery, or

improvement other than traditional works of scholarship and creativity or

instructional materials, (2) institutional works for which assignment to the

University is required by law or by a written contract to which the creator has

previously agreed, and (3) any other work for which the creator seeks the

assistance of the University in developing commercially, including protecting,

marketing, assigning ownership or licensing.



B. Alignment



The University maintains a strategic planning process, and the intellectual

property policy should be aligned with the current strategic plan and its

implementation process. To that end, the University policy will be subjected

to periodic review and, as needed, revision. Similarly, the University’s

intellectual property policy should be aligned with existing federal and

territorial codes on intellectual property protection. In particular, University

policy will reflect current copyright, patent, and trademark laws such as the

Dole Bayn Act and the TEACH Act, as well as current regulation governing

intellectual property development under federal and territorial grants.



C. Commercialization



It is the University’s desire to advance commercially viable products and

ideas created by university personnel. The University will determine its

interest in advancing products or ideas and will articulate criteria by which an



Intellectual Property Policy - Approved by Cabinet March 9, 2004 - Amended by ,

Executive Committee of the Board of Trustees October 11, 2004

idea or product will be advanced. If the University decides to exercise its

resources in the pursuit of patents, the licensing or development of products,

or the commercialization and marketing of a particular product or idea, it does

so with the expectation of a return on that investment. Such return in profits,

royalties, or shares is to be determined by contract with individual university

personnel who create the idea or product. Also, if the University, by

agreement with any individual in the class of university personnel, holds

patents for licensing or development or holds copyrights for publication and

distribution, then the University accepts product liability and the responsibility

to protect such intellectual property against infringement. If, however, the

University declines to pursue the commercialization of any idea or product

created by an individual, then the copyright or patent reverts to that individual,

and nothing shall preclude that individual from the pursuit of

commercialization of that idea or product. That individual would also accept

all benefits and profits, as well as liability and responsibility, for all

administrative, development, and marketing costs.



The responsibilities of the University to advance the commercialization of a

product or idea shall be time-defined by contract. The contract shall also

specify the proportion of royalties, after expenses are paid, to be distributed to

the creator, the University, and the other participants. Terms of distribution

shall also be determined by contract. If appropriate, the University and the

creator will enter into a negotiated non-disclosure agreement (NDA) to

provide confidentiality over the idea in order to permit the University to

develop the idea further or for the creator to protect the intellectual property in

the event the University declines to invest in development.



The University shall create an appeal process which defines the steps an

individual may take in cases where he or she feels that he or she has been



treated unfairly.



D Work for Hire



Intellectual property developed by University employees, other than teaching

and research faculty, within the scope of their regular employment is

considered a Work for Hire as defined in the 1976 Copyright Act, and as such

will be the property of the University.



Intellectual property stemming from the activities of teaching and research

faculty under the course of their regular employment and through the use of

customary resources will not be considered a “Work for Hire” as defined in the

1976 Copyright Act, and as such will be the property of the faculty member.

Certain instructional activities, however, particularly those that require

extraordinary University resources, may be defined by contract as “Work for



Hire.”



Intellectual Property Policy - Approved by Cabinet March 9, 2004 - Amended by 6

Executive Committee of the Board of Trustees October 11, 2004

UVI equipment and other resources available to the general public, or that are

usually and frequently used by university personnel in the course of their

employment are not considered “extraordinary” for the purposes of classifying

an activity as Work for Hire. These may include telephones, audio and video

conferencing, email, web access and distance learning delivery systems.

Equipment procured by the University for the specific purpose of an initiative

and not ordinarily available to university personnel in the course of their

employment are extraordinary resources for the purposes of identification of

potential Works for Hire.



E. Employee Contracts



The University, in accordance with applicable laws, may enter into separate

contractual arrangement with teaching and research faculty, administrators,

staff, students, or non-employees, under which the intellectual property rights

may be negotiated.



F. Ownership



Intellectual property which Is developed with the investment of University

resources, funds, space, or facilities will be the property, in its entirety, of the

University, unless otherwise governed by a specific contract, or as provided in

Section D above. When intellectual property rights have not been addressed

in the contract, they will be negotiated.



Creative works and the intellectual property arising from them will be the



property, in its entirety, of the University in the following circumstances:



1. When applicable law or policy regarding grants, or stipulations of any

other externally funded effort require assignment of rights to the

University, or



2. When the creator is an employee of the University other than a member of

the teaching and research faculty, and the creation falls within the area of

responsibility or expertise for which the employee is paid, or



3. When the works or properties are reports or other documents produced as

a result of a special assignment accepted by a member of faculty and

recorded on Faculty Utilization Reports, except that the University shall

not have the right to circulate or publish such documents without citing the

author, nor the right to modify such documents, unless the author gives

written permission to do so. ;



Creative works and the intellectual property arising from them will be the

property of the creator in the following circumstances:



1. When the work is a product of traditional scholarship or instruction

developed by a member of the teaching or research faculty.



2. When the work was produced by a member of the teaching or research

faculty without the use of any university resources and on their own time.



Intellectual Property Policy - Approved by Cabinet March 9, 2004 - Amended by 7

Executive Committee of the Board of Trustees October 11, 2004

Creative works and the intellectual property arising form them will be the

property of the creator and/or the University as stipulated by contract in the

following circumstances:



1. When, the University has entered into a contract with the creator to

develop the works and their commercial application.



2. When, the properties are the result of a contract for Work for Hire defining

intellectual property rights and usually involving the use of extraordinary

university resources.



Ownership of creative works and the intellectual properties arising form them

in circumstances other than those cited above will be negotiated between the

creator and the University,



Intellectual property developed through grants or contracts will be governed

by the terms of those agreements. Federally sponsored activities will be

governed by the applicable federal rules and regulations.



All contracts governing externally sponsored activities must address

intellectual property issues. All intellectual property provisions must be in

keeping with the principles outlined in this policy and codified in template

contract language reviewed and approved in advance by legal counsel. Any

contract that does not include such template intellectual property language

must be reviewed separately by legal counsel.



All contracts must be signed by the President or the President’s designee.



G. Codes of Ethics



It is in the University’s interest to maintain and enforce codes of ethics, as

well as to ensure legal compliance regarding the commercialization of

products, particularly where university personnel divide their time between

responsibilities to the University and to external business interests. Rules

regarding disclosure of income and conflicts of interest and rules limiting

conflict of time spent on grant or commercial projects shall be monitored and



enforced by the University.



H. Students

A primary role of a university is to encourage the intellectual and creative



development of its students. The University encourages student development

of ideas, services and products that can be commercialized for the benefit of

the broader community. To that extent, the University recognizes the

autonomy of its students in the creation and commercialization of their ideas.

Through its student handbook, the University promotes student compliance

with federal laws regarding copyright, patents and University policy on

plagiarism, as well as respect for other students/ ideas and intellectual



Intellectual Property Policy - Approved by Cabinet March 9, 2004 - Amended by 8

Executive Committee of the Board of Trustees October 11, 2004

property. Through its faculty handbook’, the University also promotes faculty

respect for student intellectual property. Through faculty, staff and student

handbooks, the University articulates methods of internal appeal in cases of

perceived infringement.



1. Grants and Contracts



In all of its grant applications and contract preparations, the University shall

strive to ensure that intellectual property ownership issues are addressed.

The University shall prepare contract templates, which will include all

essential contract terms, as well as an array of alternative terms to be

selected. All contracts shall include technical reporting requirements,

performance requirements, payment terms and intervals, liability and

indemnification forms, schedule of performance, term of contract, scope of

work, whether the project is a work for hire, employment status of contractor,

and terms of conflict of interest. All grant applications are reviewed for

intellectual property issues by the Office of Sponsored Programs.



J. Definition of Royalties and Profits



Royalties and profits deriving form the publication and commercialization of

ideas and products created under contract between the University and

university personnel shall be divided equitably. First, the University and the

creators of the products shall share in the recovery of reasonable direct

expenses in the process of publication or commercialization in proportion to

their investments, including both financial and sweat capital investments, as

determined by the provisions of the negotiated contract governing ownership

and distribution of revenues under which the product is created. Thereafter,

shareable net revenue and royalties shall be negotiated between the



University and university personnel.



K. Copyright



The University shall disseminate pertinent rules of copyright and fair use of

copyrighted material to university personnel. The University and its

employees and students shall ensure the protection of artistic property rights

in employment and performance contracts and in releases.



* The faculty handbook is the Faculty Policy Manual



Intellectual Property Policy - Approved by Cabinet March 9, 2004 - Amended by

Executive Committee of the Board of Trustees October 11, 2004