Policies

As a condition of employment or the use of research facilities, Penn requires that a Participation Agreement be signed, which assigns all right and interest in these inventions and related intellectual property (including but not limited to patent applications and patents) to Penn. Under Penn’s Patent Policy, even if the Participation Agreement has not been signed prior to the discovery of the invention, by accepting Penn employment, or using Penn resources to conduct any research, faculty, employees, and in some cases students (see below) are deemed to have automatically assigned their rights to any inventions. If you have not yet signed a Participation Agreement, please contact PCI.

Occasionally a faculty member, researcher, employee, or student may believe that an invention was not developed with Penn resources or support, or within the scope of their employment, and is not otherwise subject to the Patent Policy, and, therefore, may not be subject to ownership by Penn. If this occurs, the inventor must provide PCI with a written statement describing how the invention was developed and why they believe that it is not subject to the terms of the Penn Patent Policy. The Executive Director of PCI will then review the facts with members of the PCI team and either issue a written disclaimer of Penn interest in the invention, or decide that ownership of the invention should be held by Penn.

If an invention is not owned by Penn, the inventor may still request to use PCI’s services and expertise in the assessment, protection, and commercialization of the invention. However, if Penn agrees to invest the significant time, effort, and expense required to manage the protection and commercialization of the invention it will generally require that the invention be assigned to Penn and will treat the invention the same way as if it were an invention within the scope of the Patent Policy and initially owned by Penn.

Inventions made by students

1. in the course of employment at Penn;
2. resulting directly from work related to employment at Penn;
3. resulting from work under a grant or sponsorship requiring assignment to Penn; or
4. where the invention is co-created with another inventor who has a duty to assign the invention to Penn,

will be considered the property of the University. Conversely, student inventions not falling under one of the categories above will remain the property of the student.

All inventions resulting from research done in Penn laboratories or facilities as part of a graduate or post-doctoral degree or non-degree program are the property of Penn. Student inventors of inventions that are owned by Penn are considered “inventors” under the Patent Policy for purposes of sharing in distribution of revenues resulting from commercialization of inventions.

Penn’s policy on ownership of copyrights for works created by faculty can be found in Section III.D. of the Faculty Handbook. In general, Penn follows the academic custom that ownership of the copyright for faculty-created books, articles, and presentations resulting from scholarly research, teaching, and writing resides with the faculty member creating the work. Faculty generally have the individual right to own and enforce copyright in their work, and to transfer or publish the work for profit.

This policy also includes computer software and certain types of courseware, although Penn retains a royalty-free permanent license to use the software and courseware for reasonable academic purposes.

Penn also has adopted Open Access Guidelines which encourage faculty to retain certain of their copyright rights to allow open publication of their scholarly works, when contracting for publication in a journal or with a publisher.

However, there are three main exceptions to the general rule that the faculty member (rather than Penn) owns the copyright in a creative work resulting from their research, teaching, or scholarship. Where one of these exceptions applies, Penn owns the rights and title to the copyright.

The exceptions are listed in the Faculty Copyright Policy, but in general and as a summary, the three main exceptions are:

1. If the work is produced using government or sponsored research funds where Penn has a contractual obligation regarding any copyrightable work resulting from the sponsored work, or
2. If the original work is determined to be a “work made for hire” as defined in the Faulty Copyright Policy. Under the policy, a “work made for hire” is an original work that is prepared based on the express direction of a supervisor, prepared as part of specific job duties in a Penn job description, or prepared as part of Penn administrative duties. Works prepared by faculty as part of instructional or research activities are not considered “works made for hire” for purposes of the Faculty Copyright Policy, or
3. If the creation of the original work requires the substantial use of University resources or non-faculty Penn employees there is a prior agreement to the contrary). In some circumstances, a faculty member voluntarily may want to assign their copyright rights to Penn, to enable Penn to commercialize the copyrighted work(s) using PCI’s resources and in return for the economic benefits available to the faculty member under the Faculty Copyright Policy.

Penn’s Faculty Copyright Policy defines “work made for hire” for faculty more narrowly than the Federal Copyright Act. The Federal definition of “work made for hire” applies to all works reated by an employee within the scope of their employment, and certain other works specified in the federal law.

If Penn owns the copyright under one of the three exceptions or if a faculty member voluntarily transfers copyright ownership to Penn, and then if PCI negotiates a business deal to commercialize the copyrightable work then the faculty author will receive a share of net revenues realized by Penn as set forth in the Faculty Copyright Policy. Finally, in addition to these exceptions there are situations that fall outside the Faculty Copyright Policy where, for example, the faculty member and Penn enter into a customized written agreement for a project that requires the faculty member to provide services beyond their normal duties. In such cases, the written agreement will govern the allocation of rights in copyrightable works created in the project and the financial arrangements.

For non-faculty employees of Penn, the copyrights in works they create in the scope of their employment (e.g., written materials, photos, software, videos) belong to Penn under the “work made for hire” provisions of the Federal Copyright Act.  As the owner of such works, Penn can exercise all rights of the copyright owner without the permission of or additional compensation to the employee.

In general, students own the copyright to the academic works they create, such as their papers, projects, theses, and dissertations. However, under Penn’s policies or conditions applicable to specific courses, or the contracts funding the student’s research or studies, Penn may have certain rights with respect to student copyrightable works, such as the right to distribute copies of dissertations through Penn’s Scholarly Commons.

Legally, works that are eligible for copyright are protected as soon as they are fixed in a tangible medium, e.g., written on paper or saved as a computer file. Thus, whether or not a formal copyright application is filed or a copyright notice is included, copyright protection often exists automatically. Nonetheless, PCI recommends that authors include a copyright notice with the original work. Depending on how the original work is presented, the notice may be

1. written on the publication;
2. included on the website;
3. added as a text graphic on a video;
4. added as a statement on an audio file; or
5. included in the program for a performance of the work.

If the copyright is owned by Penn, this notice should be used:

© [insert current year] The Trustees of the University of Pennsylvania. All rights reserved.

A similar notice can be used for an individually owned copyright, substituting the author’s name for that of the Trustees. It is advisable to include the author’s contact information with the copyright notice to make it easier for individuals wanting to use the copyrighted materials to request permission.

A copyright may also be registered with the U.S. Copyright Office at any time during the life of the copyright. However, registration is not required and is important primarily if a copyright owner wants to enforce copyright against someone allegedly infringing their copyright.

Faculty may consult Penn’s “Policy Relating to Copyrights and Commitment of Effort for Faculty” which is Policy III.D in the Penn Faculty Handbook. However, there often may be complex and/or fact-specific issues that may arise involving copyright and interpretation of the Faculty Copyright Policy.

If an author believes an original work has potential commercial value either through use by or sale to others, PCI can assist in evaluating the work and advising on Penn’s interest in commercialization and best options. An author can contact PCI to discuss the work and copyright and licensing. In addition, the Office of General Counsel has attorneys who have expertise in copyright law and Penn policies on working with faculty on copyright issues. Faculty are welcome to contact them for legal advice.

For software and computer code, options include publication, allowing academic use, making them available as open source or in the public domain, or commercialization through PCI.

For more general information about copyright, please see:

• Penn Libraries websites
• S. Copyright Office

Under certain circumstances, Penn may decide that it either does not want to pursue a patent application, wants to abandon a previously filed and pending patent application, or does not wish to continue to own and maintain an issued patent. Under these circumstances, the Patent Policy permits the inventor(s) to request that Penn return ownership of the invention to them. The procedure for returning an invention and intellectual property to the inventor is briefly summarized below and is often strongly influenced by whether there was federal or other outside sponsorship of the work leading to the invention.

If there is no federal or other outside sponsorship, PCI’s Managing Director may decide to return the right in the invention and/or patent, subject to the terms and conditions in the Patent Policy. If there was federal or outside sponsorship of the work leading to the invention, Penn may need to comply with certain requirements of the sponsor or funding agency, such as obtaining the consent of the funding agency before transferring its rights to the inventor. In addition, any return would remain subject to any of the rights that are retained by the federal government or outside sponsor of the invention.

In all cases where Penn agrees to return an invention and/or patent, the inventor(s) must first sign a contractual agreement with Penn that includes at least all of these terms:

• If there is more than one inventor, each inventor receives an undivided interest in the whole invention.
• Penn reserves a royalty free, non-exclusive, and irrevocable right to practice the invention for educational, research, and clinical care purposes, and to permit other academic and not-for-profit institutions to do the same.
• Reimbursement to Penn for the costs already incurred for processing the invention or patent up to the time it is returned.
• Penn will receive 5% of all gross compensation from any further transfer or commercialization of the invention.
• The inventor has a plan for commercialization of the invention, and will report any future improvements made to the invention to allow PCI to determine ownership of those improvements.
• Rights are not automatically granted to improvements to the originally disclosed invention or new inventions created that relate directly or indirectly to the returned invention.
• No Penn personnel or resources can be used to protect or commercialize the invention after ownership is returned.

The mechanism for allowing commercial use of a Penn-owned invention by a company outside of Penn is a “license”. If Penn grants a license, it will keep all ownership and title to the invention but will allow the commercial company to develop and sell products based on the invention.

PCI will generally keep the faculty inventor(s) informed during the marketing and license negotiation process, and consult and work with the faculty inventor during the negotiation process with the goal of making the best possible licensing decision for the inventor and Penn. However, the final decision as to whether and to whom an invention will be licensed, and the terms and financial arrangements of the license agreement, are ultimately determined by PCI and are not appealable.

Under certain circumstances the type of invention or development risks involved in licensing an invention may result in Penn accepting equity ownership in the licensee as consideration for the grant of license to commercialize the invention. When Penn decides to accept equity

as license consideration, the inventor(s) are entitled to receive 30% of this equity, provided that the inventor(s) are not also receiving their own individual equity share in the company outside of Penn’s equity pool. Inventors who have their own independent equity stake in a licensee are generally obligated to waive their normal inventor distribution interest in the equity shares held by the university. The policies and structure of equity transactions can be complex, and inventors are highly encouraged to seek tax advice from their personal tax advisor.

A conflict of interest may exist when financial or other personal considerations have the potential to compromise or bias professional judgment or objectivity regarding the design, conduct, or reporting of research.

The University has one policy governing research-related FCOIs, the University of Pennsylvania Policy on Conflicts of Interest Related to Research (the FCOI Policy).

This policy is distinct from School-based annual extramural activity reporting policies and is designed to reduce, manage, and / or eliminate identified financial conflicts related to specific research projects. When required under Penn’s FCOI policy, disclosure of financial interests related to a specific research project should be submitted electronically through the Financial Interest Disclosure Electronic System (FIDES). FIDES disclosures are initially reviewed by the OVPR and may be referred to the Conflict of Interest Standing Committee (CISC) for further review and recommendations.

Prior to participating in research that will be funded by the Public Health Service (PHS), the FCOI Policy also requires Investigators to submit a Financial Interest and Travel Statement (PHS-FITS) to their Schools.  Depending on the nature and value of financial interests disclosed and whether those financial interests are determined by their School to be related to a PHS proposal, Investigators may be required to provide a more detailed disclosure in FIDES.  In addition to meeting the above disclosure obligations, Investigators must receive FCOI training prior to engaging in research at the University and at least every four years.

Financial Conflicts of Interest in Research Program

Penn has specialized electronic disclosure sites depending upon your school affiliation where you must provide information about your significant financial interests, so a determination may be made whether there is a financial conflict of interest and whether it may be managed. You must disclose Significant Financial Interests (SFIs) (and those of your spouse or dependent children) that reasonably appear to be related to your field, discipline, or professional expertise. These are more specifically defined in the FCOI Policy but in general include:

1. any payments from a public company over the course of the past 12 months plus the value of any equity received from that company that, when aggregated, are greater than $5,000;
2. payments over $5,000 during the past 12 months from any non-publicly-traded company;
3. receipt of any amount of equity, regardless of value, in a non-publicly held company;
4. acceptance or performance of a management or officer role for any company; and
5. personal interests in certain types of intellectual property rights.

Disclosures generally must be updated at least annually, and anytime you submit a proposal to conduct sponsored research or a protocol for human subject research; anytime you are added as an Investigator on an ongoing research project; and within 30 days after you learn of a new SFI.

Responsible Conduct of Research Training Program

You may also need to consult the FCOI Policy of your own school regarding the scope of your extramural engagements in consulting arrangements with for-profit entities.

If you have or acquire an interest in intellectual property that is being tested, evaluated, or developed in, or if its commercial value could be affected by, a clinical trial in which you plan to serve or currently are serving as an Investigator, you must first disclose that interest as a potential conflict of interest through the FIDES system. This requirement includes IP that is the subject of a copyright, issued patent, or a patent application (regardless of whether the IP has been licensed or is assigned to Penn).

If you are an owner or co-founder of a start-up company, you must disclose all equity in, payments from, or any fiduciary role for, that company before participating in any research that is sponsored by or conducted with the company or that could affect the company’s interests.

Your disclosures of SFIs will be reviewed (as described immediately below) to determine if they could potentially directly and significantly affect the design, conduct, or reporting of the proposed research, thereby constituting a financial conflict of interest (FCOI). Disclosures are reviewed on behalf of the Vice Provost for Research, in most cases by the Conflict of Interest Standing Committee, which makes advisory recommendations to the Vice Provost. The Vice Provost for Research is responsible for making the ultimate determination regarding whether you have an FCOI and whether your FCOI can be appropriately monitored and managed. Management conditions that may be imposed include disclosure in publications and presentations, to other researchers, and to human subjects, as well as certain types of restrictions on your role in the project. Other management or conflict reduction strategies may also be required.

Penn’s Research Integrity Office is directly responsible for administering Penn’s Research-Related FCOI Program. Because a finding of an FCOI may have considerable implications related to your participation in research, you should contact the Research Integrity Office early in the process if you currently have, or anticipate that you may have, a financial relationship with a company that could affect or be affected by the conduct or outcome of your research. You should also feel free to seek additional guidance whenever a question or uncertainty arises. The Research Integrity Office can be reached at coi@exchange.upenn.edu. You may also find useful information at http://bit.ly/coitraining.

There are potential conflicts of interest that are not addressed specifically by the FCOI Policy, but that nonetheless require assessment and may be subject to other policies, including policies that are specific to a particular school or program at Penn. Examples include, among others, the treatment and roles of students and trainees, supervision of individuals working at both Penn and a licensee company, use of space and equipment for company benefit, purchasing services or goods from the company, and conflict of commitment (i.e., your ability to meet your University obligations).Questions regarding these types of COI policies can generally be addressed to your chair or dean and/or the Research Integrity Office.