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Software
Special Ownership Problems
Who should own software created by University employees? Answering this question has become more difficult as software becomes a part of nearly everything we do.
At first we characterized software as an invention that the Board would own under our Intellectual Property Policy ("Policy"). We developed our Policy from a patent perspective and we treated software just like all other inventions even though it was usually protected by copyright rather than patent law.
It did not take long for some problems related to public distribution and royalty-free licensing of software code to surface, and we addressed them in our Software Administrative Policy.
Now, new problems are coming to our attention: software is in this document! What does that mean? Software is in just about everything that is prepared for the digital world. Does the Board want to evaluate all those little snippets of code? And if not, where do we draw the line between what the Board wants to evaluate and what it's not interested in?
This is not easy. Consider this example: If a health component faculty member creates a diagnostic procedure and describes it in a scholarly paper, it's very clear that he would own the copyright in the paper (Section 2.3) and the Board would own the idea of the procedure (Sections 4.2 and 5.2). The inventor would disclose the idea to the inventor's Intellectual Property Advisory Committee which would evaluate it to see whether the Board wishes to assert its rights.
Now, imagine that the faculty member went on from the pencil and paper diagnostic procedure to create a software program that performs the diagnosis. Same result, right? The faculty member would own copyright in the paper that describes the program and the Board would own the copyright in the software program.
Now imagine that the faculty member created the diagnostic procedure as a teaching tool for her graduate seminar students and mounted it as an interactive form on the Web. Under our Policy, this would be an educational material owned by the faculty member, but it "contains" code, or one could say it is "implemented in software." Who should own the teaching tool? How many of these kinds of things are we talking about? Perhaps thousands System-wide?
The marker, "this is software" is losing some of its value as an indicator of intellectual property in which the Board should assert its interest.On the other hand, the amounts and kinds of University resources contributed to creation of faculty-owned educational materials are increasing and may give us a clue about which software implemented educational materials need Board attention. This suggests to some that perhaps the Board should own those works in order to make wider use of them on campus, recover University investment and receive a share of the profits if the materials can be commercialized (an increasingly common outcome).
We could change our Policy to provide for Board ownership of all educational works created by employees within the scope of their employment, or using System facilities, etc. That would be a dramatic change in our Policy and an unnecessary step to take considering that the Board need not own a work to accomplish any or all of the objectives described above. At the same time that an institution allocates resources to a faculty member's project, it can negotiate a share of the benefits. We can share in creation and share in use and commercial exploitation through contracts. And that's what we've decided to do.
System Administration and the component institutions are reviewing this approach and it will be presented to the Board for approval later this year. These documents describe the changes that will implement this approach, and other changes proposed for the Intellectual Property Policy.