Staff Rights in Intellectual Property

"Professional staff includes but is not limited to administrative staff (such as deans, directors, and vice-presidents) and technical staff, non-faculty researchers, teaching assistants and others not covered by a collective bargaining agreement." (Board Policy 3.26, Part 3, Subpart N)

The policy recognizes that professional staff own intellectual property rights in certain scholarly works, encoded works, and personal works, and identifies several instances where a professional staff member's basic ownership rights may be modified by agreement or other factors.

Please use the menu below to view the modifications of rights that may occur.

"Scholarly works are owned by the professional staff member who created the work, except as otherwise provided in the policy."

Scholarly works are "creations that reflect research, creativity, and/or academic effort." Examples of scholarly works include:

Instructional materials
(textbooks and course materials)
Distance learning works
Journal articles
Research bulletins
Lectures
Monographs
Plays
Poems
Literary works
Works of art
(pictorial, graphic, sculptural, or other artistic creation)
Computer software/programs
Electronic works
Sound recordings
Musical compositions
Similar creations

"Intellectual property rights in scholarly works belong to the…professional staff who created the work, unless an agreement, sponsorship agreement, or other condition provides otherwise." (Board Policy 3.26, Part 4, Subpart A.2)

"Encoded works created by a professional staff member are owned by the college or university, except as otherwise provided in the policy."

Encoded works are "creations that are software and other technologies for the electronic capture, storage, retrieval, transformation, display, or transmission of information." (Board Policy 3.26, Part 4, Subpart A.3) Examples of encoded works include:

computer programs
multi-media and/or CD-ROM presentations
web pages

"Intellectual property rights in encoded works created by a professional staff member belong to the college or university unless an agreement, sponsorship agreement, or other condition …provides otherwise." (Board Policy 3.26, Part 4, Subpart A.3)

"Personal works are owned by the creator of the work."

Personal works are works "created by an employee … outside his or her scope of employment and without the use of college or university resources other than resources that are available to the public or resources for which the creator has paid the requisite fee to utilize."

"Intellectual property rights in personal works belong to the creator of the work.." (Board Policy 3.26, Part 4, Subpart A.4)

The key here for professional staff employed by MnSCU or its institutions, is that the works must unquestionably be created outside the scope of employment if they are to be considered "personal works." For example, the dean of students who writes a draft disciplinary policy for the parochial school on whose volunteer board she sits; the information technology staff member who creates a web page for her writers group; and the head of the library circulation staff who prepares a presentation on pond life for a children's workshop at the local nature center have all created personal works. All of the created works take advantage of the talents of the creators, and possibly even the creators' experience as professional employees to some degree, but they are still personal works created outside the scope of employment.

"Professional staff ownership rights in intellectual property may be modified by agreement or other factors."

Policy 3.26 also contains several provisions that may modify ownership rights of professional staff in intellectual property. (Board Policy 3.26, Part 4, Subpart B) For the most part, the modification of ownership rights occurs when the parties involved enter into an agreement before the intellectual property is even developed. These agreements are helpful because they define roles and responsibilities (such as who will provide funding, who will perform the work, whose facilities will be used, deadlines for the completion of work, etc.) as well as details relating to who ultimately will own and control the work. The parties may agree to share ownership, or one party may agree to own the work, but grant the others the right to freely use the work in certain described circumstances. The variations on these agreements are endless. They provide a mechanism to consider and meet everyone's needs and to define ownership interests from the start, thus avoiding later disputes.

Modification by Agreement

Sponsorship Agreements

A sponsorship agreement is a written agreement between a sponsor (person, organization, or governmental entity other than MnSCU) and a college, university, and and/or the system office and may include other parties, including the creator of the work. (Board Policy 3.26, Part 3, Subpart P). A sponsor is a person, organization, or governmental entity, other than MnSCU, that provides funding, equipment, or other support in order that a specified project may be carried out. (Board Policy 3.26, Part 3, Subpart ) Sponsorship agreements routinely take the form of college or university contracts with corporations to conduct research on behalf of the corporation at the college's or university's research facilities.

Ownership of intellectual property rights in a work created under a sponsorship agreement are determined by the terms of the agreement. If the sponsorship agreement does not address on the issue of ownership of intellectual property rights, ownership is determined by applicable law. (Board Policy 3.26, Part 4, Subpart B.1)

Collaborations/Partnerships

MnSCU and or its colleges/universities may participate in projects with persons/organizations to meet identified student, citizen, community and industry needs. Ownership rights pursuant to any collaboration or partnership shall be addressed pursuant to this policy. (Board Policy 3.26, Part 4, Subpart B.2) As with sponsorship agreements, the use of a formal collaboration/partnership agreement delineating each party's rights and responsibilities is strongly encouraged.

Equity Distributions

In any instance in which MnSCU and/or its colleges or universities execute an agreement with an individual, corporation or other entity for economic gain using intellectual property owned by the colleges or university, the colleges or university is entitled to receive an equity distribution. The proceeds of the equity distribution shall be shared among the creators of the work as determined by this policy. (Board Policy 3.26, Part 4, Subpart B.3)

Special Commissions

Intellectual property rights to a work specially ordered or commissioned by the college or university from a faculty member, professional staff, or other employee and identified by the college or university as a specially commissioned work at the time the work was commissioned, shall belong to the college or university. The college or university, and the employee shall enter into a written agreement for creation of the specially commissioned work. (Board Policy 3.26, Part 4, Subpart B.4)

Certain Encoded Works

In the event a college or university hires a professional staff person to develop software or other encoded works, the encoded works created by such person shall be considered institutional works for which the college or university maintains ownership of the intellectual property rights. (Board Policy 3.26, Part 4, Subpart B.6)

Use of Substantial College or University Resources

In the event a college or university provides substantial resources to a faculty member or professional staff member for creation of a work and the work was not an institutional work created under a sponsorship agreement, individual agreement, or special commission agreement, the college, or university, and the creator shall own the intellectual property rights jointly in proportion to the respective contributions made. Substantial circumstances exist when resources provided are beyond the normal support services extended to individuals for development of work products. (Board Policy 3.26, Part 4, Subpart B.5)

The following questions may help you make a determination about when and whether your use of college or university resources will be considered "substantial" (or when it will at least raise a question as to whether the college or university is entitled to joint ownership in the created work):

Will I use college or university resources beyond normal services available to other professional staff members? Will I pay for the use of these resources?
Will I receive some additional compensation from the college or university in the form of a monetary payment, grant, reduction in normal work duties, or some other benefit for my development/creation of the intellectual property?
Will the college or university provide support such as money, staff, facilities, computer resources, etc., that is beyond normal services available to other professional staff members and critical to the development/creation of the intellectual property?

If the answer to any of the above is "yes", a potential "substantial use" situation could arise. You should take steps to clarify ownership issues with the college or university before work begins so there is no confusion in the future about your ownership and use of the intellectual property created.

Other Modifications

Collective Bargaining Agreement

In the event the provisions of this policy and the provisions of any effective collective bargaining agreement conflict, the collective bargaining agreement shall take precedence. (Board Policy 3.26, Part 4, Subpart C.1)

Jointly Created Work

Ownership of jointly created works shall be determined by separately assessing which of the above categories applies to each creator, respectively. Whenever two or more creators work together, questions regarding joint ownership arise. For example, if a professional staff member assisted a department head with computer programming for a departmental project, was the work part of the staff member's normal work duties, was the staff member specially compensated for his or her efforts (a "work for hire" arrangement) or was the staff member's contribution more of a collaborative effort (which would arguably make the staff member a joint author)? If several university deans work together to create an online "toolbox" for adjunct faculty to be posted on the college website, may the individual deans use the portions they created in other projects or venues? May the university market and license the use of the toolbox to other institutions? Whenever possible, creators working jointly should discuss and decide these issues up front and formalize them in a written agreement.

Sabbatical Works

Intellectual property created during a sabbatical is defined as scholarly work. Typical sabbatical plans do not require use of substantial college/university resources. If the work created as part of an approved sabbatical plan requires resources beyond the resources beyond those normal for a sabbatical, the parties may enter into an applicable arrangements in accordance with this policy. (Board Policy 3.26, Part 4, Subpart C.3)

System College or University Name

Intellectual property rights arising from MnSCU's identity, the identities of its colleges and universities, logo, and other indices of identity belong to the respective entity. Such rights may be licensed pursuant to reasonable terms and conditions approved by the Chancellor, presidents or their designees, respectively. (Board Policy 3.26, Part 4 Subpart C.4)