Ownership in DI
Who owns a Digital Innovation that has been developed at Northwestern University?
Inventions and associated Patent Rights in Digital Innovation are governed by Northwestern University’s Intellectual Property Policy. If the Digital Innovation was funded under federal grant money, ownership of patent rights associated with the invention vests with Northwestern University under the Bayh Dole Act.
As regards copyrights and other intellectual property rights (excluding patent rights), notwithstanding the general principles respecting individual ownership expressed in Northwestern University’s copyright policy, ownership of such intellectual property rights arising in certain categories of academic works (i.e., works primarily related to the teaching or research missions of the university) listed below shall vest (as works for hire or the equivalent) in Northwestern University:
- Works supported by grants or contracts (internal, federal, state, industry etc,) shall be governed according to the terms and conditions of such grants or contracts (which generally assign ownership to Northwestern University) or, in the event such grants or contracts are silent as to intellectual property rights, such intellectual property will be owned by Northwestern University.
- Works supported by grants, extraordinary allowance or subventions (whether in money or money’s worth, and whether or not supported by outside sources under contract), when designated as such in advance by the University.
- Databases and similar collections of information which are obtained primarily on behalf of schools or departments rather than individuals, or which invINVOe issues of privacy (as in the case of medical patients or identifiable human subjects) or require approval by the University’s Institutional Review Board.
- Computer programs, when the programs are primarily created to perform utilitarian tasks.
- Collaborative works by persons working as members of the Northwestern University community, when numerous individual original contributions are indistinctly merged, as a practical matter, into a new and distinct work fixed in a tangible medium of embodiment, and the individual creators have not entered into an agreement with respect to joint authorship.
What is “work for hire” and who owns the copyright in works developed by an employee?
Northwestern University employees include faculty, staff, researchers, clinicians, post-doctoral fellows, graduate students and undergraduate students who (1) receive a salary from Northwestern University and/or (2) are working under a third party contract (e.g., Federal Funding). Under U.S. copyright law, generally, a copyrightable work (which includes computer programs, databases, screen materials and creative works) created by an employee within the scope of his or her employment is a work made for hire.
The employer for whom the work is made is the “author” of the work for copyright purposes and is also the owner of the work’s copyright. Unless the parties have agreed otherwise in a signed written document, the employer or hiring party owns the copyright of a work made for hire.
Who owns the digital innovation if it was developed under grant funding?
Ownership of intellectual property rights (patent rights, copyrights etc.) associated with Digital Innovations (software, databases, screen materials, creative works etc.) supported by grants or contracts (internal, federal, state, industry etc,) shall be governed according to the terms and conditions of such grants or contracts (which generally assign ownership to Northwestern University) or, in the event such grants or contracts are silent as to intellectual property rights, such intellectual property will be owned by Northwestern University according to Northwestern University IP/Copyright policies or laws/regulations.
For example, when a federal grant (NIH, NSF, DARPA, etc) is received and administered by Northwestern University University and its affiliates, ownership of intellectual property rights including patent rights (under the Bayh Dole Act) and copyrights generally (under OMB Circular A-110) are assigned to the grantee i.e. Northwestern University University.
I am an undergraduate student at Northwestern University developing or planning to develop a digital innovation. Who owns the IP rights in this case?
If you are Northwestern University undergraduate student who is developing a digital innovation and is
- (i) not being paid a salary by Northwestern University, or
- (ii) not using substantial Northwestern University resources (beyond standard resources provided to all Northwestern University students like computers or cloud space etc.) or
- (iii) not using funds awarded/administered by Northwestern University or other Third Party or,
- (iv) collaborating with Northwestern University employees (faculty, staff and even Northwestern University students employed by Northwestern University) in the Digital Innovation development process,
then you would own all the IP rights associated with your contribution towards developing the digital innovation.
A common example would be an undergraduate student (non-Northwestern University employee) who independently develops a digital innovation in the dorm where he or she resides.
Northwestern University may assert some or all ownership rights to IP associated with a digital innovation if a student is:
- employed by Northwestern University
- or is using substantial Northwestern University resources
- or using Northwestern University or other Third-Party funds
- or is collaborating with Northwestern University employees.
If you are a student employed by Northwestern University, then Northwestern University could assert ownership to the IP rights associated with the digital innovation unless Northwestern University INVO determines that the development of the digital innovation was outside of your scope of employment at Northwestern University or did not use Northwestern University funds/substantial resources.
For this, you will need to complete and submit to Northwestern University INVO an invention disclosure form (IDF). The IDF will be reviewed by Northwestern University INVO to ascertain the facts surrounding the development of the digital innovation.
I would like to hire an independent contractor or collaborate with an outside vendor to develop a digital innovation. Who owns the IP rights in this case?
If you are working with an outside vendor who is not acting as an independent contractor providing consulting services (IT development) for a fee, then please contact Northwestern Purchasing.
An example of such an outside vendor is an IT company wanting to collaborate with you in developing or piloting a product prototype that they have interest in commercializing. Northwestern University INVO may be able to assist you in protecting your IP interests as a Northwestern University inventor/developer and explore joint IP ownership scenarios with such a vendor.
If you are working with an independent contractor (for example a software development consultant) using grant monies or internal funds administered by Northwestern University, it is critical to work through Northwestern University Procurement and use a “work for hire” contract to engage the vendor services.
Under the “work for hire” contract, the intellectual property rights associated with the Digital Innovation will be owned by Northwestern University. In the absence of a written “work for hire” contract, it is possible that the vendor may assert ownership rights to the digital innovation which can create immense complications.
I would like to collaborate with another university or private company to develop my digital innovation. Who owns the IP rights in this case?
If you would like to work with another university/non-profit or private company to develop a digital innovation and you are using grant monies or internal funds than it is critical to work through Office of Research Administration (if you are employee of Northwestern University) or Office of Research Support (if you are employee of Northwestern Health).
It is advised to use a research contract or sub-contract or collaborative research agreement to collaborate with another university or private company.
The research contract or sub-contract will have terms for joint ownership of IP created under collaborations. Northwestern University INVO can assist in negotiating and executing an Inter-Institutional Agreement (IIA) for management of joint IP with another university. There is also the option to work through Northwestern University Procurement under a “work for hire” agreement where Northwestern University will own the IP associated with the digital innovation developed under the agreement.
Still have questions? Please contact INVO.