POLICY 6.18

6.18 POLICY ON INTELLECTUAL PROPERTY

The Board of Education (the Board) is dedicated to teaching, research, and extension of knowledge to the public. The District recognizes its responsibility to produce and disseminate knowledge. Inherent in this responsibility is the need to encourage the production of creative and scholarly works and the development of new and useful materials, devices, processes, and other intellectual property, some of which may have potential commercial value. These activities contribute to the professional development of the individuals involved, enhance the reputation of the District in which they work, provide additional educational opportunities for participating students, and promote the public welfare.

Intellectual property that has commercial potential may be protected under a variety of legal mechanisms, including copyrights, patents, trade secrets, trademarks, and plant variety protection. The rights and privileges, as well as the incentive, of the creators of intellectual property must be preserved, so that their abilities and the abilities of others are encouraged and stimulated. The Board must promote the appropriate development and marketing of the Board's intellectual property for the public good.

A. Purpose statement

The Board encourages employees, including faculty, staff, administrators, student employees, visiting faculty and researchers paid by the Board (collectively "employees") to undertake and receive recognition for, and to share in the revenue resulting from their creative endeavors. Federal and state law provide for Board ownership of intellectual property created by District employees, while under contract or engaged in School District-related activities. The Board will use the benefits derived from this intellectual property to further the teaching or academic research program of the District in areas of intellectual property.

The District may patent, register, market, and license intellectual property using its own resources or through one or more intellectual property management organizations. The net income derived by the District will be shared with the creator of the intellectual property in accordance with this policy, and the remainder will be used in support of research, investigation, research programs, or other activities relevant to the generation of intellectual property in the District, or to promote the educational mission of the District.

The Board encourages cooperation between the District and the information technology industry to enable the District to comply with any current or future state policy or legislation protecting information technology rights and encouraging technology transfer, and to support collaborative agreements between the District and the IT industry, which could generate a revenue stream or bring additional resources to the District. This policy provides the Board the discretion to retain ownership in intellectual property, or to enter into agreements with industry sponsors to grant exclusive or non-exclusive licenses, or, when appropriate, to assign title to intellectual property.

B. Categories of Intellectual Property

This policy covers all forms of legally recognized 'Intellectual Property" which is created in the District, including, but not limited to the following:

1. Patents (as defined in 35 US Code) which includes but is not limited to inventions and discoveries (e.g., devices, processes, improvements, and patentable software)

2. Copyrights (as defined in 17 US Code) which includes but is not limited to:

(a) scholarly works (e.g., textbooks, class notes, research monographs and articles, publications, instructional materials, and research materials);
(b) creative/artistic works (e.g., music, art, dance, architecture, sculpture, poetry, fiction, and film);
(c) copyrightable software (commercial, as well as, academic or research-based); and
(d) other developing areas, including but not limited to multi-media works, and various other forms of electronic communications, including media used for distance learning.

3. Trademarks. (As recognized by federal and state laws).

4. Trade secrets. (As defined by the Uniform Trade Secrets Act; note, however, that the District does not maintain trade secrets, unless belonging to and disclosed by, an outside sponsor.)

5. Data. All data created or generated by the professional activities or efforts of District employees while engaged in School District funded or supported pursuits, are considered to be subject to this policy, as intellectual property is often present in data that are generated during research or other work-related activities at the District.

This policy will cover any new forms of Intellectual Property that may be added to the above categories during the time this policy is in effect. By way of illustration, in the event databases are given protection under the copyright laws in the future, databases will be covered under this policy.

C. Intellectual Property Creation and Ownership

Ownership in intellectual property will be determined in accordance with the following categories of creation:

1. Sponsor-Supported Projects

A "Sponsored Project" is research or activity that has a defined scope of work and is funded by one or more non-District entities (“Sponsor(s)”) pursuant to a “Sponsored Project Agreement”. Initially, federal and state law defining authorship and inventorship will determine ownership (and all associated rights) relevant to intellectual property developed during the course of work on projects funded by Sponsored Project Agreements. The Board may agree to give the Sponsor an exclusive option for a limited period of time for the right of first negotiation for a license to intellectual property owned by the Board arising from a Sponsored Project (hereinafter “District Contract IP”). The option period will not exceed one year from formal disclosure to the Sponsor of the District Contract IP, or six months from the date of expiration of the Sponsored Project, whichever is earlier in time. The Board may also agree to assign title to the Sponsor in any District Contract IP. The agreement or license will be negotiated on behalf of the Board by, or under, the authority of, the Superintendent. The Superintendent shall use his or her best efforts to consult with the creator(s) and principal investigator(s) during the negotiation process. The Superintendent shall provide the creator(s) (including inventor(s)) and principal investigator(s) currently employed by the District with a copy of the negotiated agreement prior to its final execution. In the event the creator(s) or principal investigators) do not agree with the negotiated terms, he or she shall have the right to appeal the Superintendent’s position before the agreement is executed, in accordance with Section I of this policy. The Agreement shall be reviewed by District’s counsel prior to recommendation by the Superintendent.

While the value of intellectual property cannot be predetermined, the Board requires the Superintendent to determine a minimum amount of financial support (which will be based on the total cost to the District of development of the applicable intellectual property), on a case-by-case basis, below which an assignment of title to District Contract IP will not be considered. In some cases, it may not be possible to calculate the total costs of development until after the intellectual property has been developed and disclosed, but a reasonable estimate which considers the factors affecting the actual costs shall be made.

If the Board wishes to assign the title or to license the District Contract IP, the Sponsored Project Agreement will include the following provisions:

(a) In cases of assignment of title:

(1) A provision for monetary support, which must take the form of one of the following two options:

(a) The Sponsor will pay an assignment fee of at least fifty percent of the District's total cost of research and development, including all contract modifications or extensions. The Sponsor will pay the assignment fee after the District Contract IP has been created, reported to the Sponsor, and at the time the assignment of title is made; or
(b) The Sponsor will pay all costs of research, including salaries, materials, other direct costs, and the District's fully-burdened overhead.

If possible, the District will calculate such amounts and include them in the Sponsored Project Agreement.

(2) Due-diligence Milestones negotiated on a case-by-case basis, shall include a "Reassignment Right" exercisable by the Board, if the Sponsor has not made a good-faith attempt to meet the negotiated Due-diligence Milestones. "Due-diligence Milestones" shall mean objectively measurable goals which a Sponsor will in good faith pursue in order to bring to the public the benefits of the District Contract IP. Due-diligence Milestones may include, by way of example and without limitation, commercialization of the District Contract IP, use of the District Contract IP to produce products, and licensing or disclosure of the District Contract IP to third parties.

(3) “Reassignment Right” will include, but not be limited to, one or more of the following, as negotiated by the parties at the time of negotiating the Due-diligence Milestones:

(a) Right of the Board to license other parties, either exclusively or non-exclusively; and
(b) Right of the District to collect a periodic “maintenance fee" from the Sponsor until such time as Due-diligence Milestones are met, or the sponsor determines it will not commercialize the intellectual property and voluntarily conveys its rights to the District Contract IP back to the District.

(4) A windfall provision, in which an appropriate payment or payment schedule is specified-based on some mutually agreed upon threshold or event. The parameters of this provision, such as the windfall threshold, and the amount of any payments, will be determined on a case-by-case basis.

(b) In cases of licensing:

(1) Due-diligence Milestones negotiated on a case-by-case basis, to include, in the case of an exclusive license, "March-in-Rights" if the Sponsor has not made a good-faith attempt to meet the negotiated Due-diligence Milestones. "March-in-Rights" will include, but not be limited to, one or more of the following, as negotiated by the parties at the time of establishing the Due-diligence Milestones:

(a) Right of the Board to license other parties, either exclusively or non-exclusively; and
(b) Right of the Board to collect a periodic “maintenance fee" from the Sponsor until such time as Due-diligence Milestones are met, or the Sponsor determines it will not commercialize the intellectual property and voluntarily terminates its license rights to the District Contract IP.

(2) A provision for reasonable and customary, but unspecified, royalties, since the value of prospective intellectual property cannot be pre-determined.

(c) in cases of either licensing or assignment of title:

(1) The right of the Board to retain a royalty-free license for its own internal use of the District Contract IP for research and educational purposes, and a provision that the District has the right to use the District Contract IP in any and all subsequent sponsored research in the District. This provision does not require the District to retain a right to sublicense such District Contract IP to third parties.

(2) The right of the District to make public through publication or presentation any District Contract IP developed under the agreement. The Sponsor may be given up to ninety days to review the proposed publication to secure appropriate intellectual property protection (to include the right to remove any Sponsor trade secrets or proprietary information from such publications) prior to actual publication or presentation.

(3) The obligation of the Sponsor to pay patent costs. If the District is filing the patents, such costs to the
Sponsor may be capped at reasonable and customary fee amounts.

2. District-Assigned Projects

The Board owns Intellectual Property developed as a result of employee work performed in the course and scope of employment. "Course and scope of Employment" shall include any activity that is listed or described in the employee's job description or is within the employee's field of employment, including research, instruction, or other activities assigned to the employee that involve or result in the creation of Intellectual Property. Copyrightable works created by an employee in the Course and Scope of Employment are considered to be works made for hire under U.S. Copyright Law, with ownership vested in the Board. The employee must cooperate fully with the Board and will execute all documentation necessary to establish and assign ownership and, if necessary, to secure protection of intellectual property owned by the Board.

3. District-Assisted Projects

The Board owns Intellectual Property developed by District employees through an effort, which makes significant use of District resources. The employee must cooperate fully with the District and will execute all documentation necessary to establish and assign ownership and, if necessary, to secure protection of this intellectual property. The Board construes the use of office space, library resources, personal workstations, or personal computers or District-owned or operated web resources or networks as constituting significant use of District resources. Significant use of District resources also includes but is not limited to: Use of research funding; use of funding allocated for asynchronous or distance learning programs; use of District-paid time within the employment period; assistance of support staff; use of telecommunication services; use of District central computing resources; use of instructional design or media production services; access to and use of research equipment and facilities, or production facilities.

4. Employee-Excluded Works

The Board releases to the creator all ownership of Intellectual Property in the following categories of work, subject to contractual rights of Sponsors. However, the Board retains a paid-up, nonexclusive license to use this intellectual property for education, research, and public service.

(a) Traditional publications in academia, including scholarly works, and course notes.
(b) Artistic works (music, art, dance, film, etc.).
(c) Academic software (not for commercial application).
(d) Student works (the student owns his/her own works, unless the student is a District employee and the work is part of his/her employment, or the student makes significant use of District resources, or the student's work is part of a Sponsor-supported project. Student works are not subject to revenue sharing described above.
(e) Electronic publications, including on-line courses will be reviewed on a case-by-case basis.

5. Outside Consulting

Consulting for outside organizations may be performed by District employees pursuant to applicable Board policies, including policies on consulting, conflict of interest, and this Intellectual Property Policy. If the employee’s obligations under this Intellectual Property Policy conflict with the employee's obligations to the consulting entity, the duty owed to the District as a District employee under contracts, and the obligations under this Intellectual Property Policy will take precedence.

6. Individual Projects

The Board owns Intellectual Property developed by District employees, unless the creator of the intellectual property can demonstrate that it was not developed as a “Sponsor-Supported Project,” a "District-Assigned Project," or a "District-Assisted Project," as defined above.

7. Visiting Faculty, Researchers, and Scientists

The Board owns Intellectual Property created by visiting faculty, researchers, and scientists. However, the Superintendent shall have the discretion to make exceptions on a case-by-case basis, consistent with this policy.

D. Administrative Responsibilities

1. Responsibilities of the Creator(s) of Intellectual Property

Each employee (including visiting faculty, researchers, and scientists) must disclose any Intellectual Property created by that person, or resulting from the work carried on under his/her job description or contract or at his/her direction, in which the Board or a Sponsor may have an interest.

Intellectual Property created as a result of outside consulting must be disclosed to the District, to the extent that the creation or product of the intellectual property efforts would fall within the above categories under which the Board claims ownership, or as required by other District or Board policies, or by state or federal laws.

The creator must disclose Intellectual Property promptly to the his or her principal or the Superintendent on those forms used by the District. The principal will, as appropriate, indicate his/her opinion concerning the scientific, technical, and economic merit of the discovery, the likelihood and desirability of obtaining intellectual property protection, and an estimate of the likely commercial uses or possibilities for this intellectual property, and transmit that statement to the Superintendent.

The creator must cooperate fully with the District and will execute all documentation necessary to assign ownership, and, if necessary, to secure protection of intellectual property owned by the Board.

2. Responsibilities of the Superintendent as Intellectual Property Official for the Board

The Superintendent, or his/her designee, will be responsible for the direction and administration of activities related to the creation, use, licensing, contracting and protection of the District’s interests with regard to will administer all intellectual property disclosed in accordance with the requirements of this policy, as follows (not necessarily listed in order of preference):

(a) Released to the creator if the Superintendent determines within a reasonable time that the interests of the Board are better served by releasing ownership to the creator, under conditions to be specified by the District, to include, but not be limited to, the following:

(1) the Board retains a paid-up, non-exclusive license to use this intellectual property for education, research, and public service;
(2) provision for a minimal royalty to the District in the event a profit is made from commercialization of the intellectual property; and
(3) the faculty or employee creator may not use District facilities to improve upon the creation or invention. If the creator/inventor wishes to continue work on the creation/invention using District-managed funds, resources and/or facilities, he/she shall do so under an arm's length written relationship (i.e., full Board disclosure and license).

(b) Licensed to the creator, at the District's discretion, subject to compliance with other applicable policies and approvals;

(c) Assigned to one or more intellectual property management organizations for commercial development, in accordance with Board policy on technology transfer, consistent with all applicable requirements of this policy;

(d) Licensed or assigned to the research sponsor under which the intellectual property was created if license or assignment is required by the contract with the sponsor and is permitted or is required by law;

(e) Patented, or otherwise protected, by the District appropriately marketed, and either licensed or assigned to another organization for commercialization consistent with this Section regarding Sponsor-Supported Projects of this Policy;

(f) Archived by the District with notification to the creator.

3. Responsibilities of the District

The Superintendent, will require that:

(a) The District or its nominee or licensee will pay all costs involved in obtaining and maintaining domestic and/or foreign protection for intellectual property in which the Board possesses an ownership or monetary interest.

(b) The District may establish and administer a fund for the promotion of research and development of intellectual property, consistent with all applicable state laws and Public Education Department regulations regarding such funds. The fund may include monies received by the District from intellectual property created by its employees. The Superintendent, or a designee, will administer this fund according to policies and procedures established by the District, and consistent with all applicable state laws and Public Education Department regulations regarding such funds.

(c) An intellectual property committee of faculty and staff will be appointed by the Superintendent. The intellectual property committee will review proposed changes in the Intellectual Property Policy and make its recommendations to the Superintendent. The intellectual property committee will also operate as a review committee in accordance with this Policy.

E. Publication Rights/Responsibilities for the Protection of Intellectual Property

Early peer-reviewed publication of results is a major objective of academic research. The Board does not intend for this policy to impede a District employee's ability to publish. Public disclosure of a patentable invention prior to filing for a patent application will, however, preclude the availability of patent protection in most countries. "Public disclosure" includes any non-confidential written or oral disclosure that describes the intellectual property created or invented (e.g., at a scientific meeting, in a journal, in a report to the school board at a public meeting or even in an informal discussion with outside colleagues). However, limited disclosure of intellectual property internally within the District will not interfere with the ability to protect the intellectual property. District employees should consider delaying public disclosure of intellectual property until the internal evaluation process is completed by the Superintendent or his/her Intellectual Property Committee or Intellectual Property Official designee. The District will make every effort to expedite the evaluation process when an employee indicates a compelling need for rapid publication.

The foregoing provision does not apply to a Sponsor's proprietary information disclosed to the District pursuant to a non-disclosure agreement. In the case of Sponsor-supported projects, the Sponsored Project agreement may provide for delay of publication to allow the Sponsor to adequately protect its own intellectual property rights.

F. Revenue Sharing

The District will pay the creator a share of the net income received by the District from any intellectual property licensed or assigned in accordance with this policy. "Net income" is defined as gross revenues resulting from any given intellectual property, less an appropriate District administrative fee, less all unreimbursed costs incurred by the District or its nominee in protecting, licensing, and maintaining the intellectual property. The Superintendent or his/her designated Intellectual Property Official or Intellectual Property Committee, will determine the percentage to be paid to the creator, ensuring that it is in accordance with the District’s revenue sharing policy, subject, however, to the following minimum:

The employee who creates intellectual property as the result of work for which he/she is paid a salary or under contract by the District, and where he/she has used District facilities and resources in the development or creation of the intellectual property, will receive a minimum of 50% of the first net $10,000 received by the District, and a minimum of 25% of the net amount received by the District, in excess of the first net $10,000. This royalty revenue sharing is not to be construed as wages or salary compensation to the employee from the District, but rather as separate source of income, derived from commercialization of intellectual property. In addition, an employee's rights, which have accrued to this royalty revenue sharing, shall continue beyond such employee's employment with the District, based upon a written agreement with the employee/creator.

G. Faculty Owned or Affiliated Companies Based on the Board's Intellectual Property

With respect to District employees holding interest in private organizations which are based on intellectual property owned by the Board, the creator of the intellectual property which is of interest to that private organization must comply with administrative responsibilities detailed above.

The Superintendent, or his/her designated Intellectual Property Official, or intellectual property committee, will use his/her best efforts to negotiate an appropriate agreement with the private organization, whenever one or more District employee(s):

1. Holds a substantial interest in that organization;

2. Is a creator of District intellectual property, which is related to the business of the organization; and

3. Continues his or her District employment in an area related to the business of the organization.

A license, assignment or option agreement between the District and any organization in which an employee owns a substantial interest will be individually evaluated and negotiated for each technology or improvement for which the organization wishes to acquire rights from the District. Such agreements shall be subject to customary terms and conditions consistent with the section on Sponsor-Supported Projects of this policy.

If the company in which a District employee holds a substantial interest is given more favorable royalty terms than is typically usually granted in comparable cases in its license with the District, then the Superintendent or his/her designated Intellectual Property Official, or intellectual property committee will determine whether that District employee, who holds a substantial interest in the company licensing District technology developed by that District employee, should receive a personal share of the licensing income received by the District from that company ,in addition to that employee's equity or other financial interest in that company. If the Superintendent, or his/her designated Intellectual Property Official, or intellectual property committee, determines that the affected employee should not receive his/her personal share of District licensing income, then the share of licensing income that would otherwise be disbursed to the employee personally will be distributed among the other District accounts, designated in the District’s income distribution policy.

For purposes of this Section, the interest owned by the District employee at the time of Board approval of the employee's relationship with the company will be the interest used in determining whether the employee has a "substantial interest."

I. Interpretation, Decisions, Appeals (Disputes)

If the employee does not agree with any interpretation or decision made by the Superintendent or his/her designated Intellectual Property Official, the employee may ask the Intellectual Property Committee to review that decision.

The Intellectual Property Committee will review all relevant information submitted to it and will make its recommendation concerning the disputed decision to the Board, who will make the final decision.

The final decision of the Board is subject to judicial review only pursuant to NM STATUTE OR REGULATION REGARDING APPEAL OF ADMINISTRATIVE DECISIONS. Failure to complete the above review procedures will constitute a failure to exhaust administrative remedies.

ADOPTED: 10/14/97
REVISED: 06/16/2008; 05/14/19
LEGAL REFERENCES: The U.S. Patent Act, 35 U.S.C. Sections 1 to 376; The U.S. Copyright Act, 17 U.S.C. Sections 1 to 104; the Defend Trade Secrets Act, 18 U.S.C Section 1836 et seq.; conflict of interest provisions of the Public School Code and the New Mexico Procurement Code, NMSA 1978 Sections 22-21-1, 13-1-190 to 13-1-194; the New Mexico Governmental Conduct Act, NMSA 1978 Section 10-16-1 et seq.; NM Standards for Excellence, NMAC 6.29.1 et seq.
CROSS-REFERENCES:
LOS LUNAS BOARD OF EDUCATION

Section VI Curriculum and Instruction