IP Policy: Frequently Asked Questions

The impetus behind the development of Fordham’s Intellectual Property Policy was a finding by the University’s Internal Audit Office in January, 2021 that the lack of such a policy presents a risk to the University.  Moreover, Fordham desires to create and promote a culture of innovation and the Policy is intended to be the framework to nurture and support such development.  The Policy describes and establishes the rights, obligations, and responsibilities governing IP matters at the University. It also describes the ownership, distribution, and commercial development of technology created by Fordham faculty, staff, students, and others participating in Fordham programs. Fordham’s Intellectual Property Policy was developed in consultation with stakeholders across the University community.  Earlier drafts of the Policy were shared with various faculty members who have experience with intellectual property matters at Fordham and elsewhere and their valuable input was incorporated into the final version of the Policy.

The goals of the Policy are to (1) encourage the development of new inventions and patents, for it is through discovering, communicating, and applying knowledge that Fordham furthers its mission as a research university; (2) promote the dissemination of the innovations and inventions of members of the Fordham community; and, (3) manage intellectual property and promote technology transfer in order to stimulate the development of intellectual property and incentivize and reward members of the University community who create such intellectual property.

The answer to this question is twofold.  Firstly, the Policy is required to comply with federal regulations as they relate to inventions that are federally funded.  Secondly, there are members of the University community who are conducting innovative research. The Policy is intended to encourage more research of this kind through the meaningful financial commitment of University resources to the patent process, and more importantly in the view of several faculty members who consulted on the development of the Policy, the post-patent marketing of the inventions.

It actually is quite anomalous that a university of Fordham’s size and stature does not have a formal intellectual policy in place.  In fact, the intellectual property policies of many universities were reviewed and considered during the policy drafting process including: Georgetown University, Boston College, Loyola-Chicago University, Santa Clara University, New York University, Stanford University, and the State University of New York.

The initial stage development of the Policy involved a thorough review of the intellectual property policies of numerous institutions by the Office of Research in collaboration with the Office of Legal Counsel. A preliminary draft was developed and shared with administration stakeholders included on the Internal Audit report in January, 2021 (Office of Legal Counsel, Provost’s Office and Office of Finance) for initial comments. 

Thereafter, a draft was shared and meetings were held with a small group of five faculty members from Arts & Sciences who have had experience with patents and/or technology transfer either at Fordham or at prior institutions. We deeply appreciate their participation in this very helpful early development stage and their valuable input was incorporated into subsequent revisions. 

A revised version was shared with and approved by the University Research Compliance Council (URCC, website: https://www.fordham.edu/info/28000/research_compliance) and the University Research Council (URC, website: https://www.fordham.edu/info/24682/university_research_council). The Provost’s Office shared the policy with the Faculty Senate Executive Committee. The Fordham Foundry also was contacted, as well as Fordham Law faculty with expertise in start-up companies. It was only after receiving input from a wide variety of stakeholders, over many months, and addressing their concerns that the Policy was presented to the Faculty Senate for its consideration.

This Policy applies to all persons employed by Fordham University and any person using Fordham University facilities under the supervision or sponsorship of University personnel, including, but not limited to, all instructional staff (tenure-line, full-time non-tenure-line, adjunct, and visiting faculty), fellows and students.

No prior patents or in-progress patent applications will be affected by this Policy – only those which are initiated after the effective date will be covered by this Policy. The effective date is the same date the Faculty Senate voted to approve the policy: March 25, 2022.

The University does not assert any ownership rights to inventions by student inventors developed as part of normal educational activities.

This Policy is not intended to affect the activities of the Fordham Foundry.

The Office of the Provost has delegated authority for implementation and enforcement to the Office of Research.  Also of note is that the Policy provides for the creation of a University Intellectual Property Committee (UIPC), which is charged with (a) reviewing and determining the release of a University-owned invention to the inventor; (b) providing guidelines for the implementation of this Policy; (c) interpreting and applying this Policy in individual cases; (d) resolving disputes concerning the interpretation and application of this Policy; and (e) recommending whether University resources should be allocated to the external marketing of the invention. 

The UIPC will be appointed by the President of the University and made up of representatives of the administration and faculty.  It will be comprised of: three faculty members (each selected from a slate of names forwarded to the University President by the Faculty Senate Executive Committee); the Chief Financial Officer (or his/her designee); the General Counsel (or his/her designee); the Provost (or his/her designee); and the Chief Research Officer.

Requests for exceptions to any of the requirements or obligations of the Policy may be directed to the Provost.

Inventors are required to complete and to submit an invention disclosure to the Research Compliance Officers for any type of invention. 

All inventions will be classified as incidental, supported, or assigned inventions, based upon the level of involvement of the University in the invention process.   Incidental inventions, or inventions for which the University has only incidental involvement, generally will be owned by the inventor.  On the other hand, inventions for which the University provides financial support or other resources are classified as supported inventions, and revenue will be shared between the inventor and the University.  Similarly, where the invention is the result of a work assignment, the invention will be owned by the University.

The UIPC will be tasked with determining the status of the invention as incidental, supported or assigned.

One of the reasons for implementing an IP policy was to address the lack of consistency relating to intellectual property. Allowing for potential inventors to negotiate agreements that supersede this policy would create the very inconsistency that this policy is designed to avoid. In a case where a grant or contract is provided to Fordham to specifically develop a product intended to be patentable and potentially commercializable, it is likely that the funder will include language regarding the disposition of any IP, which the University would follow. If you are considering bidding for, or entering into a contract such as this, please contact your Office of Sponsored Programs representative to discuss it.

The UIPC will review and consider any disputes between the inventor and the University relating to the application of the Policy, including classification of an invention and the allocation of revenue.  The UIPC then will make a recommendation to the Provost, who will have the final decision-making authority. As with all University policies, Chapter 7, Part IV of the Statutes supplies the “Procedures Applicable to Grievances Not Relating to Denial of Reappointment or Tenure, or to Discipline, Suspension or Dismissal”, which would be followed in a case where an inventor disagrees with the final disposition of their invention.

An inventor may petition the University for rights to a supported invention.  The University will have the discretion to release the rights to the inventor subject to a written assignment agreement.

The revenue is shared between the inventor, the inventor’s academic unit or department, the Office of Research and the University, with the largest portion of the revenue to go the inventor. The exact percentages vary depending on the amount of revenue generated.

An assigned invention would be the product of a request from the University that is other than, and beyond, the normal duties to the University included in your job description or appointment letter. An example of this would be a request to the IT area to create a home-grown piece of software for a specific University purpose which turns out to be innovative and patentable.

Yes. In fact, one of the primary concerns among the faculty consultants was that for an invention to be commercially successful, there must be a meaningful investment in post-patent marketing. Thus, for those inventions that the UIPC determines a patent should be pursued, the University will commit financial resources to not only the patent application and associated legal fees, but to the post-patent marketing of the invention to promote successful commercialization.

The revenue allocated to the Office of Research will be used for the partial support of the administrative functions relating to the invention disclosure, patent and commercialization processes.  Additionally, a portion of the revenue of commercialized inventions will be allocated to the Office of Research to provide financial support to future innovation.  Similarly, the allocation to the University will be available to support the balance of the infrastructure necessary for such research and innovation.

The Policy is intended to bolster innovation at the University by providing support for inventors seeking to commercialize their inventions.  Among other things, the University is aware that by not having such support, we are limiting the type of faculty candidates that may be attracted to Fordham.

One of the goals of this Policy is to encourage innovation through the allocation of University resources and support to assist in the commercialization of an invention.  In that regard, a portion of the revenue of commercialized inventions will be allocated to the Office of Research to provide financial support to future innovation. It is expected that as a result there will be an increase of those patents which are intended to lead to commercialization.

The University may prepare, file, prosecute and maintain patent applications and patents worldwide with respect to University-owned inventions. Additionally, through mutual written consent, inventors of an incidental invention may assign ownership to the University so that a patent may be pursued by the University with royalties distributed as per the Policy.

The University has heeded the advice of the faculty consultants involved with the drafting of the Policy and understands that a patented invention requires sufficient marketing support to be commercially viable.  Thus, it is the University’s intention to allocate financial resources to the marketing of an invention for which it retains an ownership, in its sole discretion.  This could include engaging an outside marketing firm with a specialty in the particular subject matter of the invention.

While Fordham does not currently have a tech transfer office, it will engage outside subject matter experts, as necessary.  The creation for an in-house tech transfer office will be revisited should the flow of inventions necessitate it.

Yes. For example, if inventions involving federal funding are not owned by the University, the inventor risks losing all rights to the inventions to the federal government

Yes. The University’s ownership rights are not intended to interfere or in any way inhibit the presentation and publication of research results.  Subject to the obligation to disclose inventions and any obligations to third parties, faculty members retain their autonomous role in selecting and preparing for publication the results of research conducted by them or under their supervision. Notwithstanding the foregoing, the University reserves the right to delay presentation or publication for a reasonable period of time if such delay serves to protect the University’s intellectual property rights or is necessary to meet legal or contractual obligations.  Such a delay will not exceed a total of 90 days unless authorized by the Provost.

Yes. There are different issues to consider with regard to start-up ventures.  The University will work with inventors to develop licensing terms that are mutually beneficial for inventions for which the University has an ownership interest pursuant to this Policy.  The revenue will be shared in the same manner whether an invention is commercialized through a patent or through a start-up venture.

No. There will be no changes to the copyright policy other than to change its name to properly reflect its content.